In a case where Company A filed a petition for invalidation trial against Company B, a trademark right holder of the registered trademark “,” on the ground that the registered trademark falls under Article 6(1)7 of the Trademark Act, the case affirming the judgment below holding that each of the designated goods, such as mecl business cosmetics, chloaking agents, dyfins, and cosmetic, constitutes “a trademark which is not recognizable for consumers to indicate whose business the goods” under Article 6(1)7 of the Trademark Act, based on the date of the decision on the registration.

Article 6 (1) 7 of the Trademark Act

Loh (LOREAL) (Attorney Lee Jae-gi et al., Counsel for the defendant-appellant)

Amomoth Co., Ltd. (Law Firm KS, Attorneys Kamo-dam et al., Counsel for the defendant-appellant)

Patent Court Decision 2013Heo9874 decided May 15, 2014

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

The grounds of appeal are examined.

1. Article 6(1)7 of the Trademark Act provides for "a trademark, other than those referred to in subparagraphs 1 through 6, for which a trademark cannot be registered." This means that even if a trademark does not fall under any of subparagraphs 1 through 6 of the same Article, the source between the goods of the trademark and the goods of another person cannot be registered. Whether a trademark without distinctiveness constitutes a trademark shall be determined objectively by taking into account the concept of the trademark holding, the relationship with the designated goods, and the circumstances of the transaction society, etc. However, if it is difficult to recognize distinctiveness of the goods of another person under the social norms, or it is deemed inappropriate to enable a specific person to monopoly the trademark with the goods of another person for public interest (see Supreme Court Decision 2012Hu2951, Dec. 27, 2012).

On the other hand, the distinctiveness of a trademark is the relative and dynamics that may vary depending on the concept of the trademark, relation with the product, the nature of the market in which the product is traded, the actual condition of the transaction and the method of transaction, the characteristic of the product, the composition of a consumer, the degree of use of the trademark, etc. (see Supreme Court en banc Decision 201Hu3698, Mar. 20, 2014). Whether the registered trademark of this case falls under Article 6(1)7 of the Trademark Act should be determined on the basis of the date of decision on registration (see Supreme Court Decision 2008Hu4721, Jul. 29, 2010).

2. Examining the records in light of the aforementioned legal principles, the lower court is justifiable to have determined that each of the designated goods of this case constitutes “a trademark which does not enable consumers to distinguish who indicate goods related to any person’s business” under Article 6(1)7 of the Trademark Act when determining the original trademark of this case (registration number omitted) composed of “” as of June 22, 2012, which was the date on which the registration was decided. In so doing, the lower court did not err by misapprehending the legal doctrine on the distinctiveness of a trademark, or by exceeding the bounds of the principle of free evaluation of evidence against logical and empirical rules and by exceeding the bounds of the principle of free evaluation of evidence.

Supreme Court Decision 2002Hu2112 Decided May 30, 2003 cited in the ground of appeal states that, in light of the situation at the time of November 22, 1999, the distinctiveness of the mark "SPA" is not denied as to the "cosmetic related to hair". Thus, the case is different from the case, and it is not appropriate to be invoked in the case.

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 on the bench.

Justices Ko Young-han (Presiding Justice)