While words remain the most common form of trademarks, graphic symbols, or other non-verbal indicia need to be protected as trademarks if they indicate source.[1] These non-verbal marks include color, shapes, sound and scent as well as graphic logos. For many years, courts have been reluctant to allow the registration of such marks because they doubted the necessity of their trademark protection. However, the frequent use of such marks and the increased interest has been demanding the switch of recognition.[2] Thus, a variety of indicia came into protectable trademark groups in recent years. Today even a single color or sound can be registered and protected in some countries.[3]
However, each country’s trademark system changes in a different rate and a different orientation, which leads to confusion in international businesses. As economic activities are globalizing more and more, the trademark strategy of a company is no longer confined in national trademark law and policy. Most trademark issues today involve at least one foreign country.[4] Thus, a trademark owner should understand the realities of the legal environment surrounding a trademark protection in other countries because a trademark right affects significantly the company’s marketing power.[5] In other words, a trademark owner must determine the protectability of his mark and the scope of its right under a foreign law before he begins doing business in another country. As far as a conventional verbal trademark is concerned, a trademark owner can have pretty good expectations. However, matters are different in trade dress protection cases.
The trade dress of a product is defined as its “total image and overall appearance” including “features such as size, shape, color or color combinations, texture, graphics, or even particular sales techniques."[6] Today many companies are putting a great deal of time, effort, and money in developing distinctive products and packaging shape.[7] Like conventional verbal marks, trade dress is also an important property of a company because the company’s goodwill is accumulated in it.[8] Thus, it is no wonder that a company seeks to protect its trade dress. However, since trade dress protection is still taking shape in many countries, it is unclear as to whether such marks will be protected and in what manner.
As trade dress owners demand a universal protection for trade dress, international societies made efforts to harmonize the requirements for trade dress protection and its scope. Thus, they reached agreements on the broader protection of trademark via treaties, but there are still substantial differences in its implementation.[9] In this situation, this article compares trade dress protection in the United States and Republic of Korea. The United States has protected trade dress under common law for a long time regardless of its registration. However, trade dress is an unfamiliar concept in many civil law countries including the Republic of Korea (“Korea”). Korea has not applied a general protection on trade dress. This disparity in the scope of protection affects substantially trade relationships between two countries.
More specifically, part II describes the relationship between trademark and trade dress and the historical development of trade dress protection in the United States and Korea. In addition, Part II refers to the international approaches regarding trade dress protection in treaties including the WTO’s TRIPS[10] and the Madrid Protocol[11]. Part III examines the requirements for trade dress protection and what constitutes infringement under the U.S. Lanham Act and Korean Trademark laws respectively.[12] Finally, part IV analyzes the adequacy of the current legal framework for protecting trade dress in the United States and Korea, and discusses the necessity for harmonization.
II. Background
A. Trademark and Trade dress
A trademark is “any word, name, symbol, device, slogan, package design or combination of these that serves to identify and distinguishes a specific product from others in the market place or in trade.”[13] Trademarks identify one seller's goods and distinguish them from goods sold by others, and they signify a single source for all goods bearing the same mark.[14] Trademarks also signify the same level of quality for goods bearing the same mark, and they serve as means of advertising and selling the goods.[15]
Trademark law exists to protect both a consumer’s interest and a trademark owner’s interest. A consumer can identify the source, nature, and quality of a product, and a seller can maintain the goodwill and reputation attached to a mark through a trademark protection.[16] Trademark rights have grown out of actual use of the mark in commerce.[17] A trademark right lasts as long as the mark continues to function as a mark to identify the products or services coming from a single source, and the mark is not abandoned.[18] This is an important characteristic, which is different from other intellectual properties such as a patent right and a copyright having a limited time.
On the other hand, trade dress is a subset of trademarks, and is generally governed by the same statutory and common law principles.[19] Historically, trade dress protection began from the recognition that a product packaging can serve as a source identifier like other conventional trademarks. As times goes by, the necessity of protection for trade dress has been extended to for a products configuration itself. In 1986, the U.S. court concluded there was no substantial difference between trade dress and trademarks.[20] Today trade dress is used to refer to the classification of different source-identifying subject matter rather than any different treatment under modern trademark law.
