In a case where an examiner of the Korean Intellectual Property Office filed a petition for a trial against a decision to refuse the registration of an applied trademark on the ground that the trademark falls under Article 7 (1) 7 of the former Trademark Act in relation to “A” and “A” corporation’s applied trademark registration, and the Korean Intellectual Property Tribunal notified the Korean Intellectual Property Tribunal of the new ground for rejection and dismissed the petition for trial, the case holding that the applied trademark falls under Article 6 (1) 3 and 7 of the former Trademark Act and the procedure of the trial is not unlawful in the course of the trial.

In relation to the trademark “A” and the prior-registered international trademark “,” an examiner of the Korean Intellectual Property Office filed a petition for a trial against a decision of refusal with the Korean Intellectual Property Tribunal on the ground that the refusal of registration of the applied trademark falls under Article 7(1)7 of the former Trademark Act (wholly amended by Act No. 14033, Feb. 29, 2016; hereinafter the same shall apply). The patent Tribunal notified the Korean Intellectual Property Tribunal of the new ground for rejection that the applied trademark falls under Article 6(1)3 and 7 of the former Trademark Act and dismissed the petition for a trial.

The case holding that since the term "EATRH", "FRIENY", and "PRUTRS" are relatively easily understandable words in light of the English diffusion level in Korea, they can be interpreted and conceptualally construed as "district-friendly products" as a whole, etc., if a trademark applied for registration is used in terms of "gal and ice-friendly chemical preparations or laundry solution", which are designated goods, they can be directly recognized as "district-friendly products" or "environment-friendly products" and thus, if the trademark applied for registration is used in terms of "gal and ice-friendly products" or "site-friendly products, etc., it is difficult for ordinary consumers to directly understand the quality or efficacy of designated goods, and the grounds for rejection that the "environment-friendly products" falling under the above interpretation and concept of the applied trademark are widely used to indicate the quality or efficacy of goods, etc., the applicant's decision to refuse the registration of the trademark applied for registration is a person who directly expresses the quality, efficacy, etc. of the designated goods, and the grounds for rejection of the applicant's decision to refuse to grant a new trademark rejection.

Article 6 (1) 3 (see current Article 3 (1) 3, 7 (see current Article 33 (1) 7), 7 (1) (see current Article 33 (1) 7), 23 (2) (see current Article 55 (1)), and (4) (see current Article 55 (3)), 81 (1) (see current Article 123 (1)), and (3) (see current Article 123 (3)) of the former Trademark Act (Amended by Act No. 1403, Feb. 29, 2016)

Bererlers, Ink. (Patent Attorney LAWn Law Firm, Patent Attorney Park Jae-won, Counsel for the defendant-appellant)

The Commissioner of the Korean Intellectual Property Office

May 17, 2018

1. The plaintiff's claim is dismissed.

2. The costs of lawsuit shall be borne by the Plaintiff.

The decision made by the Intellectual Property Tribunal on January 4, 2018 on the case 2016 Won4682 shall be revoked.

1. Basic facts

A. The applied trademark of this case

(1) Date/application number of the application: August 6, 2015

(2) Marks:

(3) Designated goods: as shown in [Attached].

B. The process of the instant trial decision

(1) As to the Plaintiff’s applied trademark, on January 4, 2016, the examiner of the Korean Intellectual Property Office notified the grounds for rejection that “the trademark of this case constitutes not only Article 7(1)7 of the former Trademark Act (wholly amended by Act No. 1403, Feb. 29, 2016; hereinafter “former Trademark Act”) but also Article 10(1) of the former Trademark Act because the name of certain designated goods is inappropriate and thus, cannot be registered.”

(2) On April 1, 2016, the Plaintiff submitted a written opinion and amendment on the foregoing grounds for rejection, but the examiner of the Korean Intellectual Property Office rendered a decision of rejection on May 16, 2016 on the ground that “ even if a written opinion and amendment are reviewed by the Plaintiff, the part of Article 7(1)7 of the former Trademark Act among the grounds for rejection was not annulled.”

