Plaintiff (Law Firm KEL, Attorneys Jeong Jong-soo et al., Counsel for plaintiff-appellant)

The Commissioner of the Korean Intellectual Property Office

April 22, 2011

1. The decision made by the Intellectual Property Tribunal on November 24, 2010 on the case No. 2009 Won1194 shall be revoked.

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

The same shall apply to the order.

1. Basic facts

A. The plaintiff's applied service mark

1) Date of application / Date of decision of refusal / Patent Application Number: September 5, 2008 / November 11, 2009 (application number omitted)

(b) Marks: (Color service marks)

3) 지정서비스업: 서비스업류 구분 제43류의 멕시코음식전문레스토랑업(멕시코식 TACO 요리를 주메뉴로 하는 업종에 한함), 멕시코음식전문점체인업(멕시코식 TACO 요리를 주메뉴로 하는 업종에 한함), 멕시코음식점경영업(멕시코식 TACO 요리를 주메뉴로 하는 업종에 한함), 식당체인업(멕시코식 TACO 요리를 주메뉴로 하는 업종에 한함), 간이식당업(멕시코식 TACO 요리를 주메뉴로 하는 업종에 한함), 간이음식점업(멕시코식 TACO 요리를 주메뉴로 하는 업종에 한함), 관광음식점업(멕시코식 TACO 요리를 주메뉴로 하는 업종에 한함), 레스토랑업(멕시코식 TACO 요리를 주메뉴로 하는 업종에 한함), 바(bar)서비스업(멕시코식 TACO 요리를 주메뉴로 하는 업종에 한함), 뷔페식당업(멕시코식 TACO 요리를 주메뉴로 하는 업종에 한함), 서양음식점업(멕시코식 TACO 요리를 주메뉴로 하는 업종에 한함), 셀프서비스식당업(멕시코식 TACO 요리를 주메뉴로 하는 업종에 한함), 스낵바업(멕시코식 TACO 요리를 주메뉴로 하는 업종에 한함), 식품소개업(멕시코식 TACO 요리를 주메뉴로 하는 업종에 한함), 음식조리대행업(멕시코식 TACO 요리를 주메뉴로 하는 업종에 한함), 음식준비조달업(멕시코식 TACO 요리를 주메뉴로 하는 업종에 한함), 일반유흥주점업(멕시코식 TACO 요리를 주메뉴로 하는 업종에 한함), 일반음식점업(멕시코식 TACO 요리를 주메뉴로 하는 업종에 한함), 주점업(멕시코식 TACO 요리를 주메뉴로 하는 업종에 한함), 카페업(멕시코식 TACO 요리를 주메뉴로 하는 업종에 한함), 카페테리아업(멕시코식 TACO 요리를 주메뉴로 하는 업종에 한함), 칵테일라운지서비스업(멕시코식 TACO 요리를 주메뉴로 하는 업종에 한함), 패스트푸드식당업(멕시코식 TACO 요리를 주메뉴로 하는 업종에 한함), 항공기기내식제공업(멕시코식 TACO 요리를 주메뉴로 하는 업종에 한함), 휴게실업(멕시코식 TACO 요리를 주메뉴로 하는 업종에 한함)(이하, 원고의 출원서비스표를 ‘이 사건 출원서비스표’라 한다)

B. Details of the instant trial decision

1) On September 5, 2008, the Plaintiff applied for the instant pending service mark to the Korean Intellectual Property Office. On November 11, 2009, the Korean Intellectual Property Office rendered a decision of refusal of registration on the ground that the instant pending service mark fell under Article 6(1)3 of the Trademark Act, because it was directly reduced to indicate food raw materials provided in the designated service business, and its mark falls under Article 6(1)3 of the Trademark Act.

2) On December 10, 2009, the Plaintiff filed an appeal against the said decision of refusal. However, the Intellectual Property Tribunal dismissed the Plaintiff’s appeal on the ground that the pending service mark was an technical mark indicating raw materials related to the designated service business and falls under Article 6(1)3, and thus, cannot be registered as a service mark.

