[2] The record of using a trademark, which serves as a standard to determine whether a trademark without distinctiveness under Article 6(1)7 of the Trademark Act has distinctiveness as at the time of the decision of registration or the decision of additional registration of designated goods

[2] In a case where a trademark which cannot be registered because it falls under “other trademark without distinctiveness” under Article 6(1)7 of the Trademark Act and is obviously recognized as indicating goods related to a person’s business among consumers prior to the trademark registration decision or the additional registration of the designated goods, its effect belongs to the actual user. Thus, in principle, whether the trademark has distinctiveness as at the time of the registration decision or the additional registration decision of the designated goods should be determined based on the applicant’s trademark use records. However, in such a case, the applicant may take over the right to the trademark from the actual user prior to the application. In such a case, other than the applicant, whether the applicant has distinctiveness by the use of the trademark can be determined by considering the actual user’s trademark use record. Such legal principle likewise applies to service marks pursuant to Article 2(3) of the Trademark Act.

1. Regarding ground of appeal No. 1

Article 6(1) of the Trademark Act provides, “A trademark other than those as referred to in subparagraphs 1 through 6, in which case a trademark cannot be registered.” This means that even if a trademark does not fall under any of subparagraphs 1 through 6 of the same Article, the source between the goods and the goods of another person cannot be registered. Whether a trademark has no distinctiveness is objectively determined taking into account the concept of the trademark, the relationship with the designated goods, and the circumstances of the trade society, etc. In cases where it is difficult to recognize distinctiveness of the goods of another person under the social norms or where it is deemed inappropriate for a specific person to monopoly the trademark for public interest, such trademark shall not be distinctive (see, e.g., Supreme Court Decision 2008Hu4721, Jul. 29, 2010). Such legal doctrine applies likewise to a service mark pursuant to Article 2(3) of the Trademark Act.

According to the records, the word “monme” and “MONESSORI” are widely perceived and used as referring to the learning materials and teaching equipment applying a specific early childhood education theory or its theory among ordinary consumers as well as workers and traders in the industries related to early childhood education. Meanwhile, in the original adjudication of the registered service mark “” (registration No. 51732) of this case, the designated service business of this case is closely related to early childhood education or teaching materials and aids for early childhood education.

Examining these circumstances in light of the legal principles as seen earlier, the registered service mark of this case consisting of only the Korean language “,” which is not specially devised, cannot be seen as having distinctiveness as the source indication of self-supporting service in relation to the designated service of this case, and it is not appropriate to place a specific person monopoly. Thus, the registered service mark of this case constitutes “a service mark whose business is not recognizable” under Article 6(1)7 of the Trademark Act.

Therefore, the decision of the court below to the same purport is just, and contrary to the allegations in the grounds of appeal, there were no errors in the misapprehension of legal principles as to Article 6(1)7 of the Trademark Act.

2. Regarding ground of appeal No. 2

A. Article 6(1)7 of the Trademark Act means that even if a trademark does not fall under Article 6(1)1 through 6 of the aforesaid Act and its actual use cannot be registered. Thus, even if a trademark appears to have no distinctiveness when examining only its concept or the relationship with the designated goods without considering the situation of its use, if the applicant’s trademark appears to have been objectively recognized as indicating whose designated goods it used, then the trademark does not constitute a trademark having no distinctiveness as prescribed under Article 6(1)7 of the Trademark Act, and as a result, the trademark should not be deemed to have been used by the applicant for trademark registration on the grounds that the applicant’s use of the trademark constitutes an application for trademark registration of which the trademark cannot be seen as having been clearly recognized by the applicant’s right to use the designated goods prior to the determination of whether the trademark falls under the trademark’s actual use of the designated goods by virtue of the fact that the applicant’s trademark falls under Article 6(1)7 of the said Act or its actual use of the goods by virtue of the lack of distinctiveness among consumers (see Supreme Court Decision 201Hu663, supra).

B. We examine whether the use of the registered service mark of this case, which was registered in the name of the Defendant, could be considered as the actual use of the registered service mark of this case by the Korea Montreal Co., Ltd. (hereinafter “Nonindicted Company”).

(1) The reasoning of the judgment below and the records reveal the following circumstances. The non-party company has been engaged in the publication and sale of books related to early childhood education and home school professor business using marks such as "Korea Montreal," " Montreal" and "MONESSORI" or marks combining other letters or diagrams after its establishment in around 192. The defendant has owned all outstanding shares of the non-party company and operated the non-party company directly after its establishment. On the other hand, on October 30, 1998, the defendant was registered on December 31, 1998 with the registration order of "the registered service mark "" "the registered service mark "the designated service business", "the designated service business "the 200 Professor 20 Professor 28 Professor 20 Professor 20 Professor 20 Professor 28 Professor 20 Professor 10 Professor 10 Professor Professor 208 Professor Professor 208 Professor 192.