(3) On August 9, 2016, the Plaintiff filed a petition for an appeal against the foregoing decision of refusal with the Korean Intellectual Property Tribunal. On September 7, 2017, the Korean Intellectual Property Trial and Appeal Board notified the new grounds for rejection that “The trademark applied for trademark of this case is recognized as meaning “district-friendly products,” etc., and thus, the designated product’s character (raw materials, quality, efficacy, etc.) is indicated as well as the designated product’s character (raw materials, quality, efficacy, etc.) is not distinctive as a whole, and thus, cannot be registered pursuant to Article 6(1)3 and 7 of the former Trademark Act.”

(4) On January 4, 2018, the Korean Intellectual Property Tribunal rendered the instant trial ruling dismissing the Plaintiff’s request on the ground that “The trademark applied for trademark falls under “technical marks” under Article 6(1)3 of the former Trademark Act, and constitutes “a trademark which is not recognizable as to whether or not the trademark indicating goods related to the business of the district” under Article 6(1)7 of the same Act, and thus cannot be registered.”

(5) On August 5, 2016, before filing a petition for a trial on objection against the foregoing decision of refusal, the Plaintiff filed a petition for a trial on revocation under Article 73(1)3 of the former Trademark Act with respect to the pre-registered and internationally-registered trademark (hereinafter “designated goods”), which had been pointed out as grounds for rejection under Article 7(1)7 of the former Trademark Act, before the Intellectual Property Tribunal rendered a petition for the trial on revocation under Article 73(1)3 of the former Trademark Act (Article 2361, 2016Da2364, April 22, 2017 and April 18, 2017).

[Reasons for Recognition] Unsatisfy, each entry in Gap evidence 1 to 5 (including branch numbers), and the purport of the whole pleadings

2. Whether the trial decision of this case is unlawful

A. Summary of the plaintiff's assertion (the grounds for revoking the trial decision)

For the following reasons, the trial decision of this case must be revoked illegally.

(1) The trial decision of this case is erroneous in the procedure of trial by citing new grounds for rejection during the trial process.

- Where a trial decision is rendered on grounds of new grounds for rejection in the course of a trial on objection against a decision of rejection, it should be conducted from the perspective of supplementing the grounds for the previous decision of rejection. However, by making a new notification of grounds for rejection, the Plaintiff deprived the registered trademark related to the initial grounds for rejection of the opportunity to undergo an examination twice in the course of a trial and a trial, and made the Plaintiff’s efforts to overcome the grounds for rejection in filing a request for a trial on revocation of the registered trademark related to the initial grounds for rejection, and the instant trial decision which deprived the Plaintiff of the opportunity to overcome the grounds for rejection at source by

(2) Although the trademark applied for registration does not fall under Article 6(1)3 and 7 of the former Trademark Act, the trial decision of this case is unlawful.

- The meaning of the trademark " " in this case should be interpreted as the meaning of "products friendly with the district" and "products friendly with the district" in the meaning of its constituent words, and interpreting it as "district-friendly products" like the decision in this case is not natural and legally interpreted, and even if such interpretation is interpreted as such, it is difficult to see that it merely indicates the quality, efficacy, etc. of the designated goods, and it does not fall under Article 6 (1) 3 of the former Trademark Act.

- The applied trademark of this case is not a trademark widely used, but is widely known to ordinary consumers as the Plaintiff’s product mark as a result of the Plaintiff’s use for the last 50 years. Thus, it does not fall under Article 6(1)7 of the former Trademark Act.

B. Whether the procedure is unlawful

The plaintiff asserts to the effect that "where a trial decision is rendered on grounds of new grounds for rejection in the course of a trial on appeal against a decision of rejection, it should be made in the aspect of supplementing the grounds for the previous decision of rejection, the new grounds for rejection, such as lack of distinctiveness, shall be notified and the trial decision of this case based on such grounds,

However, Article 23(2) of the former Trademark Act provides, “Where an examiner intends to decide to reject a trademark registration, he/she shall notify the applicant of the grounds for rejection. In such cases, an applicant may submit a written opinion on the grounds for rejection within the period prescribed by Ordinance of the Ministry of Trade, Industry and Energy,” and Article 23(4) of the same Act provides, “An applicant who fails to submit a written opinion within the period prescribed by the latter part of paragraph (2) may submit a written opinion on the grounds for rejection within two months from the expiry date of the period and submit a written opinion on the grounds for rejection within the period prescribed by Ordinance of the Ministry of Trade, Industry and Energy.” Article 81(1) and (3) of the same Act provides, “Where an applicant finds the grounds for rejection

