[2] Whether a lawsuit seeking the establishment, existence, invalidation, or revocation of a trademark right falls under the exclusive jurisdiction of the country where the trademark right is registered or the country where the registration is requested (affirmative), and the applicable law thereof (=the country of registration or the country where the registration is requested)

[3] The case holding that in case where Gap, who operates a comprehensive university "AMFN UNIVIVIVITY" located in Washington D.C., applied for trademark registration on the ground that the designated service business was "university education, teaching, etc." and the examiner of the Korean Intellectual Property Office rejected the trademark registration on the ground that the applied service mark falls under Article 6 (1) 4 and 7 of the former Trademark Act, the case holding that in case where the applied service mark constituted a new concept as a whole and constitutes a new distinctive character in relation to the designated service business, etc., on the grounds that the registered service mark constitutes a conspicuous geographical name, and that Article 6 (1) 4 and 7 of the former Trademark Act is not applicable to the designated service business

The same legal doctrine applies to a trademark that combines a conspicuous geographical name with the word “university.” Therefore, trademark registration may be granted in cases where the combination of a conspicuous geographical name and the word “university results in the creation of a new concept irrespective of the original conspicuous geographical name or a new distinctive character. In such cases, the combination of a conspicuous geographical name and the word “university” cannot be deemed as having created a new concept or distinctive character.

[Concurring Opinion by Justice Ko Young-han, Justice Kim Chang-suk, Justice Kim Shin, and Justice Cho Jae-chul] If a combination of a conspicuous geographical name and the word “university” forms an “inherent distinctiveness” regardless of its original conspicuous geographical name, unlike cases where trademark registration is exceptionally permitted pursuant to Article 6(2) of the former Trademark Act, it is unnecessary to examine whether the trademark constitutes “where, prior to the filing of an application for trademark registration, consumers can be identified as indicating the source of goods of a specific person as a result of using the trademark,” and the trademark can be registered without being limited to the scope of designated goods.

Even if general consumers, who stand for a trademark combining a geographical name and the word “university”, do not know the university whose name the trademark is a school name in a specific and individual manner, the composition of the trademark itself does not simply indicate a university located in a certain region, but rather indicate a specific university.

Therefore, a trademark that combines a geographical name and the word “university” can be deemed to have an “inherent distinctiveness” based on the composition of the trademark itself.

In addition, in cases where a trademark combining a geographical name and the word “university” constitutes the name of the university, there is little need to use the name of the university by any person other than the operating entity of the university, and no other circumstance is found to deem that granting exclusive use of the name to the operating entity of the university would be unreasonable in the public interest or harmful to the public interest. Accordingly, even if granting trademark registration of such trademark, it does not contravene the purport of Article 6(1)4 of the former Trademark Act, and rather accords with the same.

Ultimately, when a trademark combining a geographical name and the word “university” is actually used as the name of a specific university, and the person operating the relevant university files an application for trademark registration of the said name, the combination of a geographical name and the word “university” can be deemed to create a new concept or form a new distinctive character. Therefore, it should be deemed that such combination does not fall under Article 6(1)4 of the former Trademark Act.

[Concurring Opinion by Justice Jo Hee-de] If a trademark combining a conspicuous geographical name and the word “university” has been applied for registration with respect to university education, teaching, etc., which is the inherent business of the university, such trademark itself can be deemed as having an essential distinctive character sufficient to obtain trademark registration, and thus, such trademark does not fall under Article 6(1)4 of the former Trademark Act.

If a trademark combining a conspicuous geographical name and the word “university” has been applied for registration in relation to a field unrelated to the university’s designated business, it is difficult to recognize distinctiveness as it still remains in its original geographical meaning, and it is exceptionally possible to register trademark only in cases where the trademark is recognized as a trademark indicating the source of goods of a specific person by general consumers.

As can be seen, the requirements or grounds for recognition of distinctiveness vary depending on the type of designated goods or the field of use. As such, it is difficult to deem that a trademark combining a conspicuous geographical name and the word “university” has an inherent distinctiveness as its composition, without having taken into account the type of designated goods or the field of use.

[2] A trademark right is a right arising from the law of the country of registration, which requires registration, and is generally subject to the exclusive jurisdiction of the country of registration or the court of the country where the registration is requested, and the applicable law thereof shall also be deemed the law of the country where the registration is requested or the country where the registration is requested.

[3] In a case where Gap, a general university, located in Washington D.C., applied for trademark registration using designated service business as “university education business, teaching business,” etc., and the examiner of the Korean Intellectual Property Office decided to refuse trademark registration on the ground that the applied service mark falls under Article 6(1)4 and 7 of the former Trademark Act (wholly amended by Act No. 1403, Feb. 29, 2016; hereinafter the same shall apply), the case holding that in light of the actual usage of “AMICN UNIVIVIVITY,” the number of students, university facilities, domestic and foreign known at the portal site, etc., the applicant service mark is deemed to be well known in combination with users, including students studying in the United States, etc., in relation to university education business, which is designated service business, and thus, the applicant service mark constitutes the name of the designated university, and thus, the applicant service mark cannot be deemed to fall under the name of the designated university, and thus, the applicant of the former Trademark Act No. 7, an applicant for trademark registration.

