The Intellectual Property Trial and Appeal Board (“IPTAB”) of Korea recently issued a significant decision(Case No. 2024Won772) regarding the registrability of minimalist logos. The case highlights Hewlett Packard Enterprise Development LP’s (“HPE”) successful effort to overcome a “simple and common” rejection for its logo by demonstrating acquired distinctiveness. This ruling provides critical guidance on the evidentiary threshold for simple geometric marks to secure trademark protection. It serves as a valuable precedent for global entities seeking to safeguard minimalist brand identities under the Korean Trademark Act.

Case Background: A Rejection Based on Simplicity

The case centres on HPE’s application for its “Element Logo”, a rectangular green frame with a subtle gradient.

The Ministry of Intellectual Property (“MOIP”) initially refused the application under Article 33(1)(vi) and (vii) of the Trademark Act. The examiner decided that the mark consisted of a “simple and common” geometric shape, a basic rectangle, that lacked the inherent distinctiveness required to function as a source identifier. Furthermore, it was noted that such shapes are frequently used as search bars on the internet, making it difficult for consumers to associate the logo exclusively with HPE.

Facing this rejection, HPE appealed to the IPTAB, focusing its arguments on Article 33(2) of the Trademark Act, which exceptionally allows for the registration of a non-distinctive mark if it has acquired distinctiveness through use.

In Korean practice, establishing secondary meaning or acquired distinctiveness remains challenging, even though the 2014 amendment to the Act lowered the threshold from “remarkably recognized among consumers” to merely “recognizable to consumers” as a source identifier. Applicants typically must demonstrate nearly identical use of the mark on practically identical goods.

The IPTAB’s Reasoning: Evaluating Quality of Evidence

The IPTAB ultimately reversed the original rejection, finding that the Element Logo had indeed acquired distinctiveness through extensive use since 2015. Several factors were pivotal to this significant win:

• Extensive Sales and Market Dominance: HPE provided robust data showing its dominance in the Korean x86 server and storage market. From 2017 to 2024, HPE consistently ranked 1^st or 2^nd in market share, generating substantial revenue. The IPTAB was persuaded that the sheer volume of sales where the logo was prominently displayed on the front of physical servers had ingrained the mark in the minds of the relevant consumers.

• Targeted Professional Audience: The Board noted that the designated goods “computer servers, internet servers and data storage apparatus for corporate customers(computer hardware)” are not everyday consumer items but high-value hardware sold to IT professionals and large corporations through formal bidding and evaluation processes. These specialized users are more likely to recognize the “Element Logo” as a source identifier through professional exposure.

• The “Individuality” of the Logo in Combined Marks: A crucial point of contention was whether the use of the logo alongside the “Hewlett Packard Enterprise” word mark counted toward the distinctiveness of the logo alone. The IPTAB agreed with HPE that the green rectangle maintained its “individuality” within the combined mark. It ruled that the logo part could be perceived separately from the word portion, meaning its use contributed to the public’s awareness of the logo itself as a source identifier.

• Consistency Across Variants: The Board also accepted evidence of use of the solid green version of the rectangle mark without the gradient. It found that consumers would likely perceive this variant as identical to the applied-for mark due to the identical shape and common base color, thus allowing this usage to support the claim of acquired distinctiveness.

Conclusion

The HPE “Element Logo” victory reinforces that while the bar for secondary meaning in Korea remains high, it is not insurmountable for simple marks. By demonstrating long-term, high-volume use and establishing the logo’s independent role as a brand identifier within its specific industry, practitioners can successfully secure protection for even the most minimalist of designs.