In our experience handling a large number of office actions in Korea, the most common grounds for refusal are, in order:
- Unclear or overly broad descriptions of goods and services
- Conflicts with earlier similar marks
- Lack of distinctiveness
The first two can usually be solved by amending the goods, obtaining consent, or removing the earlier mark. Distinctiveness refusals are different: they go to the mark itself, and they are harder to overcome.
Korea tends to read distinctiveness broadly
From our practice, MOIP examiners tend to take a broad view of what lacks distinctiveness. Marks that pass easily in other countries are sometimes refused in Korea. Typical triggers include:
- Descriptive words — words that describe the quality, function, ingredients, purpose or place of the goods, including English words that Korean consumers are expected to understand.
- Laudatory or common expressions — "premium", "best", "smart", "pro", and similar terms, alone or in simple combinations.
- Simple or very short marks — one or two letters, simple shapes, or common surnames.
- Combinations of descriptive words — two descriptive words together are often treated as still descriptive, even when the combination is new.
- Geographic names that are well known.
Why these refusals are hard to overcome
Distinctiveness is a judgment call, and it is not easy to change an examiner's view once a mark has been found to lack distinctiveness. A response that simply says "the mark is distinctive" is unlikely to succeed. To have a real chance, you need something more concrete.
What can work
1. Precedents. Earlier Korean registrations of comparable marks for the same or similar goods, and decisions of the Intellectual Property Trial and Appeal Board or the courts, can persuade an examiner that the refusal is inconsistent with MOIP's own practice. This is the most effective argument in many cases — but it depends on finding the right precedents.
2. Evidence of acquired distinctiveness. If the mark has been used extensively in Korea — sales, advertising, media coverage, market share, consumer recognition — it may be registrable because consumers already recognize it as your brand. The evidence must relate to Korea and to the goods in the application; worldwide fame alone is rarely enough.
3. Narrowing the goods. A word that is descriptive for some goods may be distinctive for others. Deleting or narrowing the goods for which the mark is descriptive can sometimes save the application for the rest.
4. Explaining a different meaning or overall impression. When the mark has a meaning or an overall impression that is different from the descriptive reading the examiner assumed, a well-supported explanation can succeed — particularly for coined spellings or unusual combinations.
We have succeeded with distinctiveness responses where good precedents existed or where we could submit strong evidence — but we will tell you honestly when the chances are low.
Before you file: choose a distinctive mark
The best way to handle a distinctiveness refusal is to avoid it. If you can, file your mark with a distinctive element — a coined word, a logo, or a distinctive combination — rather than a descriptive term alone. If the plain word is important, consider filing both the word and a stylized version.
How we help
We assess distinctiveness risk before filing, search for helpful precedents, and prepare responses with evidence when an office action is issued. Email help@dusonlaw.com with your mark and goods.
This guide is general information, not legal advice.