1. A. Article 6(1)4 of the former Trademark Act (wholly amended by Act No. 1403, Feb. 29, 2016; hereinafter the same shall apply) provides that a trademark or service mark consisting solely of a conspicuous geographical name, the abbreviation thereof, or a map (hereinafter referred to as “trademark”) shall not be registered (Article 6(1)4 of the former Trademark Act (wholly amended by Act No. 14033, Feb. 29, 2016; hereinafter the same shall apply). The legislative purport is to avoid granting a right to exclusive use to a specific individual on the ground that the distinctiveness of a trademark cannot be recognized due to its apparent and well-knownness. In light of the foregoing, the foregoing provision is also applicable to a trademark combining a trademark with a mark that has no other distinctive character. However, where such combination creates a new concept or a new distinctive character therefrom, a trademark may be registered as a trademark (see, e.g., Supreme Court Decision 2012Hu15, Dec. 13, 20198).

The same legal doctrine applies to a trademark that combines a conspicuous geographical name with the word “university.” Therefore, trademark registration may be granted in cases where the combination of a conspicuous geographical name and the word “university results in the creation of a new concept irrespective of the original conspicuous geographical name or a new distinctive character. In such cases, the combination of a conspicuous geographical name and the word “university” cannot be deemed as having created a new concept or distinctive character.

Supreme Court Decision 2014Hu2283 Decided January 29, 2015 maintained the judgment below that the trademark “” does not fall under Article 6(1)4 of the former Trademark Act on the basis of the aforementioned legal principle. The court below, one of the reasons, cited that the above trademark combines between “Seoul” and “university”, which is a conspicuous geographical name, and “university” form a new concept of “National University located in Gwanak-gu, Seoul” rather than simply meaning “Seoul” and “university.” citing the reasoning of the judgment below, the Supreme Court held that the above provision did not err in the misapprehension of the legal principle on the above provision, and there is no reason to revise the above.

B. In a lawsuit seeking the establishment, invalidation, or revocation of a trademark right, which is a right arising under the laws of the country of registration, and requires registration, generally belongs to the exclusive jurisdiction of the country of registration or the court of the country where the registration was requested (see Supreme Court Decision 2009Da19093, Apr. 28, 2011, etc.), and the applicable law thereof shall also be deemed the law of the country where the registration was requested or the country where the registration was requested. Therefore, even if the Plaintiff is a U.S. corporation, as long as it applied for registration in Korea to use a service mark with the registration of the

2. A. We examine the above legal principles and records.

(1) The Plaintiff’s pending service mark (application number omitted) consists of “AMFN” with the designated service business as “university education and teaching business,” etc. Of them, the term “AMFN” constitutes a conspicuous geographical name that directly enables the U.S. users to recognize the U.S., and the term “UNFCCCIVIVSY” portion constitutes a technical mark in relation to “university education and teaching business,” which is a designated service business of the pending service mark.

(2) The pending service mark of this case is also the name of the university operated by the Plaintiff (hereinafter “instant university”). The instant university is a comprehensive university located in Washington D.C. in the United States of America and used “AMFN UNIVIVIVSY” as its school name for over 120 years since its establishment in 1893.

(3) The university of this case has established and operated 50 or more bachelor’s degree and master’s degree courses, and 10 or more doctor’s degree courses, and operates auxiliary facilities, such as libraries, museums, art galleries, broadcasting stations, Asian schools, and World Peace Center. The number of students enrolled in the university of this case has reached 10,00 persons, and Korean students entered the university of this case and 123 students enrolled in 208-209 every year. The university of this case has operated multiple degree courses jointly with the Egrativeian University, Seo River University, and Korea University and Korea University.

(4) From 2003 to 2012, the university of this case spent not less than US$18,150,000 each year for advertising expenses, and the number of visits to the website (www.amban.edu) of the university of this case was 8,50,000 times in 2012. The university of this case was 77 in the order of the university of the United States published “U.S.N.N.N. & Word Res.)” (U.S., published in 2013, and in particular, it was evaluated as a superior right from various media as a personal field of international business.

(5) On the search of “AMERICN UNIVIVIVITY” on the Internet portal site (www.naver.com), the search results revealed as of June 17, 2013, 59,761, 22,770, 5,876, and 5,876, and 5,876, as of June 17, 2013. In most cases, most of the contents related to the instant university are frequently searched by those interested in studying abroad to obtain information, etc. on the instant university.

(6) In light of the history, number of students, university facilities, the extent known at home and abroad, the actual usage of “AMFN UNIVIVSY” searched on portal sites, etc., the pending service mark of this case can be deemed to be widely known as the name of the university of this case operated by the Plaintiff, including those preparing to study in the United States, regarding university education business, etc., which is designated service business.

(7) Therefore, the pending service mark is combined with a conspicuous geographical name, “AMFN” and “UIVIVIVIVITY”, a technical mark, form a new concept as a whole, and furthermore, a new distinctive character is formed in relation to university education business, etc. which is a designated service business. Thus, it does not fall under Article 6(1)4 and 7 of the former Trademark Act.

B. Although the reasoning of the judgment of the court below is inappropriate, the conclusion that the service mark of this case can be registered as a service mark with respect to its designated service business is correct. The judgment of the court below did not err by misapprehending the legal principles as to Article 6(1)4 and 7 of the former Trademark Act, contrary to what is alleged in the grounds of appeal.