B. The development of trade dress protection in The United States
Trade dress protection has evolved through case law in the United States.[21] Historically, the overall image of containers and labels used in product packaging was protected under common law despite lack of a statutory ground. The Lanham Act, enacted in 1946, is the federal statute providing a broad federal protection against unfair competition.[22] However, trade dress was not registrable in the early stage of the Act. Two decades later, the Pinch Bottle for Haig & Haig scotch whiskey obtained federal registration in 1958,[23] and the Coca-Cola bottle was also registered in 1960.[24] The U.S. Congress recognized the necessity of statutory protection of trade dress, and they substantially revised the Lanham Act to provide a broad protection in 1988.[25] Thus, trade dress became protectable under amended § 43(a) of the Act.[26]
In 1999, Congress codified non-functionality requirement for registration in the Lanham Act §2(e)(5), and placed on the plaintiff the burden of proving non-functionality in a case of unregistered trade dress.[27] Recently, courts have expanded trade dress protection to a product design or color as well as a product packaging and labeling.[28] However, the statutory requirements for trade dress are still unclear in the United States. Thus, they have developed the specific criteria for trade dress protection through the courts.[29]
C. The development of trade dress protection in Korea
The Korean Trademark Act does not mention the term “trade dress” directly, but we can find a ground for the trade dress protection under the provisions related to “a three-dimensional shape.” To meet the prerequisite for joining the Madrid Protocol in 1998, Korea expanded the scope of its trademark law to allow three-dimensional marks to be registered.[30] Under amended § 2(1)(i) of the Korean Trademark Act, “trademark" includes a three-dimensional shape or any combination of a three-dimensional shape and a sign, a character, or color, etc.[31]
Apart from the Korean Trademark Act, well-known trade dress has been protected under the Unfair Competition Prevention and Trade Secret Protection Act (“UCPA”) for a long time. Under Article 2 of the UCPA, "acts of unfair competition" includes an act causing confusion with another person's goods by using signs identical or similar to another person's container or package of goods widely known in Korea.[32]
Even though an unregistered and well-known trademark can be protected under the UCPA, registration of a trademark is more important in Korea than in a common law country like the United States because the principal feature of trademark law in civil law countries is that rights arise through registration. Thus, it is a significant change that the Korean Trademark Act of 1988 allowed a three-dimensional mark to be registered. However, the concept of a three-dimensional shape in the Korean Trademark system is not identical to trade dress in the United States. Furthermore, it is not clear that a product design itself can be protected under the UCPA because the Act defines only containers or packages of the product.
D. Protection of trade dress in international treaties
In spite of many proposals and disputes, international societies did not reach consensus on trade dress protection. However, most treaties recognize the registrability of three-dimensional shapes. The TRIPS Agreement defines a trademark as “[a]ny sign capable of distinguishing goods or services.”[33] Though the language in the TRIPS Agreement neither includes nor excludes the protection of trade dress, it is known that the definition of a trademark is broad enough to include three-dimensional marks since at least some shapes and packaging designs are inherently capable of distinguishing any relevant goods and services, and of those that are not, most are likely capable of acquiring distinctiveness through use.[34]
Recently the Madrid Agreement and the Madrid Protocol (“the Madrid System”) changed an international trademark registration system completely.[35] The Madrid System allowed nationals of the countries who are members of the Agreement to protect their trademarks, whether for goods or for services, in any or all of the other member countries.[36] This is done by means of a single international application that is filed in one place, in one language, with a minimum of formalities, with one fee and paid in a single currency.[37] The Madrid System allows three-dimensional shapes to be registered as trademarks.[38] The Madrid Protocol reminded its members of the importance of three-dimensional mark protection by requiring a member state to protect three-dimensional marks as the prerequisite for joining the Protocol.
The regional agreements including the EEC Harmonization Directive, the NAFTA Agreement, and the Andean Pact also allow trademark registration of the shape of goods or their packaging.[39] They provide some guidelines regarding the protection and registration for the shape of goods or their packaging.
III. Difference in the protection of trade dress between the United States and Korea
A. The United States
1. Requirement for trade dress protection
To receive trade dress protection under § 43(a) of the Lanham Act, a party must show (1) that a likelihood of confusion exists between its trade dress and the offending party's trade dress, (2) that the trade dress at issue is not merely a functional aspect of the product, and (3) by the interpretation of the courts, that the trade dress is distinctive.[40]
a. Distinctiveness
The trade dress must be distinctive, that is, provide a signal of the origin of the associated goods or service. There is no difference between trade dresses and conventional trademarks in that both of them should fulfill with distinctiveness requirement for protection and registration. However, there have been disputes in courts for a long time as to if trade dress could be inherently distinctive, trade dress owner always should prove the obtaining of a secondary meaning, and trade dress needs to be divided in a certain type for such determinations.[41]
First, the Supreme Court made clear that trade dress can be inherently distinctive without a showing of secondary meaning in Two Pesos.[42] Prior to the Two Pesos decision, there has been inconsistency among courts’ conclusions as to whether trade dress is capable of being inherently distinctive. While some courts required a showing of secondary meaning for trade dress protection, other courts held that trade dress can be inherently distinctive, thus a showing of secondary meaning can be omitted.[43]
In Two Pesos, trade dress was defined the trade dress of a chain of Mexican restaurants as “a festive eating atmosphere having interior dining and patio areas decorated with artifacts, bright colors, paintings and murals.”[44] In this case, the Supreme Court held that “trade dress that is inherently distinctive is protectable under §43(a) of the Lanham Act without a showing that is had acquired secondary meaning.”[45] While this decision make U.S. trade dress law progress in that it provided a unified standard, it did not set out a clear test as to what constitutes inherently distinctive trade dress.[46] In other words, this decision had a serious limitation in that the Court failed to provide a clear guideline to determine when trade dress is inherently distinctive. In addition, the Court merely cited the Abercombie factors used for conventional verbal marks in determining the distinctiveness of trade dress, but the Court did not mention as to whether or not the Abercombie spectrum is an appropriate test for trade dresses as well as verbal marks.[47] Thus, this decision arose many controversies on the distinctiveness test.
