[1] The meaning of "a conspicuous geographical name" under Article 6 (1) 4 of the Trademark Act

[2] In a case where a conspicuous geographical name, etc. is combined with a non-distinctive mark or a non-distinctive mark, whether the application of Article 6(1)4 of the Trademark Act is excluded (negative in principle), and in a case where other characters combined with a conspicuous geographical name are not added to a conspicuous geographical name, but has an independent distinctive character, whether the above provision may be applied (negative)

[3] The case holding that the applied service mark " cannot be deemed to constitute "a mark consisting solely of a conspicuous geographical name" under Article 6 (1) 4 of the Trademark Act

[4] Criteria for determining whether a trademark has a "special distinction" under Article 6 (1) 7 of the Trademark Act

[5] The case holding that the applied service mark " cannot be deemed to constitute "other distinctive marks" under Article 6 (1) 7 of the Trademark Act

[1] The purport of Article 6(1)4 of the Trademark Act stipulating a trademark consisting solely of a conspicuous geographical name as a passive requirement for trademark registration is to allow persons to use the trademark and to not grant a specific person the exclusive right to use the trademark because the trademark cannot be recognized as a special distinction due to its apparentness and well-knownness. Here, “real geographical name” refers to a mark in which the term itself can convey a prompt geographical sense to ordinary consumers in relation to a specific product.

[2] Article 6 (1) 4 of the Trademark Act does not apply only to a mark consisting solely of a conspicuous geographical name, the abbreviation thereof, or a map, and even if a conspicuous geographical name, etc. is combined with an in-service mark, an indication of a type of business, or a technical mark without distinctiveness, the foregoing provision does not apply to cases where the word constituting a trademark by combination does not create a new concept regardless of the original conspicuous geographical name, an in-service mark, an indication of a type of business, or a technical meaning, or where a trademark is completely new, or a trademark is combined with an in-service mark, etc., and where the trademark cannot be deemed as being granted a new distinctive character due to the mere fact that the trademark is a combination of a geographical name and a in-service mark, etc., and thus, the application of the above provision cannot be excluded. On the other hand, the foregoing provision shall not apply to cases where a trademark has an independent distinctive character, such as a new concept or a new in-service trademark, regardless of a conspicuous geographical name.

[3] The case holding that since the Gyeonggi-do Urban Development Project is indivisiblely combined and its entire part is recognized as a "public enterprise established for the purpose of performing an urban development project of Gyeonggi-do," the entire service mark "" cannot be deemed as a "mark consisting solely of a conspicuous geographical name" under Article 6 (1) 4 of the Trademark Act on the ground that the part of "urban Construction Project" combined with a conspicuous geographical name is not simply added, but also a new concept is created.

[4] Article 6(1)7 of the Trademark Act provides that "a trademark other than those under subparagraphs 1 through 6, for which a trademark cannot be registered." This provision provides that even if a trademark does not fall under any of subparagraphs 1 through 6, it shall not be registered for a trademark having no "special distinction". Thus, whether a trademark has "special distinction" is determined depending on which general consumers can recognize the source of the goods in relation to the goods in question.

[5] The case holding that a local government-invested public corporation shall be established by the local government under the Local Public Enterprises Act, and where the public corporation is sold, the purchaser may apply for the registration of incorporation of the corporation as a stock company without undergoing liquidation procedures under the Commercial Act, but in this case, since the name of the corporation cannot be used in the trade name of the corporation, there is no need for the public interest to use the mark " Gyeonggi-do Urban Corporation" in the ordinary consumers or the trading industry to freely use it, the applied service mark " " cannot be deemed as a "other non-distinctive mark" under Article 6 (1) 7

[1] Article 6 (1) 4 of the Trademark Act / [2] Article 6 (1) 4 of the Trademark Act / [3] Article 6 (1) 4 of the Trademark Act / [4] Article 6 (1) 7 of the Trademark Act / [5] Article 6 (1) 7 of the Trademark Act, Articles 2, 49, 53, and 75-5 of the Local Public Enterprises Act

