Protection of “Trade Dress” in South Korea

Although the definition of “trade dress” is not specifically found in any IP laws of Korea, trade dress is protectable under the Unfair Competition Prevention and Trade Secret Protection Act ("UCPA"). 

In particular, the UCPA catch-all provision, Article 2(1)(j) protects a party's right to profit from work and intellectual property that it has produced at considerable effort or investment by prohibiting the unauthorized commercial use of such work and IP by others in a manner that contravenes fair trade practice or competition order.

Under the UCPA's "catch-all" provision, a party may not interfere with another person's right to profit by appropriating for one's own business use, without authorization, anything which the other person produced through considerable effort and investment in a manner that contravenes fair commercial trade practice or competition order.

This is general and broad to define any acts of unfair competition such as imitating the appearance of another person's product (i.e., the product's shape, pattern, color, gloss, or a combination of these attributes).

On September 21, 2016, the Korean Supreme Court (Case No. 2016Da229058) affirmed that the below trade dress of bakery shop is protectable under the UCPA's "catch-all" provision. The Court held that a bakery shop's general appearance (including the logo, outdoor signage and indoor layout) and other trade dress elements should be protected under the UCPA's "catch-all" provision.

This case is the first case that the Supreme Court specifically recognized the protection of such rights in shop interior and outdoor decorations under Korean law. The defendants were enjoined from unfair business practices by free riding on Seoul Lovers' goodwill, thus meeting the requirements of Article 2(1)(x) of the UCPA. By affirming this decision, the Supreme Court has clearly signaled that the High Court's interpretation was correct, and that trade dress in shop decorations can be protected in Korea under the UCPA. The court ordered defendants a permanent injunction on the manufacture and sale of the infringing products and damages.

Pfizer v. Hanmi re: Infringement Litigation on Viagra Trademark for Diamond Shape and Blue Color in Korea

Pfizer’s blockbuster drug, Viagra tablet has known worldwide for its blue color and diamond shape. Right after expiry of a compound patent in Korea, many Korean companies launched generic versions of Viagra in local market. Among them, in particular, Hanmi Pharmaceutical decided to adopt their product’s shape and color as similar as possible to the original drug Viagra. As a result, Hanmi’s generic pill has almost a carbon-copy design with blue color and diamond shape with round edges. Through such a good price and clever marketing strategy, Hanmi could take nearly half the market in about 5 months after Pfizer's patent lapsed.

As an anticipated course, Pfizer filed a trademark infringement lawsuit against Hanmi but lost the first instance case. Pfizer appealed to the Seoul High Court and won the second instance case. Hanmi appealed the case to the Supreme Court late last year.

Pfizer obtained a trademark registration for Viagra’s diamond shape with blue color on February 17, 2005. (Korean TM Reg. No. 608,773) Hanmi contended that any diamond shape and blue color for drug tablets is common or conventional and thus does not have distinctiveness. Also Hanmi’s products have their own Trademark on the surface of tablet and on their package. The package is totally different from Viagra’s.

Hanmi argued that there is no likelihood of confusion between Viagra and Hanmi’s generic drug because (1) two products have their own TMs respectively on product itself as well as its package; (2) the subject drug must be distributed through doctor’s careful prescription and pharmacist’s delivery; (3) Hanmi used the diamond shape and blue color as design elements for drug tablets; and (4) such a diamond shape with blue color has been applied to drug tablets conventionally.

The Seoul Central District Court agreed with Hanmi’s arguments. However, on October 17, 2013, the Seoul High Court reversed the lower court’s decision and held that Hanmi infringed Viagra’s registered TM in diamond shape and blue color. The High Court held that the diamond shape with blue color had become a famous TM and there is likelihood of confusion about source of products having the same shape and color even though they have further TM on their surfaces and packages.

Hanmi appealed the decision to the Supreme Court. The case is pending. Pfizer has not brought the second lawsuit for damage compensation yet.