3. 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, except the Concurring Opinion by Justice Ko Young-han, Justice Kim Chang-suk, Justice Kim Shin, and Justice Cho Jae-chul and Justice Jo Hee-de. There is a concurrence with the Majority by Justice Kim So-young, Justice Park Sang-ok, Justice Park Jae-hyung, and Justice Park Jung-hwa, and a concurrence with the Concurrence by Justice Ko Young-han, Justice Kim Chang-suk,

4. Separate opinion by Justice Ko Young-han, Justice Kim Chang-suk, Justice Kim Shin, and Justice Cho Jae-in

A. (1) Article 6(1)4 of the former Trademark Act provides that a trademark consisting solely of a conspicuous geographical name shall not be registered. Therefore, the conclusion that a trademark consisting of a conspicuous geographical name and a trademark consisting of a trademark consisting of another trademark that has no distinctive character does not naturally derive from the language and text of Article 6(1)4 of the former Trademark Act.

According to established precedents, trademark registration may not be granted in cases where a conspicuous geographical name combines a non-distinctive mark with another mark. However, trademark registration may be granted in exceptional cases where such combination results in the creation of a new concept beyond the original conspicuous geographical name or a new distinctive character.

Therefore, whether a trademark combining a conspicuous geographical name and the word “university” can be registered as a trademark depends on whether such combination may create a new concept beyond the original conspicuous geographical name or form a new distinctive character.

(2) As seen earlier, the Majority Opinion, on the premise of such determination criteria, examined whether a trademark combining a conspicuous geographical name with the word “university” can be registered as a trademark, and it is not whether such combination may create a new concept beyond the original conspicuous geographical name or form a new distinctive character. Rather, the Majority concluded that the application of Article 6(1)4 of the former Trademark Act is excluded from the application of Article 6(1) of the former Trademark Act, on the basis of the following: (a) whether the pending service mark can be deemed to be known to consumers as the name of the Plaintiff’s university in relation to the university education business, etc., which is the designated service business.

However, as a standard for determining to exclude the application of Article 6(1)4 of the former Trademark Act, the term “distinctiveness” refers to whether a trademark combines a conspicuous geographical name with another mark that has no distinctive character and forms a new distinctive character by itself. It does not mean whether, as a result of using a trademark, consumers have become aware of the source of goods of a specific person. The distinctiveness based on the composition of a trademark, which serves as the basis for determining whether it falls under Article 6(1)4 of the former Trademark Act, is clearly distinguishable from “inherent distinctiveness” of the trademark itself, and is clearly distinguishable from “inherent distinctiveness” of the trademark under Article 6(2) of the same Act. The Majority Opinion confusions this point.

(3) Article 6(2) of the former Trademark Act provides that “A trademark falling under any of the subparagraphs 4 of paragraph (1) may be registered only on goods using the trademark, in cases where, prior to the application for trademark registration, consumers can distinguish the source of goods of a specific person as a result of the use of the trademark from that of the trademark, only the goods using the trademark may obtain trademark registration.” As alleged in the Majority Opinion, if the pending service mark became recognizable to consumers as the name of the Plaintiff’s university in relation to the designated service business to a considerable extent, and thus, the registered service mark has a distinctive character, as so known, it means that the trademark has a distinctive character as prescribed by Article 6(2) of the former Trademark Act. Accordingly, it is natural that trademark registration can be obtained only on goods using the trademark.

As can be seen, the Majority Opinion argues that Article 6(1)4 of the former Trademark Act is excluded from the application of the same provision on the premise that the above requirement is satisfied. As long as Article 6(2)4 of the former Trademark Act does not stipulate the requirement for exclusion from the application of Article 6(1)4, but provides a separate registration requirement, it is difficult to explain the requirement. The Majority Opinion, as the criteria for determination, makes it impossible to distinguish between the applicable area and the legal effect by mixing the criteria for determining “distinctiveness by use” in the area where the composition of a trademark itself is at issue, where the “inherent distinctiveness by use” is at issue. Such interpretation may obtain trademark registration pursuant to Article 6(2) of the former Trademark Act if the distinctiveness by use is recognized, while this would result in obtaining trademark registration pursuant to Article 6(1)4 of the former Trademark Act. This is also inconsistent with the language and text of Article 6(1) and (2) of the former Trademark Act, and the Majority Opinion’s interpretation and application of “distinctiveness by use” can not be accepted.

(4) Article 6(1)4 of the former Trademark Act pertains to “inherent distinctiveness” and the existence or absence of such distinctiveness should be objectively determined by the composition of the trademark itself. The situation of the use of the trademark or the degree of consumer’s perception therefrom conforms to the statutory system to consider whether the trademark is “distinctiveness by use” under Article 6(2) of the same Act. In other words, Article 6 of the former Trademark Act, where “inherent distinctiveness” is recognized by the composition itself of the trademark, is excluded from the application of Article 6(1)4, and trademark registration is granted, and even if it falls under Article 6(1)4 of the same Act because “inherent distinctiveness” is not recognized, if the trademark becomes recognized as a trademark indicating the source of goods of a specific person among consumers through the process of use, trademark registration is exceptionally granted pursuant to Article 6(2) of the same Act.

