[1] The method of determining whether the constituent part of the service mark is "in need of identification"

[2] Whether the registered service mark “” and the earlier application service mark “” are similar (negative)

[3] The case holding that the registered service mark does not fall under Article 7 (1) 4 of the Trademark Act even if the representative director of a corporation which entered into a license agreement applied for and registered the trade name of the other party to the contract as a part of its composition

[4] Whether a circumstance where a natural person’s service mark applied for and registered includes a letter indicating a company constitutes grounds for invalidation of registration under Article 7(1)4 of the Trademark Act (negative)

[1] Whether the part of a service mark has no or weak distinctiveness shall be objectively determined by taking into account the concept of its constituent part, the relationship with the designated service business, the circumstances of the transaction society, etc. In cases where it is difficult to recognize the distinctiveness of a self-service business under social norms, or where it is not appropriate to allow a specific person to monopoly in light of public interest, it shall not be deemed that it constitutes “a part with distinctiveness”

[2] In the composition of the registered service mark “” and the earlier application service mark “”, the term commonly used is “place where children gather and engage in certain activities,” and in the service business intended for children, there is no function of indicating the source of the self-employed service business in general, and it is not appropriate to allow all persons to use it to read it as an expression whose use should be open to the public, and thus, it cannot be deemed as an essential part with no or weak distinctiveness, and thus, the two service marks cannot be deemed as similar since they are included in the composition of the above two service marks.

[3] The case holding that the registered service mark does not fall under Article 7 (1) 4 of the Trademark Act even if the representative director of a corporation which entered into a license agreement, whose main contents are to enable the business to be run by using the trademark of children's English education programs and know-how, applied for and registered as a part of the service mark consisting of the trade name of the contracting party as a designated service business of the English Private Institutes for Children as a designated service business of the English Private Institutes for Children

[4] The mere fact that a natural person included a letter indicating a company in a service mark applied for and registered shall not be deemed to constitute grounds for invalidation of registration under Article 7(1)4 of the Trademark Act, as it violates Article 20 of the Commercial Act.

[1] Articles 7(1)7 and 8(1) of the Trademark Act / [2] Articles 7(1)7 and 8(1) of the Trademark Act / [3] Article 7(1)4 of the Trademark Act / [4] Article 7(1)4 of the Trademark Act, Article 20 of the Commercial Act

[1] Supreme Court Decision 96Hu979 delivered on February 28, 1997 (Gong1997Sang, 945) Supreme Court Decision 2004Hu912 delivered on May 25, 2006 (Gong2006Ha, 1187)

R clubs Fri-St. (Law Firm Sejong, Attorneys Yellow-ho et al., Counsel for the plaintiff-appellant)

Korea Co., Ltd. (Law Firm General Law Office, Attorney Jeong Tae-won, Counsel for the plaintiff-appellant)

Patent Court Decision 2002Heo4927 delivered on December 12, 2002

The appeal is dismissed. The costs of appeal are assessed against the plaintiff.

The grounds of appeal are examined.

1. As to the ground of appeal on Article 8 (1) of the Trademark Act

Since a part which has no or weak distinctiveness among the composition of a service mark cannot be deemed as an essential part alone, it is reasonable to deem that ordinary consumers or traders do not simply refer or concept to the part which has no or weak distinctiveness. This also applies in cases where the part is combined with other letters, etc. (see Supreme Court Decision 2001Hu1808, Dec. 14, 2001). Whether the part of a service mark has no or weak distinctiveness shall be determined objectively by taking into account the concept that it has its constituent parts, the relationship with the designated service business, the circumstances of the transaction society, etc. (see Supreme Court Decision 96Hu979, Feb. 28, 1997). In cases where it is difficult to recognize distinctiveness of a self-supporting service business under the social norms, or where it is deemed inappropriate to grant a specific person exclusive license in view of the public interest, it cannot be deemed as an “in-depth part” (see Supreme Court Decision 2004Hu9292, May 25, 2006).

In light of the above legal principles and the records, "children's English private teaching institute operation business", which is designated service business of the registered service mark of this case (registration No. 51584, Dec. 6, 1996) composed of "children's English private teaching institute operation business," and earlier application service mark (application No. 14, 1995) composed of "children's English private teaching institute operation business," and "children's English private teaching institute operation business, etc., are provided with English teaching services by gathering children at a certain place. In the two service marks, "Dasclb" or "KIDS CUB" are often used as the term "place where children gather and allow them to perform specific activities", and it is not appropriate to consider that the above service mark's distinction between the registered service marks cannot be seen as being considerably similar to the above registered service marks since it can not be seen as falling under the two or more of the registered service marks in the English private teaching institute.