Three years later, the Supreme Court applied different standards on trade dress consist solely of a color in Qualitex.[48] In this case, the Court held that secondary meaning should be proved although a color could be protected under § 43 and § 32 of the Lanham Act.[49] The subject of trade dress at issue was a green-gold dry-cleaning press pad.[50] The petitioner obtained a principal registration on the color of its pads, and claimed the exclusive right on the color.[51] The conclusion was different from Two Pesos although the Court also referred to the Abercrombie test developed for word marks in Qualitex. The Court noted that a product’s color is like a descriptive word mark, thus a color may indicate its product’s origin as a result of using the color over time.[52] Thus, a color could be protected only upon a showing of secondary meaning because color is unable to identify a particular source inherently.[53]
In Wal-Mart, the Supreme Court held that product design, like color, is not inherently distinctive, thus a product’s design is protectable only upon a showing of secondary meaning because design feature is intended not to identify the source, but to render the product itself more useful or more appealing.[54] In this case, the trade dress was the design of spring/summer one-piece seersucker outfits decorated with appliqués of hearts, flowers, fruits and the like.[55] Compared with the previous case laws, the Wal-Mart decision is very important in that the Court differentiated trade dress into two categories: product packaging and product design. Consumers should not be deprived of the benefits of competition with regard to the utilitarian and esthetic purposes that product design ordinarily serves by a rule of law that facilitates plausible threats of suit against new entrants based upon alleged inherent distinctiveness.[56]
The court distinguished Wal-Mart from Two Pesos by drawing lines between product-design and product-packaging trade dress. However, the Court failed to specify the test for inherently distinctive for product design trade dress or product packaging trade dress by merely mentioning the Abercrombie test.[57]
In summary, United States courts basically have recognized that trade dress can be protectable under the Lanham Act, but they classified trade dress to apply the standard regarding a secondary meaning. If trade dress falls into the product-packaging category, it would not necessarily show secondary meaning. However, if trade dress falls into the product-design or product-color categories, a secondary meaning must be proved to be protectable because a color or a product configuration can never be inherently distinctive. At first glance, such different approaches seem show inconsistency of court decisions. However, it is desirable that courts impose some restrictions within reasonable boundaries in that colors and designs serve mainly purposes other than source identification, considering the goal of trademark laws that is to promote fair competitions and avoid consumers’ confusion.
b. Functionality
To be protected under the Lanham Act, trade dress must be nonfunctional.[58] Prior to the Lanham Act, common law did not apply trademark protection for product features that were functional.[59] According to §43 of the amended Lanham Act, the owner of an unregistered trade dress has the burden of proving that the trade dress is not functional.[60] While distinctiveness is a common requirement for conventional verbal trademarks as well as trade dress, functionality is a unique requirement for trade dress protection. United States courts created the functionality doctrine to resolve the conflict between trademark law and patent law: "trade dress protection of product designs conflicts with the Patent Clause by offering perpetual patent-like protection to designs that do not meet the standards of patentability."[61] Functionality requirements in trade dress need to accommodate patent law as the regime for protecting utilitarian features, and preserve free and effective competition by ensuring that competitors can copy necessary features.[62]
The Court in In re Morton-Norwich held that functionality is determined in light of utility, which is determined in light of superiority of design, and rests upon the foundation essential to effective competition.[63] The Court also listed several factors to determine whether this test was met: (1) the existence of an expired utility patent; (2) the fact that the seller proclaims its utilitarian advantages; (3) the fact that there are other alternatives available; and (4) the fact that the design is the result of a comparatively simple and inexpensive means of manufacturing.[64] The court concluded that the appellant's configuration of its spray bottle did not meet this test and was not functional because "competitors have apparently had no need to simulate appellant's trade dress, in whole or in part, in order to enjoy all of the functional aspects of a spray top container."[65] This finding was based on the premise that "no particular housing design was necessary to have a pump-type sprayer."[66]
In addition, when goods are bought largely for their aesthetic value, their features may be functional because they definitely contribute to that value and thus aid the performance of an object for which the goods are intended.[67] On the other hand, the functionality test called the Inwood test has been widely accepted in the United States since 1982.[68] In this case, the Court determined the functionality of capsule color on the ground that “a product feature is functional if it is essential to the use or purpose of the article or if it affects the cost or quality of the article.”[69]
Recently, the Supreme Court in TrafFix held that where the design is functional under the Inwood standard there is no need to proceed further to consider competitive necessity.[70] In this case, the TrafFix tried to protect its dual-spring design of the sign stands as trade dress after the expiration of its utility patent.[71] The dual-spring design of the sign stands provides a unique and useful mechanism to resist the force of the wind.[72] The Court denied the trade dress protection of the design by reasoning a utility patent is strong evidence that the features therein claimed are functional.[73] Especially, the Court strongly affirmed the traditional functionality test by stating once a court finds that a design is "essential to the use or purpose of the product or if it affects the cost or quality of the device," it is functional regardless of the alternative design possibilities or a significant non-reputation-related disadvantage.[74]
A trademark right may last forever as long as the mark is being used in commerce unlike a patent right having a limited time. Thus, a trademark right may be the strongest exclusive right among intellectual property rights in the long-term view. It is very important for courts to cut properly circumventive strategies of companies because a wrong decision affluence significantly public interests and free competitions. In TrafFix, the Court appropriately dismissed claims to the design’s protection disclosed in a utility patent specification as trade dress.
2. Infringement
The trade dress owner obtained a federal registration can cause of an action for infringement under § 32 of the Lanham Act.[75] The registrant has to demonstrate only a likelihood of confusion without a showing of distinctiveness and non-functionality of the trade dress because the validity of trade dress is presumed. In the absence of a federal registration, a trade dress owner has a cause of action for infringement under §43 of the Lanham Act.[76] However, the owner bear the burden of proving that the trade dress has been used in commerce, is distinctive, and nonfunctional besides proving the existence of a likelihood of confusion.[77]
Whether a trade dress is registered or not, its owner may be able to avail itself of the federal cause of action against unfair competition and dilution under the federal Lanham Act.[78] Dilution doctrine is generally available to owners of truly famous trade dresses. Whether they own a federal registration or not, trade dress owners also may be entitled to protection under state statutes and the common law.
