August 8, 2016
The use of common words as a trademark is a double-edged sword. From a marketing standpoint, it is beneficial to use them because they are easy to recall. From a legal standpoint, however, it is risky to use them because they are considered weak in the spectrum of trademark distinctiveness. The recent case of Unilever N.V. vs. Amorepacific Corporation (IPC No. 14-2011-00450) perfectly illustrates the risks that come along with using common words as a trademark.
The case stems from the trademark application filed by Amorepacific Corporation (“Amorepacific”) for the mark ‘TEEN: CLEAR AND DEVICE’ for use on goods under Class 3 including skin lotions, cosmetics, cosmetic preparation for skin care, among others. Unilever N.V. (“Unilever”) instituted an opposition against the application primarily arguing that the subject mark is confusingly similar to its mark ‘CLEAR’ registered under the same class. Unilever further claimed that it has the right, as the registered owner of the CLEAR mark, to prevent third parties from registering identical or confusingly similar marks. It also argued that its mark is entitled to a wider scope protection because ‘CLEAR’ was registered and being used in different countries and hence should be considered a well-known mark.
In response, Amorepacific alleged that the marks are different in terms of their visual and aural attributes. Amorepacific also questioned Unilever’s claim of exclusive rights over the word ‘CLEAR,’ because it is a common word incapable of exclusive appropriation. There are numerous registered trademarks belonging to third parties which use and adopt the word “clear” that cover goods falling under Class 3. Lastly, Amorepacific argued that Unilever’s mark cannot be considered well-known as it failed to satisfy the requirements set out by the relevant laws.
The Bureau of Legal Affairs admitted that the competing marks cover closely-related goods. Nevertheless, the Bureau found no likelihood of confusion. It cited several distinguishing features between the marks and concluded that they are visually and aurally distinct from each other. Furthermore, the Bureau noted that while both marks incorporate the word ‘CLEAR’, the trademark register is replete with trademarks using the word and covering goods under Class 3. Thus, to the Bureau, it shows that no one has the exclusive right to use word ‘CLEAR’ for goods under Class 3. Accordingly, the opposition filed by Unilever was dismissed.
This case illustrates that while there is no absolute prohibition against inclusion of a common word in a mark, the cost of doing so seems to outweigh its supposed benefits. There is a great risk of trademark dilution when one incorporates a common word into his mark. This is because the lack of exclusivity over a component of a mark will only lead to numerous other marks bearing the same component. The silent discouragement against common words in marks seems to gravitate towards the very essence of a trademark—to point out distinctly the origin or ownership of the product, for the good of both the proprietor and the consumers.