Saving a Non-Distinctive Mark: Proving Acquired Distinctiveness in South Korea

When a trade mark application is refused on absolute grounds under Article 33(1) of the Korean Trademark Act (KTA) — because the mark is descriptive, geographically conspicuous, a common surname, or otherwise non-distinctive — the applicant has one remaining pathway to registration: acquired distinctiveness (secondary meaning). Under Article 33(2), a mark that falls within subparagraphs (iii) through (vi) of Article 33(1) may still be registered if it has been used to the point where consumers recognise it as a trade mark indicating the goods of a specific person.

The Legal Standard: Article 33(2)

The current formulation of Article 33(2) requires that the mark be “recognizable to consumers as a trademark indicating the source of goods of a specific person.” This standard was lowered in 2014 from the previous requirement that the mark be “remarkably recognized among consumers.” The change was intended to make acquired distinctiveness more accessible, but in practice, the evidentiary threshold remains substantial.

Importantly, acquired distinctiveness under Article 33(2) applies only to marks falling under subparagraphs (iii) through (vi) — descriptive marks, geographic marks, common surnames, and simple or common marks. It does not apply to generic names (subparagraph (i)) or customary marks (subparagraph (ii)), which are considered fundamentally incapable of acquiring distinctiveness.

The Evidence Requirements

Proving acquired distinctiveness requires a comprehensive evidentiary package demonstrating that, as a result of extensive use, the mark has come to be recognised by Korean consumers as identifying the goods of a specific commercial source. The key categories of evidence include:

• Duration and continuity of use: How long the mark has been used in Korea, and whether that use has been continuous and consistent. Longer use periods strengthen the case.
• Sales volume and revenue: Figures demonstrating significant commercial activity under the mark in the Korean market. This provides objective evidence of the mark’s presence in commerce.
• Market share: Data showing the mark’s position in the relevant product or service market in Korea. A dominant or significant market share is strong evidence of consumer recognition.
• Advertising and promotional expenditure: Investment in marketing directed at Korean consumers, with samples of actual advertising campaigns, media placements, and promotional materials.
• Consumer recognition surveys: Survey evidence specifically conducted in South Korea showing that consumers associate the mark with a single commercial source. KIPO and the Intellectual Property Trial and Appeal Board (IPTAB) have published guidelines on survey methodology and credibility (discussed below).
• Media coverage and third-party references: Press articles, industry publications, and third-party mentions in Korean media that demonstrate the mark’s recognition.

A critical principle is that all evidence must relate to use and recognition in Korea specifically. International sales data, foreign advertising campaigns, and recognition surveys conducted outside Korea carry little weight. The assessment is Korean market-centric.

Consumer Survey Guidelines

Consumer surveys are often the most persuasive element of an acquired distinctiveness case. In response to the relatively low success rate of acquired distinctiveness claims, the IPTAB released guidelines concerning survey credibility, which KIPO examiners now apply. Key requirements include:

• Representative sample: The survey must be conducted among the relevant consuming public in Korea — the group of consumers who would actually encounter the mark in the marketplace.
• Neutral and unbiased methodology: Questions must be designed to avoid leading the respondent toward a particular answer. The survey must test genuine recognition, not prompt it.
• Conducted by a credible research institution: Surveys conducted by recognised, independent market research firms in Korea carry greater weight than self-conducted studies.
• Sufficient sample size and geographic coverage: The survey should cover multiple regions of Korea and include a statistically significant number of respondents.

The Examination Process

Claims of acquired distinctiveness are now evaluated by a three-examiner team rather than a single examiner, reflecting the importance and complexity of these assessments. If this initial evaluation is positive, the case is referred to a special committee for judging acquired distinctiveness, which makes the final determination before a decision is issued. This multi-layer review process provides greater consistency and rigour than the previous single-examiner approach.

The Identical Mark Requirement

An important limitation is that acquired distinctiveness can only be recognised for a mark that is identical to the mark actually used in commerce. It does not extend to similar marks or variations. However, Korean courts interpret “identical” as “substantially identical,” recognising that in practice, marks may appear with minor variations across different products and media. For example, a mark used with a minor font variation or combined with an independent device element may still be treated as identical for acquired distinctiveness purposes.

Strategic Recommendations

• Build evidence before filing if possible: If you plan to file a descriptive or borderline non-distinctive mark in Korea, begin building the evidence base of use and recognition before or during the application process.
• Commission a Korean consumer survey: This is often the single most influential piece of evidence. Engage a reputable Korean market research firm and follow IPTAB’s survey guidelines.
• Focus on Korean market data: International recognition is supplementary at best. The evidence must demonstrate recognition specifically among Korean consumers.
• Maintain consistency: Use the mark consistently in the form filed. Significant variations between the filed mark and the mark in use can undermine an acquired distinctiveness claim.
• File the claim at the right time: Acquired distinctiveness can be argued in response to a refusal during examination, or on appeal before the IPTAB. The evidence must demonstrate recognition as of the filing date or the decision date, depending on the stage of the proceedings.

Common Mistakes

• Relying on international evidence: KIPO and the IPTAB assess acquired distinctiveness in the Korean market. Foreign sales data and recognition surveys are largely irrelevant.
• Submitting a poorly designed survey: A survey that uses leading questions, an unrepresentative sample, or insufficient geographic coverage will be given little or no weight.
• Claiming acquired distinctiveness for a generic mark: Article 33(2) does not apply to generic names or customary marks. These cannot acquire distinctiveness under Korean law.
• Using a materially different mark: The mark for which distinctiveness is claimed must be substantially identical to the mark actually used in commerce. Significant variations will defeat the claim.
• Underestimating the evidentiary burden: Despite the 2014 lowering of the standard, the actual evidence required remains substantial. A few invoices and advertising samples are unlikely to be sufficient.

Key Takeaway

Acquired distinctiveness under Article 33(2) provides a genuine pathway to registration for non-distinctive marks, but the evidentiary burden is substantial and the evidence must be Korea-specific. Consumer surveys, sales data, market share, and advertising investment in the Korean market are the pillars of a successful claim. The multi-examiner review process and IPTAB’s survey guidelines have brought greater rigour and predictability to the assessment. For brands that have invested in building recognition in Korea, the pathway is viable — but it requires careful planning, Korean-market evidence, and professional survey methodology.