B. The Republic of Korea
1. Requirements for trade dress protection
Distinctiveness and non-functionality are primary concerns to determine the protectability and registrability of trade dress in most countries, and Korea is not an exception. However, unlike the Untied States, Korea has not yet formed specific standards for trade dress protection through courts’ decisions because its history is too short and there is no trade dress infringement case reported in Korea.[79]
a. Distinctiveness
In Korea, all trademarks including trade dress must be distinctive to be protected under Korean Trademark laws. Revised Article 6(1)(iii) of the Korean Trademark Act provides illustratively the mark that consists solely of a sign indicating, in a common way, shape (including shape of packaging) cannot be registered due to a lack of distinctiveness.[80] Although this provision is introduced as the ground of three-dimensional marks registration, the Korean Trademark Act dose not mention as to when a three-dimensional shape can be registered.
The Examination Guideline of the Korean Intellectual Property Office (“the KIPO Guideline”) lists several factors to be determined if a three-dimensional mark can be registered though this Guideline dose not carry legal biding force to courts. First, the three-dimensional mark claimed is recognized as a common basic shape or design, a mark is deemed to have no distinctiveness.[81] In determining whether a three-dimensional mark is a common basic shape or design, the examiner should consider if general consumers recognize the shape or featured appearance of the three-dimensional mark as common features of the same species in the trade.[82] If so, the shape or packaging would be deemed to lack distinctiveness.[83] In addition, a sphere, cube, hexahedron, cylinder shape, etc. should be rejected for the registration on the ground of the mark consists solely of a very simple and commonplace sign.[84] Especially, an examiner should limit the distinctiveness of a three-dimensional mark by considering that the shape of a good are created to make it work effectively or enhance consumers' interest through its ornamental features, rather than identify the source of goods. [85]
Although the distinctiveness by the obtaining of a secondary meaning is accepted in Korea, the Korean Trademark Act and the KIPO Guideline are silent in the relationship between trade dress (more specifically, a three-dimensional mark) and its secondary meaning.[86] They do not have different standards for product design and product packaging protection. As a result, there is no clear criterion for determining when a trade dress is distinctive.
b. Functionality
Like the United States, only non-functional three-dimensional marks are registable in Korea.[87] Under the Korean Trademark Act, trademarks that consist solely of three-dimensional shapes that are essential for securing the functions of goods, or their packagings cannot be registered regardless of a secondary meaning.[88] The functionality is determined based on the practical advantage of the shape or the packaging known by the advertisement of the product or the function exerted from the shape or the packaging.[89] Especially, the Examiners should take into account if there is an alternative shape performing its same function, and if the alternative shape can be produced at the same cost or less.[90] The shape of a good cannot be registered even though it obtained a secondary meaning where the shape is essential for securing the functions of goods.[91]
In determining non-functionality, a examiner must take into account if the practical advantage of the shape or the packaging provides superiority on competition, or the monopoly of the shape of a product or the shape of a packaging prohibit unfairly free competition.[92] The evidence that a three-dimensional mark is functional includes materials showing (1) the existence of an alternative shape which is available or used in the relevant market; (2) the difference of production cost between the product shape and the alternative shape; (3) the information regarding patent, utility patent, or design patent (regardless of the continuance of the right) which are closely related to the function of the shape; (4) the practical advantage of the product or package shape known by the advertisements; and (5) the characteristics embodied in a product design.[93]
2. Infringement
The owner of a registered three-dimensional mark is entitled to bring suit against infringement in the Korean Trademark Act.[94] In such cases, the registrant bears the burden of proving only a likelihood of confusion because the mark is presumed to be distinctive and non-functional. On the other hand, the owner of an unregistered three-dimensional mark can bring suit for infringement under the UCPA only by proving that the container or package of a product is well-known as an source identifier in Korea.[95] While the three-dimensional marks defined in the Korean Trademark Act include both the shape of goods and the shape of packaging, the UCPA defines only containers or packages of a product.[96] Thus, it is not clear if a well-known product design or configuration can be protected under the UCPA in Korea. The UCPA is silent about when marks are well-known in Korea, but in practice, the well-known status of marks is shown through various types of circumstantial evidence including the length of the mark’s use in commerce, the volume of sales of goods, and the publicity associated with the mark in Korea.[97]
IV. Discussion
Distinctiveness and non-functionality are the requirements for the trade dress protection and registration in both the United States and Korea.[98] However, there are substantial differences in specific applications. First, the Korean courts have never defined the term “trade dress”, nor used the term. The Korean courts have pointed out a package design, a product design, or a three-dimensional mark respectively. They have not yet accepted the broad concept of trade dress although Korean trademark system introduced the protection of “three-dimensional marks” in 1998. Compared to the three-dimensional mark, Trade dress defined in the United States courts is a more comprehensive term.[99] This gap may make more divergent results in actual trade dress cases. For example, trade dress protection for a website design is one of recent issues in the intellectual property laws. The disputes are as to whether a website design should protect as trade dress. While we can access this issue with trade dress defined in the United States courts, it is hard to apply the three-dimensional mark defined in the Korean Trademark Act on this problem.