[Ground of recognition] Evidence No. 1, Eul No. 1 and No. 2

2. Whether the pending service mark falls under Article 6(1)3 of the Trademark Act

A. Criteria for judgment

Article 6 (1) 3 of the Trademark Act provides that a trademark cannot be registered with a mark consisting solely of a mark indicating the origin, quality, raw material, efficacy, and use of goods in a common way. Since such technical trademark needs to be used even if it is necessary for the distribution process of goods and it is intended to use it, so it is hard to distinguish it from others' goods of the same kind, and if such trademark is allowed, it shall be objectively determined in light of the concept of the trademark, the relation with the designated goods, and the situation of the trade society, etc. Thus, if the trademark is used as the raw material of the designated goods or if general consumers or traders recognize that it is used as the raw material of the designated goods, it shall not be registered with the raw material of the goods (see, e.g., Supreme Court Decisions 89Hu677, Dec. 8, 1989; 2003Hu364, May 26, 2004; 2003Hu164, May 26, 2003).

B. Determination

1) The pending service mark “,” which is the pending service mark, is the body of letters, diagrams, and combined service mark consisting of “the upper center” and “TACO Place” in the lower center.

2) First of all, the part of the pending service mark of this case, which is the larger text, is examined as to "". The above part is in the form of "OMA" in the upper part of the Alphab, the upper part of the left part of the trademark of this case, where "T" is located in the upper part of the right part, and the below part is in the form where "ILO" is located in each of the above part. Thus, when ordinary consumers contact the above "ILO", it can be recognized as "OMATILO" in the upper part, or as "OMATILOO" in connection with the lower part. According to the evidence Nos. 5, 10, and 11 of this case, according to the evidence, the above part may be known as "OMAO" in each of the above part, which is the decision of refusal of the trademark of this case, as the part of the trademark of this case, which had already been connected to the Internet at November 11, 2009.

한편, 갑 제2호증, 을 제4호증에 의하면, ‘TOMATILLO'는 사전적으로 주로 멕시코와 미국 남부가 원산지인 가짓과(과) 꽈리속(속)의 1년 초(초)로서 자주색 열매가 식용으로 사용되는 식물로 정의되고, 네이버 백과사전에는 멕시코 요리에 즐겨 쓰이는 재료로서 대개 익히거나 토마토 퓨레로 만들어 소스에 넣는 것으로 게재되어 있는 사실을 알 수 있다.

However, even if "TMATILO" is published as vegetable materials that can be used in Mexico in various advance, it is recognized as indicating raw materials in relation to the designated service business in Korea's general consumers or traders, as it is actually used as raw materials in our restaurants at the time of November 11, 2009, which was the date of the decision of refusal, or as being used as raw materials in Mexico in reality, or as it is used as raw materials in Mexico. However, the submitted evidence alone is insufficient to acknowledge it.

Specifically, as seen earlier, evidence No. 2 and No. 4 were related to the general knowledge of Saturdays, and each of the above evidence alone is insufficient to recognize that Korea’s general consumers or traders are aware of the fact that it was actually used as Mexico’s raw material at the time of the decision of refusal. Moreover, evidence No. 5-1 is about the process of establishment and content of No. 5-2, rather than food materials, and evidence No. 5-3 is not merely about the fact that it was used as Mexico’s raw material at the time of the decision of refusal, but it is not about the fact that No. 5-4 was used as Mexico’s raw material at the time of the decision of refusal, but also about the fact that No. 6-3 was used as Mexico’s domestic raw material at the time of the decision of refusal. It is not about the fact that No. 5-5-4 was used as Mexico’s domestic raw material at the time of the decision of refusal, and it is not about the content of No. 5-5 ethyl-1 to ethyl.

Therefore, “” among the pending service marks cannot be deemed as indicating raw materials related to the designated service business.

C. Sub-committee

Ultimately, the pending service mark cannot be deemed as a trademark consisting solely of a mark indicating raw materials in a common way with respect to the designated service business, and it does not fall under Article 6(1)3 of the Trademark Act.

3. Conclusion

Thus, the decision of this case is unlawful on the basis of its conclusion, and the plaintiff's claim seeking its revocation is reasonable, and it is so decided as per Disposition by admitting it.

Judges Cho Jae-soo (Presiding Judge)