On February 26, 2026, the Supreme Court of Korea delivered a judgment (Case No. 2023Hu11012) clarifying that design protection and trademark protection are neither mutually exclusive nor elective under intellectual property law. Overturning a prior decision by the IP High Court, the Supreme Court held that a three-dimensional configuration of a product may function simultaneously as an aesthetic design and an enforceable, source-identifying trademark. This ruling provides meaningful guidance on assessing “trademark use” in non-traditional marks, offering brand owners a clearer legal basis to safeguard their commercial trade dress against unauthorized imitation.

1. Background and Procedural History

The disputed product involved an airborne inflatable towable water-sports leisure tube (see Image 1 below) designed to become airborne via propulsion when pulled by a powerboat. The Defendant (the registrant) held a registered three-dimensional trademark for the distinctive exterior shape of the towable tube, designated for water sports equipment. In addition, while the Defendant had previously held a registered design right for the same shape, the design right had expired in 2019 due to the expiration of its statutory term. The Defendant had manufactured and distributed this proprietary leisure craft for an extensive period, establishing recognizable trade dress and market presence.

Image 1

When the Plaintiff began commercializing and operating towable tubes (see Image 2 below) featuring an exterior shape virtually identical to the registered 3D mark, the Defendant filed a petition for positive confirmation of the scope of rights (scope confirmation trial) before the Intellectual Property Trial and Appeal Board (IPTAB), asserting that the Plaintiff’s product fell within the scope of protection of the Defendant’s registered 3D trademark.

Image 2

The IPTAB ruled in favor of the trademark owner (Defendant). However, on appeal, the IP High Court reversed the IPTAB decision. The IP High Court concluded that the Plaintiff’s product configuration served purely decorative, aesthetic, or functional purposes (i.e., design features) rather than functioning as a source-indicating trademark. Consequently, finding that the Plaintiff was not engaging in “trademark use”, the IP High Court dismissed the claim without conducting further comparative analysis regarding mark similarity.

The Defendant appealed the IP High Court’s decision to the Supreme Court.

2. Core Legal Issues and the Supreme Court’s Ruling

The primary legal questions presented before the Supreme Court were whether a three-dimensional product configuration can be protected simultaneously as a design and a trademark under Korean intellectual property law, and whether the presence of aesthetic characteristics automatically negates a finding of “trademark use” or if the actual perception of relevant consumers must govern.

In this regard, the Supreme Court reaffirmed that trademark protection and design protection are neither mutually exclusive nor elective. An identical configuration may be eligible for design protection while concurrently functioning as a protected trademark, and the mere fact that a shape embodies aesthetic, decorative, or design qualities does not mechanically bar it from serving a source-identifying function.

The Court emphasized that whether a three-dimensional product shape constitutes trademark use must be determined objectively based on the totality of circumstances in actual commercial transactions. If a shape functions to indicate commercial origin to general consumers, its deployment qualifies as trademark use even if it also provides visual embellishment or functional utility. This requires examining factors such as marketing methods, the existence of acquired distinctiveness (secondary meaning), and the actual perception of relevant consumers and traders. Accordingly, the Supreme Court held that the IP High Court erred by summarily concluding that the Plaintiff’s tube shape was merely decorative without adequately examining how consumers in the leisure sports market actually perceive the distinctive configuration.

3. Practical Implications and Key Takeaways

This ruling carries notable commercial and legal implications for brand management and intellectual property enforcement in South Korea. First, brand owners can more effectively enforce registered 3D marks against copycats who attempt to shield themselves by claiming their products are merely functional designs or standard commodity forms. Second, because design rights expire after twenty years under Korean law, maintaining a registered 3D trademark provides a legal mechanism for securing indefinite commercial exclusivity as long as secondary meaning is sustained. Consequently, brand owners launching innovatively shaped products should consider an integrated filing strategy—leveraging design rights for swift short-to-medium-term market protection while securing 3D trademarks to anchor enduring brand equity. Finally, the decision reinforces the evidentiary focus in disputes involving non-traditional marks, requiring parties to concentrate on actual consumer perception and trade reality through consumer surveys, sales figures, advertising expenditures, and evidence of market recognition.