Examining these circumstances in light of the above legal principles, even if the non-party company had already used the registered service mark of this case for a considerable period of time for the pertinent designated service business prior to the registration decision of the instant registered service mark or the decision of additional registration of the designated service business, its effect belongs to the non-party company, which is the actual employer. However, in light of the relationship between the defendant and the non-party company, etc., it cannot be ruled that the defendant acquired the right to the registered service mark of this case from the non-party company prior to the filing of the application, the court below failed to exhaust all necessary deliberations to conclude that the registered service mark of this case cannot be used as data for the acquisition of distinctiveness due to the use of the registered service mark of this case by the non-party company,

A person shall be appointed.

(2) Meanwhile, according to the records, the non-party company continued to use part of the teaching materials, tools, books, etc. used for personal teaching business or home school teaching business and its advertisement, etc. prior to the date of the decision of additional registration of the designated service 2 of the designated service business at the time of original adjudication on the instant registered service mark (hereinafter “actually used marks”).

However, the marks of the non-party company’s actual use are combined with other letters, etc. while maintaining independence, which is recognized as identical to the registered service mark of this case. The other letters that are combined are merely a sign commonly used to indicate the subject of education or teaching contents, and such combination does not form a new concept to the extent that it cannot be deemed that the mark “monme” was used due to such combination. Thus, the actual use mark can be perceived as being separated from the part of the composition of the mark. Accordingly, the use of the marks by the non-party company can be deemed to have used the mark “monme” as an individual professor or Home School professor. Thus, at the time of determining whether the registered service mark of this case acquired distinctiveness through the use of private teaching business and Home School Business as a designated service business of private teaching business and Home School professor business, the use mark of the non-party company can be deemed to have been used by the non-party company as the actual use mark.

Nevertheless, the lower court erred by misapprehending the legal doctrine on the use of trademark, etc., and failing to exhaust all necessary deliberations, on the grounds that the registered service mark of this case, registered in the name of the Defendant, cannot be deemed as having acquired distinctiveness by use, since a considerable number of the evidence submitted by the Defendant regarding the use of the registered service mark of this case, as well as the combination of other components than the Montreal doctrine, is not the same as the registered service mark

(3) However, as seen below, the judgment below to the effect that the registered service mark of this case cannot be deemed to have a distinctive character due to the use of the non-party company, even at the time of the decision of initial registration and the decision of additional registration of the designated service business, as well as the time of the decision of additional registration of the service

(A) At the time of the original adjudication, we examine the designated service 1 (written editing, DV editing, book publishing).

According to the records, the non-party company published, manufactured, and sold infant learning teaching materials, tools, etc. using the marks such as "Korea Montreal", "Korea Montreal", "MoNESO", or "MOESI", etc., and paid expenses for advertising and publicity to a certain extent until October 30, 1998, which is the date of the first decision on the registration of the service mark of this case. On the other hand, in the case of the original registration of the registered service mark of this case, it is known that other companies than the non-party company, used the mark containing the word "Motheme" or "MOTRI" at the time of the first decision on the registration of the registered service mark of this case, even if considering all the advertisement records and sales records of the non-party company until the time of the first decision on the registration of the registered service mark of this case asserted by the defendant, it cannot be said that the first decision on the service business of this case is clearly known to consumers related to the service business of this case as at the time of the first decision on the registration of this case.

(B) In the case of the original adjudication, the education and research business, the provision of educational information business, and the care center business among the designated service business 2.

According to the records, neither the defendant nor the non-party company used the registered service mark of this case for educational research business, educational information business, and child care center business. Therefore, the registered service mark of this case cannot be deemed to have been clearly perceived as indicating a service business related to his business among consumers around April 21, 2009, which is the date of decision of additional registration of each designated service business.

(C) In the designated service business at the time of the original trial, I examine the personal teaching business and the Home School Teaching Business among the designated service business.

Examining the record in light of the legal principles as seen earlier, inasmuch as the term “” or “Korea Montreal” is widely recognized and used as referring to the learning teaching materials and instruments applying a specific early childhood education theory or its theory among ordinary consumers as well as employees and traders in the industries related to early childhood education and traders, it is difficult to readily conclude that the registered service mark of this case consisting of only “Korean”, which is not specially devised at the time of the decision to additionally register the designated service business of individual professors and homeschool professors, is clearly perceived and used as referring to the learning materials and instruments applying a specific concept or its theory to ordinary consumers or transaction parties.

In other words, the non-party company spent approximately 30.4 billion won for 16 years from 1993 to 2009 advertising expenses. The non-party company sold approximately 189.2 billion won in relation to the Home School Teaching Materials and Home School Teaching Services. The registered service mark of this case was awarded the education brand of the Republic of Korea in early childhood education in 2004, 2006, and 2008. At the time of the decision of additional registration of the designated service 2, the registered service mark of this case had considerable consumption in relation to the personal teaching or Home School Teaching Services at the time of the decision of additional registration of the registered service mark of this case. However, considering that the personal teaching or Home School Teaching Services were not only at the time of the initial registration of the registered service mark of this case, but also at the time of the initial registration of the registered service mark of this case, it was difficult for the non-party company to use the word "MNAI" or the service mark of this case to use the personal teaching or service mark of this case.

3. Conclusion

Therefore, the appeal is dismissed, and the costs of appeal are assessed against the losing party. It is so decided as per Disposition by the assent of all participating Justices.

Justices Ko Young-han (Presiding Justice)