Therefore, unlike cases where trademark registration is exceptionally granted pursuant to Article 6(2) of the former Trademark Act, if a combination of a conspicuous geographical name and the word “university” alone constitutes “inherent distinctiveness” regardless of the original conspicuous geographical name, it is unnecessary to examine whether the trademark constitutes “where consumers can distinguish the source of goods of a specific person as a result of using the trademark before filing an application for trademark registration,” and trademark registration may be obtained without being subject to restrictions on the scope of designated goods.

(5) Furthermore, we examine whether a trademark combining a conspicuous geographical name with “university” without distinctiveness constitutes a new distinctive character irrespective of the original conspicuous geographical name.

For example, insofar as the name “ Jeju University” is in existence, there is no other university using the same name due to the limitation of the relevant statute, and there is no further existence in the future. As a result, the combination of a conspicuous geographical name “ Jeju” and a mark with no distinctive character as “university” serves as a name representing a specific university, and general consumers recognize such name as a name distinguishing the specific university from other universities.

In addition, the combination of a geographical name and the word “university” has often existed in Korea and abroad. As such, with respect to a trademark combining a geographical name and the word “university,” general consumers are more likely to recognize the constituent parts as the name of a specific university or to be perceived as the source of goods of a specific person rather than recognizing it as a geographical sense.

In other words, even if general consumers were not aware of a university consisting of a geographical name and the word “university” in a specific and individual manner, the composition of the trademark itself leads to a strong tendency to recognize that a university is not simply indicating a university in a certain region, but rather indicating a specific university.

Ultimately, a trademark combining a geographical name and the word “university” can be deemed to have an “inherent distinctiveness” based on the composition of the trademark itself.

B. Article 6(1)4 of the former Trademark Act provides that a trademark consisting solely of a conspicuous geographical name, the abbreviation thereof, or a map may not be registered. The purport of such provision is to refrain from granting a right to exclusive use only to a specific individual because the distinctiveness of a trademark cannot be recognized due to its apparentness and well-knownness.

Therefore, even if a mark containing a conspicuous geographical name is a mark, if it is deemed to be a mark that contains a conspicuous geographical name, and if it is highly favorable to a specific individual, and there is little need to guarantee the free use of competitors, it does not go against the purport of the above provision even if it is interpreted that such mark does not fall under Article 6 (1) 4 of the former Trademark Act.

In order to establish a university, there are strict restrictions on the establishment, operation, etc. of a university with the same name, such as meeting certain standards for establishment, such as facilities and equipment, and obtaining authorization from the Minister of Education, and due to such restrictions, the university with the same name may not exist or be newly established.

Therefore, in cases where a trademark combining a geographical name and the word “university” constitutes the name of the university, there is little need to use the name of the university by any person other than the operating entity of the university, and no other circumstance is found to deem that granting exclusive use of the name to the operating entity of the university would be unreasonable in the public interest or harmful to the public interest. Accordingly, even if granting trademark registration of such trademark, it cannot be deemed that it contravenes the purport of the provision of Article 6(1)4 of the former Trademark Act, and rather accords with the foregoing.

C. (1) The Majority Opinion determines whether a trademark combining a geographical name and the word “university” is registered or not on the basis of whether a specific university whose name the trademark is its school name is widely known to general consumers.

However, according to such determination criteria, trademark registration may vary depending on the degree of recognition of a specific university and may result in unfair outcomes. If trademark registration is refused on the ground that the trademark registration is not known to domestic consumers even if it is widely known in a foreign country, a problem may arise against equity between domestic and foreign universities.

Furthermore, there are significant discrimination between domestic universities in relation to trademark registration between universities that include a geographical name and other universities that do not do so. In other words, trademark registration is immediately allowed for a school name that does not include a geographical name, unless there are other grounds for rejection. On the other hand, trademark registration is not allowed for a school name that includes a geographical name until such school name is actually used in relation to the designated goods and is considerably known to general consumers. Furthermore, trademark registration is allowed for a school name that does not include a geographical name, while trademark registration is allowed for a school name that is not included in the geographical name, trademark registration is allowed for a school name that is not included in the geographical name, and trademark registration is limited to the goods that have acquired distinctiveness as a result of its actual use.

The aforementioned discriminatory treatment that exists between a university that includes a geographical name and a university that does not do so may violate the principle of equality beyond the mere unreasonable point of view. The principle of equality under Article 11(1) of the Constitution prohibits arbitrary treatment of the same in essence as that of a person, and the application of the Act should not be subject to any discrimination without reasonable grounds (see, e.g., Supreme Court en banc Decision 2005Du14417, Oct. 29, 2007; 2013Du14863, May 24, 2016).

It is difficult to view that there exists an essential difference between the name of a university and that of a geographical name, which is the basic function of the trademark, in terms of the function of indicating the source or the self-identification of other products. However, according to the Majority Opinion’s logic, there is substantial discrimination between the name of a university including the geographical name and the scope of products permitted to be registered, as seen earlier, regarding whether trademark registration is granted and the scope of products permitted to be registered. It is difficult to view that there is a reasonable ground or reason to justify such discrimination. This is an interpretation contrary to the principle of equality.

