[1] Criteria for determining whether a trademark constitutes "a trademark likely to mislead a consumer" under Article 7 (1) 11 of the Trademark Act

[2] The meaning of the ordinary name of the goods, and whether the registration may be refused on the ground that the trademark is "a trademark which is likely to mislead a consumer" if the applied trademark consists solely of a mark indicating an ordinary name in a common way (negative)

[3] The case holding that the marks "Cffe Latte" and "affe" do not constitute "a trademark which is not recognizable as a trademark with a common name, which does not distinguish between "a trademark" and "a trademark which is likely to mislead consumers as a trademark which has no distinctive character in the common name to cover the coffee in the Italian Satte."

[1] Article 7 (1) 11 of the Trademark Act / [2] Articles 6 (1) 1 and 7 (1) 11 of the Trademark Act / [3] Articles 6 (1) 1 and 7 (1) 11 of the Trademark Act

[1] Supreme Court Decision 2001Hu584 decided August 21, 2001 (Gong2001Ha, 2120), Supreme Court Decision 99Hu2655 decided September 28, 2001 (Gong2001Ha, 2388), Supreme Court Decision 2001Hu184, 201Hu1891 decided April 8, 2003 (Gong203, 1108), Supreme Court Decision 85Hu130 decided December 22, 198 (Gong198, 2069) (Gong203, 2030, 1108)/ [2] Supreme Court Decision 97Hu9799 decided April 29, 207 (Gong2003, 197, 209)

Namyang Oil Co., Ltd.

The Commissioner of the Korean Intellectual Property Office

Daily Oil Business Co., Ltd and one other (Patent Attorney Song Jae-chul et al., Counsel for the defendant-appellant)

Patent Court Decision 2001Heo4746 delivered on January 24, 2002

The appeal is dismissed. The costs of appeal are assessed against the Intervenor, while the remainder are assessed against the Defendant, respectively.

1. A. In order to constitute "a trademark which is likely to mislead or mislead a consumer" as stipulated in Article 7 (1) 11 of the Trademark Act, the applied trademark is not necessarily required to be well-known, but at least it is known to consumers or traders in general transactions in the Republic of Korea to the extent that it can be perceived as a trademark or goods of a specific person if it is said to be a trademark or goods. In such a case, if a trademark identical or similar to a trademark used is used for the designated goods identical or similar to the trademark used, or if it is used for the goods identical or similar to the trademark used, or if it is deemed that a trademark is used by the right holder of the trademark used, as in cases where the trademark is used on goods identical or similar to the goods of the trademark used, the specific use condition of the trademark used, or the economic relation between the goods in which the trademark is used, in light of other general trade circumstances, etc., it is likely that the general consumer may mislead or confuse the source (see, e.g., Supreme Court Decision 200Hu1484, 2014.

In addition, the ordinary name of a good is a general name of a good, which is not recognized as a good related to a specific person’s business, such as a general name, abbreviation, and inner name, which is recognized as being actually used by the business entity and ordinary consumers as referring to the general name, abbreviated name, and inner name, which is used as referring to the goods in question between the business entity and ordinary consumers (see, e.g., Supreme Court Decisions 97Hu594, Oct. 10, 1997; 2001Hu2283, Nov. 26, 2002). Since such common name of a good is used as a name of a specific kind of product, it is in essence impossible to allow a specific person to use it freely as it has no distinctiveness of another product.

Therefore, in a case where a trademark applied for registration consists solely of a mark indicating an ordinary name in a common way, barring special circumstances in relation to the trademark used as a common name, there is no concern for general consumers to mislead or confuse the source, barring special circumstances, and thus, the registration cannot be refused pursuant to Article 7(1)11 of the Trademark Act.

B. From April 197, the lower court: (a) sold 90 billion won or more from the time of the instant trial decision using a mark "Catte" and "Catte" to a certain extent; and (b) made an advertisement using the mark "17.4 billion won or more among general consumers; (c) it is true that the above mark was known to a certain extent among consumers; (d) it appears that there is no possibility that it would be no 17.4 billion won or more than 17.4 billion won in advertising of this case using the trademark "Catte" and the above mark "10.00,000,000,000,000,000,0000,0000,0000,0000,000,0000,000,000,0000,000,000,000,000,000,000,00.

2. A trial decision by the Intellectual Property Tribunal constitutes an administrative disposition, and a lawsuit seeking the revocation of a trial decision, which is a lawsuit against it, constitutes an appeal litigation and the subject matter of the lawsuit is substantive and procedural illegality of the trial decision. Thus, a party may assert and prove the grounds for illegality of a disposition not determined by a trial decision at the stage of litigation for the revocation of a trial decision, and the Patent Court may deliberate and determine the grounds for illegality at the stage of litigation for the revocation of a trial decision without any special circumstance (see Supreme Court Decision 2000Hu1290, Jun. 25,

In the same purport, it is proper that the court below held that the mark of "Kaflag" filed by the plaintiff falls under Article 7 (1) 11 of the Trademark Act, which is an unlawful cause of the trial decision not determined by the trial decision, and the mark of "Kaflae" and "Cffe Latte" used daily oil as a common name of the goods, which is only a daily oil business, cannot be deemed to have been perceived as a trademark of the oil business or goods for the daily oil business, and there is no error as argued in the Grounds for Appeal.

3. Therefore, the appeal shall be dismissed, and the costs of appeal shall be borne by the defendant supplementary intervenor, and the remainder shall be borne by the defendant supplementary intervenor, respectively.

Justices Zwon (Presiding Justice)