[1] Supreme Court Decision 96Hu1682 delivered on August 22, 1997 (Gong1997Ha, 2887) / [2] Supreme Court Decision 98Hu1518 delivered on November 26, 199 (Gong2000Sang, 62) Supreme Court Decision 2000Hu181 delivered on April 26, 2002 (Gong2002Sang, 1288) / [4] Supreme Court Decision 91Hu455 delivered on December 24, 1991 (Gong192, 687) Supreme Court Decision 2004Hu2871 delivered on June 23, 2005

Gyeonggi-do City Corporation (Law Firm Chungcheong, et al., Counsel for the defendant-appellant)

The Commissioner of the Korean Intellectual Property Office

June 12, 2009

1. The decision made by the Intellectual Property Tribunal on February 24, 2009 on the case No. 2008 Won10074 shall be revoked.

2. The costs of the lawsuit are assessed against the defendant.

The same shall apply to the order.

1. Basic facts

[Reasons for Recognition] Facts without dispute, Gap evidence 1 and 2, Gap evidence 3-1, 2, 3, Eul evidence 1-1, 2, and 3

A. The pending service mark

(1) Application number/filing date: No. 41-2007-30063// November 15, 2007

(2) Composition:

(3) Designated service business: as shown in the attached service mark of this case.

B. The procedural background

(1) As to the Plaintiff’s application for the registration of the instant pending service mark, the Korean Intellectual Property Office rendered a decision of refusal on September 1, 2008 on the ground that the instant pending service mark falls under Article 6(1)4 and 7 of the Trademark Act and cannot be registered.

(2) On February 24, 2009, the Korean Intellectual Property Trial and Appeal Board rendered a trial ruling dismissing the above appeal on the ground of the same reasons as the above reasons for rejection.

2. The parties' arguments and the issues of this case

A. The parties' assertion

The Plaintiff asserts that the pending service mark of this case is combined with the “Game” and the “Urban Corporation” and its English language, and thus, it does not constitute a mark consisting solely of a conspicuous geographical name, and that the entire “ Gyeonggi-do Urban Corporation” in the real transactional field is indivisible and thus can perform the function of distinguishing the service business. The Plaintiff does not need public interest to prohibit the Plaintiff from monopolying the above mark. Thus, the instant trial decision should be revoked.

As to this, the Defendant argues that the “Game” or “ Gyeonggi-do” among the constituent parts of the pending service mark constitutes a conspicuous geographical name, and that the “Urban Corporation” refers to a public enterprise engaged in a business related to the city, and is merely an undistinctive indication, and thus, is an undistinctive part. The combination of these characters does not form a new concept or distinctive character, and furthermore, the above mark should be freely used by ordinary consumers or traders, and thus, allowing a specific person to monopoly it is contrary to the public interest, and thus, the instant trial decision is lawful.

B. Key issue of the instant case

Therefore, the key issue of the instant case is whether the pending service mark constitutes a mark consisting solely of a conspicuous geographical name under Article 6(1)4 of the Trademark Act, and whether it constitutes a non-distinctive mark under Article 6(1)7 of the Trademark Act or other non-distinctive marks.

3. Determination

A. Whether it constitutes a mark consisting solely of a conspicuous geographical name

(1) Determination criteria

The purport of Article 6 (1) 4 of the Trademark Act stipulating a trademark consisting solely of a conspicuous geographical name as a passive requirement for trademark registration is to allow anyone to use the trademark and to not grant a specific person the exclusive right to use the trademark because it is not recognized as a special distinction due to its apparentness and well-knownness. Here, a conspicuous geographical name refers to a trademark in which the term itself refers to a trademark that can deliver a prompt geographical sense to ordinary consumers in relation to a specific product (see Supreme Court Decision 96Hu1682, Aug. 22, 1997, etc.).