Second, Korea does not differentiate a package design and a product design. The U.S. Supreme Court in War-Mart required a showing of a secondary meaning to protect a product design by emphasizing other functions besides a source indication in a product design.[100] This attitude to a product design protection is appropriate because the excessive legal monopoly on a product design may be dangerous on free competition, and a product design may identify its source of origin, but the source indication is not an original function of a product design.[101] If Korea does not require to be proved a secondary meaning for a product design, the product design which was rejected by USPTO may have an exclusive right in Korea. This result would be inconsistent with the current Korean policy that provides trade dress protection restrictively. Thus, it would be desirable that Korea adopts the Wal-Mart standards that require an additional burden.[102]
Third, Korea did not yet introduce directly TrafFix standards in trademark law.[103] However, the Korean Trademark Act and the KIPO Guideline have similar standards. The TrafFix decision has two important lessons in determining the functionality of trade dress: (1) a utility patent is strong evidence that the features therein claimed are functional, and (2) it need not consider alternative design possibilities or whether a competitive will suffer a significant non-reputation-related disadvantage if a design is functional under the Inwood formulation.[104] The Korean Trademark Act provides apparently three-dimensional shapes that are essential for securing the functions of goods, or packagings may not be registered.[105] In addition, the KIPO Guideline provides that the difference of production cost and the information regarding patent, utility patent, or design patent can be the evidence of functionality.[106] Thus, the Inwood and TrafFix functionality tests are recognized in the Korean Trademark systems. However, the KIPO Guideline just illustrates several available evidences without priority. If the Guideline spells out the TrafFix conclusion that a product feature may functional even though it has an alternative shape, it would be helpful to avoid confusions in applications.
Korea is still not willing to grant an exclusive right to a product packaging or a product design. Thus, Korean Trademark laws focus on the limitation of trade dress protection. That means that Korea places the promotion of free competition prior to trade dress owner’s interest. At current stage, developed countries like the United Sates hold a predominant position over product designs. It is true that they can take more advantages than developing countries like Korea through a strong trade dress protection. Thus, no wonder that Korea is taking a prudent attitude in trade dress protection. However, the two recent U.S. Supreme courts decisions in Wal-Mart and TrafFix presented reasonable limitations to trade dress protection. Thus, Korea needs to reflect these cases in its trademark system, and make clear requirements for trade dress protection to promote both consumer interest and competition.
[1] Graeme B. Dinwoodie & Mark D. Janis, Trademarks and Unfair Competition: Law and Policy ch. 2 (Aspen Publishers 2004)
[2] Bereskin & Parr, C. Lloyd Sarginson & Lillian Sversky, Acquiring A Taste Around The World For Color, Shape, Slogans, Sound And Scent As Trademarks, http://www.bereskinparr.com/publications/ (accessed April 1, 2005).
[3] While the United States, the United Kingdom, Canada and Australia accept the registration of single colors as trademarks, Austria, Portugal, South Korea, Hong Kong, Japan, China, Taiwan, Brazil and Mexico prohibit the registration of a single color trademark. Id. The United States, Italy, and France have several sound mark registrations, and the United States also has scent mark registrations. Id.
[4] Clark W. Lackert, Global Trademark Practice In The 21st Century, http://www.buildingipvalue.com/ (accessed April 1, 2005).
[5] Id.
[6] Taco Cabana Int'l, Inc. v. Two Pesos, Inc., 932 F.2d 1113, 1118 (5th Cir. 1991). John H. Harland Co. v. Clarke Checks, Inc., 711 F.2d 966, 980 (11th Cir. 1983).
[7] See Supra n. 2.
[8] Id.
[9] See Infra Part II (describing trade dress protection in international treaties).
[10] The WTO’s Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS), negotiated in the 1986-94 Uruguay Round, introduced intellectual property rules into the multilateral trading system for the first time, http://www.wto.org/english/thewto_e/whatis_e/tif_e/agrm7_e.htm (accessed on April 1, 2005).
[11] Formally, the Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks, adopted at Madrid, Spain on June 27, 1989. The Madrid Agreement was adopted at Madrid, Spain on April 14, 1891, http://www.inta.org/madrid/ (accessed on April 3, 2005)
[12] 15 U.S.C. Lanham (Trademark) Act (15 U.S.C.). The Lanham Act is found in Title 15 of the U.S. Code and contains the federal statutes governing trademark law in the United States.
[13] The International Trademark Association (“INTA”), Information Center, Glossary, http://www.inta.org/info. (accessed on April 3, 2005). INTA is a not-for-profit membership association of more than 4,600 trademark owners and professionals, from more than 180 countries, dedicated to the support and advancement of trademarks and related intellectual property as elements of fair and effective national and international commerce. The Association was founded in 1878. Id.
[14] See J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition vol. 1, § 3:2 (4ed., 2001).
[15] Id.
[16] Id.
[17] Timothy M. Barber, High Court Takes Right Turn in TrafFix, but Stops Short of the Finish Line: An Economic Critique of Trade, Dress Protection for Product Configuration, 7 Marq. Intell. Prop. L. Rev. 259, 263 (2003).
[18] Id.
[19] Id.
[20] Blau Plumbing, Inc. v. S.O.S. Fix-it, Inc., 781 F.2d 604, 608 (7th Cir. 1986).