(2) Also, denying registration of a trademark that combines a geographical name and the word “university” on the ground of Article 6(1)4 of the former Trademark Act may violate Article 15 of the Constitution providing for freedom of occupation and Article 23 of the Constitution providing for the guarantee of property rights.

The act of indicating and selling a trademark desired by the manufacturer or seller on the goods after being registered is one of the ways to perform the occupation, and the trademark right as an exclusive right to use the registered trademark belongs to the property right protected by the Constitution.

The legislative purpose of Article 6(1)4 of the former Trademark Act is to prevent a trademark consisting solely of a conspicuous geographical name from being recognized the distinctiveness of the trademark due to its apparent nature and well-knownness, and thus, not granting exclusive license to only a specific individual. However, as seen earlier, in cases where a trademark combining a geographical name and the word “university” constitutes the name of a university, any other person than the operating entity of the university does not have to use the name of the university, and there is little need for any other person to exclusively use the name of the university, and no other circumstance is found to deem that granting exclusive license to the operating entity of the university is unreasonable in the public interest. Therefore, even if granting registration of the name of the university, it is difficult to deem that such granting permission contravenes the legislative purpose of Article 6(1)4 of the former Trademark

Therefore, rejection of registration of a trademark that combines a geographical name and the word “university” on the ground of Article 6(1)4 of the former Trademark Act is difficult to contribute to the legislative purpose of Article 6(1)4 of the former Trademark Act to prevent a specific person’s exclusive use of a trademark consisting solely of a conspicuous geographical name, whereas the applicant’s freedom of occupation and property rights may be deemed as infringing without reasonable grounds.

(3) When the concept of a certain legal provision is different and it is possible to interpret within the framework of its language, an interpretation consistent with the Constitution for the formation of a uniform legal order with the Constitution as the highest law should be selected. The interpretation that may result in unconstitutional consequences should be excluded, and the constitutional and positive aspect should be examined (see Supreme Court Decisions 2004Do7488, Jan. 27, 2005; 2008Do6693, Apr. 14, 201, etc.).

In principle, a trademark combining a geographical name and the word “university” is deemed to fall under Article 6(1)4 of the former Trademark Act as a matter of principle, however, if such trademark is interpreted as not falling under Article 6(1)4 of the former Trademark Act by recognizing exceptions only when a specific university using such trademark as its school name is widely known to general consumers, it may violate the principle of equality under the Constitution or infringe on the freedom of occupation and property rights as seen earlier.

On the other hand, if a trademark combining a geographical name and the word “university” is interpreted as not falling under Article 6(1)4 of the former Trademark Act by deeming that a new concept or a new distinctive character has been formed in itself, it can avoid unconstitutional outcome derived from the logic of the Majority Opinion, and thus, accords with the principle of constitutional interpretation. The purpose of statutory interpretation is to realize the legislative intent within the limit of constitutional interpretation. The Majority Opinion appears to have presented this point.

(4) Today, universities are running a variety of profit-making businesses through the activation of industry-academic cooperation, rather than performing the traditional role as the Center of Science. The need to obtain trademark registration in relation to areas other than the designated duties of such universities is greater. For this reason, the number of trademark applications for the name of a university is also increasing.

Nevertheless, by interpreting Article 6(1)4 of the former Trademark Act by applying the provisions of Article 6(1)4 in a mechanical and mechanical manner, it refuses to provide equal legal protection to universities using a conspicuous geographical name and other universities that do not so without reasonable grounds as seen earlier, and neglecting the situation that infringes on the freedom of occupation and property rights of trademark applicants is inconsistent with the demands of the times, and is not appropriate.

D. (1) In that a country that does not permit trademark registration of a conspicuous geographical name is almost difficult to find it except for Korea and China, Article 6(1)4 of the former Trademark Act belongs to a very peculiar legislation in light of comparative law.

In almost all countries around the world, trademark registration is not denied solely on the ground that the mark contains a conspicuous geographical name. In fact, the mark of the pending service mark of this case was registered as a trademark or service mark in many countries, such as Kuwait, Vietnam, Japan, Brazil, Brazil, Europe, and the United Kingdom. Furthermore, the registration of the pending service mark of this case was accepted in China, which does not allow trademark registration with a conspicuous geographical name as in Korea.

Although the eligibility for registration of a trademark or service mark may vary depending on the legal system of each country, it is necessary to actively interpret such eligibility, if there is a balance with other countries through statutory interpretation. Even if all other countries allow registration, it is not desirable to use Article 6(1)4 of the former Trademark Act in a mechanical and formal manner in the direction that no registration is permitted only in Korea.

(2) As to Article 6(1)4 of the former Trademark Act, which provides that a trademark consisting solely of a conspicuous geographical name as a non-distinctive trademark, as one of the non-distinctive trademarks, opinions that it is desirable to delete the trademark from the legislative perspective have been raised.

However, it is difficult to deny that there have been many cases of using a geographical name as a composition of a trademark for many times, and that there are still many areas of free use of a conspicuous geographical name.

Considering these circumstances, rather than entirely abolish Article 6(1)4 of the former Trademark Act, it is reasonable to interpret that the above provision does not fall under the above provision with respect to a mark that has a very high exclusive applicability, such as the name of university, so that it can be operated in a direction consistent with the legislative purpose, and to maintain the above provision itself.

