On October 5, 2022, the Korean Intellectual Property Office (KIPO) granted registrations to Korean Ginseng Corporation (KGC) for its  mark, which consists solely of a color combination (Reg. Nos. 40-1917854 and 40-1917855), in Classes 5 and 29. Prior to the registrations of KGC’s color mark, only one other trademark in South Korea consisting only of colors existed, that being the  mark of RiGO Trading S.A., the company known for Haribo Jelly.

In South Korea, one can, in principle, register trademarks that are purely based on colors. In the past, however, KIPO did not recognize this kind of trademark due to the risk of exhaustion of free-to-use trademarks if one individual monopolized such mark. KIPO’s reluctance may also have been borne by concerns that it may, in some cases, be difficult to distinguish between colors or to determine whether confusion might occur.

In 2007, the government amended the Korean Trademark Act to allow the registration of trademarks consisting solely of colors or combinations of colors, in recognition of the importance of colors in marketing; more and more companies strive to establish their brand identities through the use of colors on their product packaging. In spite of this, trademarks consisting only of colors have been considered to lack distinctiveness, and even today, an owner can only obtain a registration for such a mark if it has acquired a secondary meaning through continued use.

When KGC applied for its color mark, KIPO’s examiner initially rejected the application on the grounds that consumers would perceive the color mark as a design rather than a source identifier, as KGC used the color combination on its product packaging; thereby, it would lack distinctiveness. In its appeal to the Intellectual Property Trial and Appeal Board (IPTAB), KGC argued that consumers had been aware of KGC’s color mark as a source identifier associated with KGC since 1998, due to tens of millions of products being sold with that color composition. The IPTAB accepted KGC’s argument, acknowledging that the unique color composition of the color mark is widely recognized throughout the country as a source identifier for KGC.

Many companies use colors to establish their unique corporate identities yet have not been proactive in obtaining exclusive rights to use them. With KGC’s new trademark registration, it is expected that more companies will seek to register their own unique colors.

Source:https://www.inta.org/perspectives/law-practice/south-korea-ginseng-corporation-obtains-colors-only-trademark-registration/