The court below's reasoning is justified in its conclusion that the service marks are not similar, and there is no error of law that affected the conclusion of the judgment, as otherwise alleged in the ground of appeal. The Supreme Court precedents cited by the plaintiff are different from this case, and it is not appropriate to invoke this case as they are.

2. As to the grounds of appeal on Articles 7(1)9 and 7(1)0 of the Trademark Act

Examining the reasoning of the judgment below in light of the records, we affirm the judgment below that the registered service mark of this case does not constitute a ground for invalidation of registration under Articles 7 (1) 9 and 10 of the Trademark Act on the ground that the registered service mark of this case cannot be deemed to have been widely and clearly known among domestic consumers at the time of application for the registered service mark of this case, and there is no violation of law as otherwise alleged in the ground of appeal.

3. As to the ground of appeal on Article 7(1)11 of the Trademark Act

To constitute “a trademark likely to mislead or mislead consumers” as provided by Article 7(1)11 of the Trademark Act, a trademark or goods used by another person compared to the registered trademark or the designated goods should be known to the extent that, at the time of the decision of registration of the registered trademark, at least in general transactions in Korea at the time of the decision of registration of the registered trademark, the trademark or goods used by another person is deemed to be a trademark or goods of a specific person (see Supreme Court Decision 2001Hu184, 1891, Apr. 8, 2003). Such a legal doctrine likewise applies to a service mark pursuant to Article 2(3) of the Trademark Act.

Even according to the record, it is difficult to view that the earlier application/service mark or its abbreviation, at the time of the registration decision of the instant registered service mark, was known among domestic consumers as a mark indicating the goods of a specific person.

Although the court below erred as at the time of applying for the registration of the registered service mark of this case, it is just in holding that the registered service mark of this case does not fall under the grounds for invalidation of registration under Article 7 (1) 11 of the Trademark Act, and there is no error of law that affected the conclusion of the judgment as otherwise alleged in the

4. As to the ground of appeal on Article 7(1)4 of the Trademark Act

A. "Trademarks which are contrary to the public order or good customs" under Article 7 (1) 4 of the Trademark Act refers to a case where the composition of a trademark itself or the meaning or content that the user uses on the designated goods violates the public order of society or good customs, which is the normal moral sense of ordinary people (see Supreme Court Decision 96Hu2296, Oct. 14, 1997). The above provision is a provision with respect to the nature of the trademark itself, and there are grounds for separate registration in each subparagraph of Article 7 (1) of the Trademark Act, with regard to a trademark deemed contrary to the purpose of the Trademark Act. Considering the fact that the Trademark Act adopts the principle of earlier application that recognizes registration as an applicant on the premise of freedom to choose a trademark, it appears that the composition of the trademark does not violate the public order or good customs, and thus, it does not appear that the act of using the trademark intentionally constitutes a violation of Article 207 (1) of the Trademark Act or its registered service mark without permission, and thus, it does not appear that it constitutes a trademark 207000 after its registration.

In light of the above legal principles and the records, the judgment below is just in holding that the registered service mark of this case cannot be deemed to fall under Article 7 (1) 4 of the Trademark Act on the ground that the defendant's representative director, who entered into a license agreement with the plaintiff, applied for and registered the trade name of the other party to the above contract as part of the composition of the registered service mark of this case, and the registered service mark of this case does not fall under Article 7 (1) 4 of the Trademark Act, and there is no error of law as otherwise alleged in the ground of appeal.

B. Furthermore, solely on the fact that a natural person’s service mark includes a letter indicating a company, it is in violation of Article 20 of the Commercial Act and cannot be deemed as a ground for invalidation of registration under Article 7(1)4 of the Trademark Act. Thus, even though the name “Ltd” in the composition of the instant registered service mark is an English abbreviation indicating a “stock company, etc.” (it is difficult to conclude that Korea’s ordinary consumers or traders are directly aware that “Ltd” has such meaning on the record), it cannot be said that the registered service mark of this case, which is part of the composition of the service mark, constitutes a ground for invalidation of registration under Article 7(1)4 of the Trademark Act. The argument in the grounds for final appeal on a different premise is rejected.

5. 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 on the bench.

Justices Shin Hyun-chul (Presiding Justice)