(3) In addition to the name of the university, there is a possibility that the logic of the name of newspaper company, broadcasting company, bank, etc. may be indefinitely expanded.

However, in order to recognize that a trademark using a conspicuous geographical name does not fall under Article 6(1)4 of the former Trademark Act, it is necessary to individually examine whether the trademark has produced a new concept or has formed a new distinctive character, comprehensively taking into account the following: (a) whether the trademark actually allows a specific person to exclusively use the trademark due to statutory restrictions, etc.; and (b) whether each constituent part is indivisible and has strong tendency to be recognized as indicating the source of goods of a specific person.

In such a determination, the cases that do not fall under Article 6 (1) 4 of the former Trademark Act based on the logic such as the name of the university are considerably expanded, and there is no concern about the confusion in practice.

E. Meanwhile, in light of the purport of Article 6(1)4 of the former Trademark Act, only the person operating the university may be granted the exclusive right to use the name of the university. As such, it is reasonable to deem that a trademark combining a geographical name and the word “university” should actually exist, and trademark registration is granted only when an application for trademark registration is filed by the person operating the university.

Ultimately, when a trademark combining a geographical name and the word “university” is actually used as the name of a specific university, and the person operating the relevant university files an application for trademark registration of the said name, the combination of a geographical name and the word “university” can be deemed to create a new concept or form a new distinctive character. Therefore, it should be deemed that such combination does not fall under Article 6(1)4 of the former Trademark Act.

F. We examine these legal principles and records.

The pending service mark of this case is also the name of the university of this case operated by the Plaintiff. The university of this case is a comprehensive university located in Washington D.C. in the United States of America, and continues to use “AMFN UNIVIVIVY” under its school name for over 120 years since its establishment in 1893.

Therefore, the pending service mark applied by the Plaintiff operating the pertinent university is combined with the conspicuous geographical name, “AMFN” and the word “UNFCCCIVIVIVSY”, and thus, a new concept or a new distinctive character is created as a whole. Thus, the pending service mark does not fall under Article 6(1)4 and 7 of the former Trademark Act.

Ultimately, although the reasoning of the court below is inappropriate, the conclusion that the registration of the applied service mark of this case should be allowed is just, and contrary to what is alleged in the grounds of appeal, the court below did not err by misapprehending the legal principles as to Article 6 (1) 4 and 7 of the former Trademark Act, which affected the conclusion of the judgment

G. On the same ground as above, I agree with the majority opinion that the appeal should be dismissed, but I agree with the separate opinion because there are different specific reasons.

5. Concurrence by Justice Jo Hee-de

A. In a case where a university uses the name of the university as a trademark in relation to university education, teaching, etc., which is the designated business, general consumers recognize that the name of the university is representing a specific university. In such a case, it is difficult to deem that granting trademark registration with respect to the name of the university would be unreasonable or harmful to public interest, even if granting permission for trademark registration. This does not change on the ground that the name of the university includes a conspicuous geographical name. Therefore, if a trademark combining a conspicuous geographical name and the word “university” was applied for registration in relation to university education, teaching, etc., which is the designated business of the university, such trademark itself, can be deemed as having an inherent distinctive character sufficient to obtain trademark registration, and thus, such trademark does not fall under Article 6(1)4 of the former Trademark Act.

On the other hand, universities are engaged in various profit-making business without serving the traditional role as the Seoul Arts Center. A university’s operator need to obtain trademark registration in relation to areas other than its designated business. In relation to such fields, there is no ground to deem that the name of a university itself is recognized as an indication of the source of goods of a specific person among general consumers. Since a university is in a position equal to that of a general trademark applicant in this field, it cannot be granted preferential status in the qualification to obtain trademark registration. Accordingly, if a trademark combining a conspicuous geographical name and the word “university” was applied for registration in relation to a field unrelated to the designated business of a university, it is difficult to recognize distinctiveness in itself as having a unique geographical meaning, and trademark registration should be granted in exceptional cases where the trademark is recognized as an indication of the source of goods of a specific person to general consumers.

As can be seen, the requirements or grounds for recognition of distinctiveness vary depending on the type of designated goods or the field of use. As such, it is difficult to deem that a trademark combining a conspicuous geographical name and the word “university” has an inherent distinctiveness as its composition, without having taken into account the type of designated goods or the field of use.

B. Article 7(1)3 of the former Trademark Act (Article 34(1)3 of the current Trademark Act also provides that a third party may not obtain trademark registration with respect to “a trademark identical or similar to famous one as a mark indicating a non-profit business of the State, a public organization, or its agencies or public corporations, or indicating nonprofit public services, which is a mark indicating non-profit-making business or a non-profit public services,” and provides that the same shall not apply where the pertinent State, etc. files an application for trademark registration. In addition, depending on who is the subject of the application for trademark registration, the provisions vary depending on who is the subject of the application for trademark registration. Article 7(1)3, 1-3,

Examining the above provisions, among the public interests, the trademark law does not allow trademark registration other than a certain registration holder. Therefore, it is not acceptable to accept as it does not comply with the overall trademark law system, which prevents a third party from obtaining trademark registration regarding the name of a university without express provision, and allowing a person operating a university to obtain trademark registration regardless of the type of designated goods, etc.