[21] See Restatement (third) of Unfair Competition § 16. Configuration of Packaging and Products: Trade dress and Product Designs, The design of elements that constitute the appearance or image of goods or services as protected to prospective purchasers, including the design of packaging, labels, containers, displays, décor, or the design of a product, a product feature, or a combination of product features, is eligible for protection as a mark under the rules stated in this chapter if, (a) the design is distinctive under the rule stated in § 13; and (b) the design is not functional under the rule stated in § 17.
[22] 15 U.S.C. §§ 1051-1127. The purpose of the Act is to “secure to the owner of a mark the goodwill of this business and to protect the ability of consumers to distinguish among competing producers.” Park N’Fly, Inc. v. Dollar Park and Fly, Inc., 469 U.S. 189, 198 (1995).
[23] Ex parte Haig & Haig Ltd., 118 U.S.P.Q. 229 (Comr. Pats 1958).
[24] Reg. Nos. 696,147 and 1,057,884.
[25] S.Rep No. 515, 100th Cong., 2d Session. 44(1988) reprinted in 1988 U.S.C.C.A.N.5577, 5607.
[26] 15 U.S.C. § 1125. False designations of origin and false descriptions forbidden (a) Civil action. (1) Any person who, on or in connection with any goods or services, or any container for goods, uses in commerce any word, term, name, symbol, or device, or any combination thereof, or any false designation of origin, false or misleading description of fact, or false or misleading representation of fact, which-- (A) is likely to cause confusion, or to cause mistake, or to deceive as to the affiliation, connection, or association of such person with another person, or as to the origin, sponsorship, or approval of his or her goods, services, or commercial activities by another person…
[27] 15 U.S.C. §1052. Trademarks registrable on the principal register; concurrent registration: No trademark by which the goods of the applicant may be distinguished from the goods of others shall be refused registration on the principal register on account of its nature unless it-- (e) Consists of a mark which… (5) comprises any matter that, as a whole, is functional.
[28] Wal-Mart Stores, Inc. v. Samara Bros, Inc., 529 U.S. 205 (2000); Qualitex Co. v. Jacobson Products Co., 514 U.S. 159 (1995).
[29] See Infra Part III (providing specific requirements for trade dress protection in the United States).
[30] 윤선희[Sunhee Yun], 상표·의장보호대상의 확대 및 보호방안[Protection and Expansion of Objects in Trademarks and Design Patents], Research No. 97-05 (Korea Intellectual Property Research Center, 1997).
[31] "Trademark" is defined as either of the following that is used on goods related to the business of a person who conducts business activities, such as producing, processing, certifying or selling such goods, to distinguish them from the goods of others: (a) a sign, a character, a figure, a three-dimensional shape or any combination of these; or (b) any combination of color with any of the items of subparagraph (a). The Korean Trademark Act § 2(1) (2002).
[32] (1) "Acts of unfair competition" means any of the following acts regardless of the intention: (i) an act of causing confusion with another person's goods by using signs identical or similar to another person's name, trade name, trademark, container or package of goods or any other sign widely known in the Republic of Korea as an indication of goods, or by selling, distributing, importing or exporting goods with such signs. The UCPA § 2(1)(i) (2001).
[33] Any sign, or any combination of signs, capable of distinguishing the goods or services of one undertaking from those of other undertakings, shall be capable of constituting a trademark. Such signs, in particular words including personal names, letters, numerals, figurative elements and combinations of colours as well as any combination of such signs, shall be eligible for registration as trademarks. Where signs are not inherently capable of distinguishing the relevant goods or services, Members may make registrability depend on distinctiveness acquired through use. Members may require, as a condition of registration, that signs be visually perceptible. TRIPS, I. Sec. 2. Art. 15. (1994).
[34] See Supra n. 2.
[35] See Supra n. 11.
[36] INTA., Madrid Protocol, at http://www.inta.org/madrid.
[37] Id.
[38] Id.
[39] European Economic Community (EEC) (established in 1958); North American Free Trade Agreement (NAFTA) (implemented 1994); Andean Pact (established in 1969).
[40] See Supra n. 1.
[41] Secondary meaning is used generally to indicate that a mark or dress "has come through use to be uniquely associated with a specific source." Restatement (Third) of Unfair Competition § 13, Comment e (Tent. Draft No. 2, Mar. 23, 1990). "To establish secondary meaning, a manufacturer must show that, in the minds of the public, the primary significance of a product feature or term is to identify the source of the product rather than the product itself." Inwood Laboratories, Inc. v. Ives Laboratories, Inc., 456 U.S. 844, 851(1982).
[42] Two Pesos Inc. v. Taco Cabana, Inc., 505 U.S. at 763 (1992).
[43] In discussing the conflict that had arisen in the circuits, the Court contrasted a Second Circuit case in which secondary meaning was required for a product design with a Fifth Circuit case in which secondary meaning was not required for product packaging. Two Pesos, 505 U.S. at 767, citing Vibrant Sales, Inc. v. New Body Boutique, Inc, 652 F.2d 299 (2d Cir. 1981), cert. denied, 455 U.S. 909 (1982) and Chevron Chemical Co. v. Voluntary Purchasing Groups, Inc., 659 F.2d 695, 212 U.S.P.Q. 904 (5th Cir. 1981), cert. denied, 457 U.S. 1126 (1982). The Seventh Circuit once stated in a footnote that a “product’s shape is never inherently distinctive.” Kohler Co. v. Moen, Inc., 12 F.3d 632, 641 (7th Cir. 1993).