The above provision does not apply only to a trademark consisting solely of a conspicuous geographical name, the abbreviation thereof, or a map. Even in cases where a conspicuous geographical name, etc. is combined with a non-distinctive mark, a trademark consisting of a business type mark or a technical mark, etc., the above provision does not apply to a trademark consisting of a combination, unless the word constituting a trademark results in a new concept beyond the original conspicuous geographical name, the mark, the business type mark, or the technical meaning, or at all, a trademark combining a geographical name, etc., and thus, a new distinctive character cannot be deemed granted. In such cases, the application of the above provision cannot be excluded (see, e.g., Supreme Court Decision 200Hu181, Apr. 26, 2002). On the other hand, where the word consisting of a trademark resulting in a combination of a conspicuous geographical name, not a new concept, but a new trademark, or a new trademark becomes an independent distinctive character, regardless of the trademark name, the above provision shall not apply to a geographical name.

(2) Specific determination

The pending service mark " " " "" consists of a mark consisting of a mark in the English language, "Gye Long-gu Corporation" under the Korean language, "Gye long-do Urban Corporation. Among them, the part of "Game" itself constitutes a conspicuous geographical name. However, the remaining part, "Urban Corporation" and "Urban Ltd. Corporation" cannot be deemed as an official mark or technical mark with respect to the designated service business of the pending service mark in this case, and the term "urban Corporation" itself has the meaning of "public enterprise established for the purpose of carrying out an urban development project." However, the designated service business of the pending service mark in this case cannot be deemed as "a mark indicating a type of business." Rather, since " Gyeonggi-do Urban Corporation" is in combination with "public enterprise established for the purpose of carrying out an urban development project of Gyeonggi-do" and the whole part of "Game-do Corporation," which is a conspicuous geographical name, is not a combination of "a conspicuous geographical name," and thus, it cannot be deemed as a combination of "public enterprise established for the purpose of performing an urban development project of Gyeonggi-do."

Therefore, the pending service mark cannot be seen as a mark consisting solely of a conspicuous geographical name under Article 6 (1) 4 of the Trademark Act.

(b) Whether it constitutes a non-distinctive mark

(1) Determination criteria

Article 6 (1) 7 of the Trademark Act provides that "any trademark other than those as referred to in subparagraphs 1 through 6, which does not enable consumers to distinguish goods related to a person's business," and it provides that even if it does not fall under any of subparagraphs 1 through 6, a trademark with no special distinction between one's own trademark and another's trademark shall not be registered. Therefore, whether a trademark with a special distinction is a trademark shall be determined depending on which ordinary consumers can recognize the origin of the goods in relation to the goods in question (see Supreme Court Decisions 91Hu455 delivered on December 24, 191; 2004Hu2871 delivered on June 23, 2005).

(2) Specific determination

As seen above, the Gyeonggi-do Urban Development Project is indivisiblely combined and its entire organization recognizes the "public enterprise established for the purpose of performing an urban development project of Gyeonggi-do", a local government-invested public corporation is established by the local government under the Local Public Enterprises Act (see Articles 2 and 49 of the Local Public Enterprises Act). In the event that the public corporation is sold, the purchaser may apply for the registration of incorporation of the corporation as a stock company even without undergoing the liquidation procedure under the Commercial Act, but in this case, the name of the "corporation" cannot be used in the trade name of the corporation (see Articles 53 and 75-5 of the same Act). Thus, in light of the fact that there is no need for the public interest to allow anyone to freely use the mark " Gyeonggi-do Urban Development Project" from the ordinary consumers or the trading industry, the applied service

Therefore, it cannot be deemed that the pending service mark constitutes a non-distinctive mark under Article 6(1)7 of the Trademark Act.

4. Conclusion

Thus, the registered service mark of this case cannot be rejected under Article 6 (1) 4 and 7 of the Trademark Act, and the decision of this case has different conclusions, and thus, the plaintiff's claim seeking its revocation is accepted.

[Attachment]

Judges Kim Yong- Dis (Presiding Judge)