C. Since the pending service mark combining a conspicuous geographical name and the word “university” was applied for registration as a university education business, teaching business, etc., the lower court’s conclusion that the pending service mark can be registered as a service mark in relation to its designated service business is reasonable.

6. Concurrence with the Majority by Justice Kim So-young, Justice Park Sang-ok, Justice Kim Jae-hyung, and Justice Park Jung-hwa

A. In light of the legislative intent of Article 6(1)4 of the former Trademark Act, the separate opinion by Justice Ko Young-han, Justice Kim Chang-suk, Justice Kim Shin, and Justice Cho Jae-chul (hereinafter “Concurring Opinion 1”) deems that a trademark combining a geographical name and the word “university” is not subject to Article 6(1)4 of the former Trademark Act and its registration is possible only when the trademark combining a geographical name and the word “university” is actually used as the name of a specific university and the person operating such university applies for trademark registration of the name.

However, such interpretation is an interpretation that, beyond the ordinary meaning of the language and text used in the remaining laws that excessively emphasizes only the legislative purport of Article 6(1)4 of the former Trademark Act, it does not uniformly limit the scope of application of the above provision to the name of a university combined with a conspicuous geographical name and thus, does not fall under Article 6(1)4 of the former Trademark Act, and it is difficult to agree with the following grounds.

(1) Article 6(1)4 of the former Trademark Act provides that trademark registration shall not be granted for a trademark consisting solely of a conspicuous geographical name. In addition, even in cases where a trademark consisting of a conspicuous geographical name is not applied only to a trademark consisting solely of a conspicuous geographical name, and where a conspicuous geographical name is combined with a non-distinctive mark, the above provision has been consistently interpreted as applicable if the trademark does not create a new concept or form a new distinctive character, regardless of its original conspicuous geographical name, occupational indication or technical meaning. In other words, whether a trademark consisting of a trademark consisting of a non-distinctive name and a conspicuous geographical name is determined by the combination of each constituent part, or by forming a new distinctive character, and it is difficult to think that such new concept or new distinctive character is not applied only to a trademark consisting of a trademark consisting of a conspicuous geographical name and a trademark consisting of a new geographical name and a word that does not constitute a specific trademark consisting of a specific geographical name and a specific trademark consisting of a specific geographical name and a new distinctive character as to its origin.

The Concurring Opinion 1 argues that, where a trademark combines a conspicuous geographical name with the word “university”, the composition itself alone has a new concept or distinctive character, regardless of ordinary consumers’ perception, and thus, the trademark itself has a new concept or distinctive character. However, it is difficult to understand that a trademark itself has a new concept or a new distinctive character without premised on ordinary consumers’ perception.

If the Concurring Opinion 1 states that such a trademark can be seen as an essential distinctive character as a trademark that combines a conspicuous geographical name and a trademark that combines a common geographical name or a technical mark, it shall be deemed that the trademark has acquired essential distinctiveness as well as the name of the university in almost all cases. From the perspective of this, the term “native driving school” or “Yansan Museum” is not perceived as the original meaning of a conspicuous geographical name or a technical mark as a unique type of business, and as a combination thereof form a single distinctive character, trademark registration should be possible by itself regardless of a specific consumer’s perception. However, there is no fundamental doubt as to whether such conclusion complies with the purport of Article 6(1)4 of the former Trademark Act, which does not permit trademark registration of a conspicuous geographical name.

(2) Considering that the legislative purpose of Article 6(1)4 of the former Trademark Act is not to grant exclusive right to use a conspicuous geographical name only to a specific individual, the First Concurrence does not go against the legislative purpose of Article 6(1)4 of the former Trademark Act, even if such exclusive right does not occur and registration of the name of a university with high exclusive accessibility is granted, and rather, it is not contrary to the legislative purpose of Article 6(1)4 of the same Act.

However, in interpreting Article 6(1)4 of the former Trademark Act, the exclusive response cannot be the only factor to be considered in the interpretation of Article 6(1)4 of the same Act. Determination based on the exclusive response can be limited to cases where a relatively large business type indication such as newspaper companies, broadcasting companies, and non-profit organizations combined with a conspicuous geographical name is combined with a relatively large business type indication such as newspaper companies, broadcasting companies, and non-profit organizations, which may cause a large confusion in practice.

Furthermore, in the case of a university, the name of the university is determined in accordance with the statutes on the establishment and operation of the university, and each person operating each university operates the university under such specified name. As such, there are circumstances in which the existence or establishment of the university having the same name is practically difficult. However, such regulations are governed by the statutes on the establishment, operation, etc. of the university, and do not accord with the granting of trademark registration under the Trademark Act. The entity operating the university does not necessarily have to obtain trademark registration in relation to its designated business, nor does it interfere with the operation of the university on the ground that the entity operating the university did not obtain trademark registration.