[44] Two Pesos, 505 U.S. at 621.
[45] Id. at 767. § 43(a) provides no basis for distinguishing between trademarks and trade dress. Id. at 774.
[46] See Jill Sundberg, Wal-Mart Stores, Inc. v. Samara Bros., Inc.: Is the expansion of trade dress law for enough? 20 St. Louis U. Pub. L. Rev. 419 (2001).
[47] Arrayed in an ascending order which roughly reflects their eligibility to trademark status and the degree of protection accorded, these classes are (1) generic, (2) descriptive, (3) suggestive, and (4) arbitrary or fanciful. Abercrombie & Fitch Co. v. Hunting World, Inc., 537 F.2d 4, 9(2d Cir. 1976).
[48] Qualitex., 514 U.S. at 163.
[49] Id.
[50] Id.
[51] Id.
[52] Id
[53] Id.
[54] Wal-Mart Stores, Inc. v. Samara Bros, Inc., 529 U.S. 205 (2000).
[55] Id. at 207.
[56] Id. at 213.
[57] [The Wal-Mart decision has been criticized in that] the Court not only failed to clarify the issue, but also added to the confusion by making the courts determine the difference between product design and product packaging before applying some test. Jill Sundberg, Wal-Mart Stores, Inc. v. Samara Bros., Inc.; Is the expansion of trade dress law far enough, 20 St. Louis U. Pub. L. Rev. 417, 427 (2001).
[58] In 1998, Congress codified functionality in §§ 7:84, 19:75, 20:21 and 20:56 of the Lanham Act as a ground for ex parte rejection, opposition, cancellation of registration, and defense for as incontestably registered mark. Pub. L. No. 105-330, 112 Stat. 3064 (Oct. 30, 1998).
[59] A design is 'functional' for purposes of the rule stated in § 16 [which describes when design features are eligible for trademark protection] if the design affords benefits in the manufacturing, marketing, or use of the goods or services with which the design is used, apart from any benefit attributable to the design's significance as an indication of source, that are important to effective competition by others and that are not practically available through the use of alternative designs. Restatement (Third) of Unfair Competition § 17 (1993).
[60] 15 U.S.C. § 1125 (1994).
[61] Anthony E. Dowell, Note, Trade Dress Protection of Product Designs: Stifling the Progress of Science and the Useful Arts for an Unlimited Time, 70 Notre Dame L. Rev. 137, 151 (1994).
[62] "Unlike patent law, the purpose of trademark and trade dress law is to prevent customer confusion and protect the value of identifying symbols, not to encourage invention by providing a period of exclusive rights." Eppendorf-Netheler-Hinz Gmbh v. Ritter Gmbh, 289 F.3d 351, 355, 62 U.S.P.Q.2d (BNA) 1534, 1535-36(5th Cir. 2002) (quoting McCarthy, Supra n 14, § 6:3).
[63] In re Morton-Norwich Products, Inc., 671 F.2d 1332 (C.C.P.A. 1982).
[64] Id. at. 1339.
[65] Id. at. 1342.
[66] Id. at 1340-1341.
[67] Wallace Intl. Silversmiths, Inc. v. Godinger Silver Art Co., Inc., 916 F.2d 76 (2d Cir. 1990).
[68] Inwood Lab. v. Ives Lab., 456 U.S. 844 (1982).
[69] Id. at 850 (1982) (quoting Sears, Roebuck & Co. v. Stiffel Co., 376 U.S. 225, 232 (1964); Kellogg Co. v. National Biscuit Co., 305 U.S. 111, 112 (1938)).
[70] TrafFix Devices, Inc. v. Marketing Displays, Inc., 532 U.S. 23 (2001).
[71] Id. at 24.
[72] Id.
[73] Id. at 29.
[74] Id. at 30.
[75] 15 U.S.C. § 1114 (2005) (1) Any person who shall, without the consent of the registrant-- (a) use in commerce any reproduction, counterfeit, copy, or colorable imitation of a registered mark in connection with the sale, offering for sale, distribution, or advertising of any goods or services on or in connection with which such use is likely to cause confusion, or to cause mistake, or to deceive; or (b) reproduce, counterfeit, copy, or colorably imitate a registered mark and apply such reproduction, counterfeit, copy, or colorable imitation to labels, signs, prints, packages, wrappers, receptacles or advertisements intended to be used in commerce upon or in connection with the sale, offering for sale, distribution, or advertising of goods or services on or in connection with which such use is likely to cause confusion, or to cause mistake, or to deceive, shall be liable in a civil action by the registrant for the remedies hereinafter provided. Under subsection (b) hereof, the registrant shall not be entitled to recover profits or damages unless the acts have been committed with knowledge that such imitation is intended to be used to cause confusion, or to cause mistake, or to deceive.
[76] Theodore H. Davis Jr. & Andrea E. Parrish, Trade Dress Protection in the United States, Japan, South Korea, China, and Taiwan, INTA/ASIPI Conference (2004). See also 15 U.S.C § 1125(a).
[77] See Ross Bicycles, Inc. v. Cycles USA, Inc., 765 F.2d 1502, 1509 (11th Cir. 1985).
[78] (1) The owner of a famous mark shall be entitled, subject to the principles of equity and upon such terms as the court deems reasonable, to an injunction against another person's commercial use in commerce of a mark or trade name, if such use begins after the mark has become famous and causes dilution of the distinctive quality of the mark, and to obtain such other relief as is provided in this subsection. In determining whether a mark is distinctive and famous, a court may consider factors such as, but not limited to…15 U.S.C. § 1125 (c ).
[79] See 최규완 [Kyu-Wan Choi], 최근 트레이드 드레스 보호에 대한 미국 대법원판례와 우리의 입체상표제도 개선방향 [The Recent U.S. Supreme Court Cases Regarding Trade Dress Protection And Improvement Proposal On Korean Three-dimensional Mark System], vol. 69 Intellectual Property 21 (The Korea Intellectual Property Office Nov. 2001).
[80] (1) Trademark registration may be obtained except in the following cases: (i) where the mark consists solely of a sign indicating, in a common way, the usual name of the goods; (ii) where the mark is customarily used on the goods; (iii) where the mark consists solely of a sign indicating, in a common way, the origin, quality, raw materials, efficacy, use, quantity, shape (including shape of packaging) or price of the goods, or the method or time of manufacturing, processing or using them. The Korean Trademark Act § 6 (2002).
[81] The KIPO Guideline, § 8 (7).
[82] The KIPO Guidleline, Interpretation Reference § 11.
[83] Id.
[84] The KIPO Guideline § 11 (5); Trademark registration may be obtained except in the following cases: (vi) where the mark consists solely of a very simple and commonplace sign. The Korean Trademark Act § 6(1) (2002).
[85] The KIPO Guideline Interpretation Reference § 11.
[86] [E]ven if a trademark that falls under paragraph (1)(iii) to (vi), where, as a result of using the trademark before the application for registration under Article 9, consumers are easily able to recognize the person whose goods are indicated by the trademark, the trademark may be registered with the designated goods for which the trademark has been used; the same applies to designated goods and supplementary designated goods as defined in Articles 10(1) and 47(2)(iii), The Korean Trademark Act § 6(2) (2002).
[87] Ethan Horwitz, World Trademark Law & Practice, § 3.01, at S.KO 3-1. “A functional mark is generally described by the amendment as any three-dimensional shape… indispensable to securing the functional features of wrappers of goods or goods whose marks are to be registered. Id.
[88] [N]otwithstanding Article 6, trademark registration may not be obtained trademarks that consist solely of three-dimensional shapes that are essential for securing the functions of goods, or their packagings, that require trademark registration, The Korean Trademark Act § 7(1)(xiii) (2002).
[89] The KIPO Guideline, § 27 (1).
[90] Id.
[91] The KIPO Guideline, § 27 (1).
[92] The KIPO Guideline, § 27 Interpretation Reference § 1.
[93] Id.
[94] The following acts are considered to be infringements of a trademark right or (i) acts of using a trademark identical to the registered trademark of another person on goods identical or similar to the designated goods, or using a trademark similar to the registered trademark of another person on goods identical or similar to the designated goods; (ii) acts of delivering, selling, counterfeiting, imitating or possessing a trademark identical or similar to the registered trademark of another person to use or cause a third party to use the trademark on goods identical or similar to the designated goods; (iii) acts of manufacturing, delivering, selling or possessing instruments to counterfeit or imitate a registered trademark of another person or to cause a third party to counterfeit or imitate the trademark; (iv) acts of possessing goods to assign or deliver, that are identical or similar to the designated goods on which a trademark identical or similar to the registered trademark of another person is indicated. The Korean Trademark Act § 7(1)(xiii) (2002).
[95] Ethan Horwitz, World Trademark Law & Practice, § 7.01, at S.KO 7-3.
[96] "Acts of unfair competition" to mean any of the following acts regardless of the intention: (i) an act causing confusion with another person's goods by using signs identical or similar to another person's name, trade name, trademark, container or package of goods or any other sign widely known in the Republic of Korea as an indication of goods, or by selling, distributing, importing or exporting goods with such signs. The UCPA § 2(1) (2001).
[97] Young-chol Kim, Trade Dress Infringement in Korea, 51 Trademark World 21 (1992).
[98] See Supra Part III.
[99] Trade dress is defined “the total image of a product and may include features such as size, shape, color or color combinations, texture, graphics, or even particular sales techniques.” Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763, 764 (1992).
[100] Wal-Mart Stores, Inc. v. Samara Bros, Inc., 529 U.S. 205 (2000).
[101] The fact that product design almost invariably serves purposes other than source identification not only renders inherent distinctiveness problematic; it also renders application of an inherent-distinctiveness principle more harmful to other consumer interests. Consumers should not be deprived of the benefits of competition with regard to the utilitarian and esthetic purposes that product design ordinarily serves by a rule of law that facilitates plausible threats of suit against new entrants based upon alleged inherent distinctiveness. Id. at 213.
[102] See Supra n. 96.
[103] TrafFix Devices, Inc. v. Marketing Displays, Inc., 532 U.S. 23 (2001).
[104] Inwood labs., Inc. v. Ives Labs., Inc., 456 U.S. 844 (1982).
[105] [N]otwithstanding Article 6, trademark registration may not be obtained trademarks that consist solely of three-dimensional shapes that are essential for securing the functions of goods, or their packagings, that require trademark registration. The Korean Trademark Act § 7(1) (xiii).
[106] See Supra n. 92.