Therefore, in a case where a person operating a university intends to obtain trademark registration according to its necessity, it should be deemed that the person having general trademark rights is in a position equal to that of the person having general trademark rights. If a trademark that is not recognizable as a trademark combining a conspicuous geographical name in the field of trademark rights is granted registration solely on the ground that it is the name

(3) As pointed out in the Concurring Opinion 1, it is difficult to deny that the boundary with Article 6(2) of the former Trademark Act may be somewhat ambiguous, and that there is a possibility of somewhat inappropriate conclusion, depending on the case where a specific university, which combines a geographical name and the word “university”, determines whether a trademark is registered on the basis of what extent it is known to general consumers. However, this is derived from Article 6(1)4 of the former Trademark Act that provides that trademark registration for a conspicuous geographical name is not possible, and insofar as it is not resolved through legislation, it is inevitable to a certain extent by interpretation. Rather than interpreting each case involving a combination of separate business types or technical marks to avoid such unreasonable outcomes, the Majority Opinion’s intent to seek concrete feasibility by determining the degree of perception of general consumers required for the formation of a new concept or a new distinctive character is more appropriate than the legislative purport of the above provision.

(4) As to a trademark combining a geographical name and the word “university,” the First Concurrence deems that the trademark does not fall under Article 6(1)4 of the former Trademark Act and is permitted to be registered only when the university using the trademark actually exists and an application for trademark registration is filed by the person operating the university.

However, the existence of distinctiveness under each subparagraph of Article 6(1) of the former Trademark Act is general to determine objectively taking into account the concept possessing a mark and the relationship with the designated goods, and it does not vary depending on the applicant’s identity. According to the Concurring Opinion, it is unclear whether the composition itself formed a new concept or a new distinctive character, but the registration is not permissible because the applicant does not exist and the applicant does not operate the university, or whether the new concept or a new distinctive character is not formed for the same reason. If the former is clearly contrary to Article 6(1)4 of the former Trademark Act, which does not limit the applicant, (i.e., Article 7(1)3 of the former Trademark Act, which provides that only a specific applicant may apply for a specific mark, there exists a provision limiting the applicant as to the specific mark). If the latter is, the distinctiveness of the trademark differs depending on the applicant’s identity. Therefore, the logic is inconsistent.

B. The pending service mark of this case is composed of only English as “,” and its composition itself is generally recognizable as “university in the United States” or “university located in the United States” as a combination of the geographical meaning of “U.S.” and technical marks. If Korean consumers do not recognize any specific university such as the university of this case, there is no ground to readily conclude that Korean consumers in the Republic of Korea representing the pending service mark use a name of a specific university or a specific person’s source indication as a trademark. In particular, the pending service mark of this case uses a name of a country that is not a specific state or city, and thus covers a geographical wide range of geographical area. Accordingly, consumers are highly likely to recognize it as a geographical meaning such as “university in the United States,” and if such recognition is given, the need to guarantee the free use of a third party is high even in terms of monopoly.

Therefore, in order to be recognized that the pending service mark of this case is not the original geographical meaning, but the meaning of a specific university such as the university of this case, the Majority Opinion’s view as forming a new concept or a new distinctive character as a specific university based on the recognition of general consumers in Korea is more rational approach.

As above, I express my concurrence with the Majority Opinion.

7. Concurrence with the Concurrence by Justice Ko Young-han, Justice Kim Chang-suk, Justice Kim Shin, and Justice Cho Jae-chul

We examine the two arguments that are not mentioned in the above separate opinion among the arguments that the supplementary opinion to the Majority Opinion is in favor of.

A. Article 7(1)3 of the former Trademark Act provides that a third party may not obtain trademark registration regarding “a trademark identical or similar to well-known one as a mark indicating a non-profit-making business of the State, a public organization or its agencies or a public interest corporation, or indicating a non-profit public service,” and that the same shall not apply where the pertinent State, etc. files an application for trademark registration. In such a case, depending on who the subject of the application for trademark registration is, the registration is different and the same is also prescribed in Article 7(1)3, 1-4, and 5 of the same Act.

As can be seen, Article 7(1)3 of the former Trademark Act, etc. does not allow a third party to file for registration as trademark in cases where the trademark itself has an “inherent distinctiveness” by expressing a specific organization, etc. on the other hand, and such specific organization, etc. is permitted to file for registration as trademark. As a result, in cases where a trademark combining a conspicuous geographical name with the word “university” and expressing a specific university, it is consistent with the above separate opinion that only the person operating the university can recognize “inherent distinctiveness” of the trademark itself and allow trademark registration as trademark registration. This can serve as the basis for supporting the validity of the above separate opinion. The fundamental spirit governing the trademark law is not different from Articles 6(1) and 7(1) of the former Trademark Act.

B. Whether the mark “AMFN UNIVIVIVSY” is used as a trademark representing a specific university or “university in the United States,” or whether it is used outside the trademark, can be determined easily in light of the circumstances and patterns used.

If a trademark is used as a trademark representing a specific university, the trademark has an “inherent distinctiveness” as seen earlier. In such a case, a third party, other than the Plaintiff, who is the operating entity of the pertinent university, may not be deemed necessary to freely use the trademark as a trademark. Rather, if a third party, other than the Plaintiff, uses the trademark “AIMICN UNIVIVIVIVY” as a trademark, there may arise problems such as confusion among consumers as to the source of goods, etc. provided as the said trademark.

Unlike this, if a third party uses the mark outside of the U.S., it is not used as a trademark, and it is natural that it does not fall under the scope of the right to the mark of this case. Therefore, there is no room to deem that there is any problem in such use.

As above, I would like to point out that the concurring opinion with the Majority Opinion is unreasonable.

Justices Kim Young-soo (Presiding Justice)