These regulations are so-called compulsory provisions due to the demand of the public interest that they should not be secured in order to ensure the propriety of a trial and to maintain the credit of the trial system. Thus, in a trial of dissatisfaction against a decision of refusal, if the applicant did not give the applicant an opportunity to submit a written opinion with a new reason for rejection other than that of the previous decision of refusal, it is unlawful. However, the reason for the decision of refusal is sufficient if it conforms to the reasons stated in the notification of the reason for refusal and its main purpose, and it is not necessary to give notice of the reason for refusal if it is not found in a trial of dissatisfaction against a decision of refusal, unless it finds other reasons for rejection (see Supreme Court Decision 98Hu300 delivered on November

According to the above provisions and legal principles, the Plaintiff’s assertion that when a trial decision is rendered on grounds of new grounds for rejection in the course of appeal against a decision of rejection, it should be made in the aspect of supplementing the grounds for the previous decision of rejection can have meaning as a procedural illegality only if a new ground for rejection is not notified. In other words, a trial decision on grounds of new grounds for rejection in an appeal against a decision of rejection is permissible as a matter of principle, unlike the Plaintiff’s assertion. In this case, it is necessary to give the applicant

However, as seen earlier, the instant trial decision was rendered after giving notice of new grounds for rejection during the trial process and giving the applicant an opportunity to submit a written opinion on the grounds for rejection to the Plaintiff, which is the applicant. Thus, there is no violation of procedural law as alleged by the Plaintiff in the instant trial decision.

Therefore, we cannot accept the plaintiff's above argument.

C. Whether it falls under Article 6(1)3 and 7 of the former Trademark Act

(1) Relevant legal principles

Article 6 (1) 3 of the former Trademark Act provides that a trademark cannot be registered with a mark consisting solely of a mark indicating the origin, quality, efficacy, use, etc. of goods in a common way, because it is necessary for anyone to use it, and it is intended to use it, so it is reasonable to request the public interest that any specific person can not exclusively use it, and if such trademark is allowed, it is difficult to distinguish it from other goods of the same kind. Thus, the determination of whether a trademark constitutes it should be made objectively by taking into account the concept of the trademark, the relationship with the designated goods, the circumstances of the transaction society, etc. (see Supreme Court Decision 2002Hu140, Aug. 16, 2004, etc.).

Article 6(1) of the former Trademark Act provides, “A trademark other than those as referred to in subparagraphs 1 through 6, which does not enable consumers to recognize whose goods it indicates in connection with a person’s business.” This means that even if a trademark does not fall under any of subparagraphs 1 through 6 of the same Article, a trademark which does not distinguish the source between his/her goods and another person’s goods cannot be registered. Whether a trademark has no distinctiveness is determined objectively by taking into account the concept of the trademark, the relationship with the designated goods, and the circumstances of the transaction society, etc. The trademark should be determined objectively by taking into account the concept of the trademark, the concept of the designated goods, the relationship with the designated goods, and the circumstances of the transaction society. If it is difficult to recognize the distinctiveness of the goods of another person under generally accepted social norms or it is deemed inappropriate to enable a specific person to monopoly the trademark (see, e.g., Supreme Court Decision 2012Hu2951, Dec

(2) Determination

The trademark “” of this case is a character trademark consisting of three words “EATRH”, “FRIENLY”, and “PCRUTS.”

However, in light of the English propagation level in the Republic of Korea, the term “EATRH”, “FRIENLY” and “PCRUTRS” may be interpreted and conceptualally construed as a “district-friendly product” as a whole, etc. As such, the trademark applied for trademark of this case, which is a relatively easily easily combined trademark, can be construed and conceptualized as a “district-friendly product.” Thus, if the applied trademark is used in the designated product of this case, such as “gras and ice-friendly chemical preparations for snow and ice, laundry, air laundry, and dys,” the designated product of this case, the designated product of this case is directly perceived as “district-friendly product” or “environment-friendly product,” etc., and thus, ordinary consumers are directly aware of the quality, efficacy, etc. of the designated product of this case.

In addition, according to the statements and images of the evidence Nos. 6 and 10 through 13, since the term “environment-friendly product” can be recognized as having been widely used in many terms, such as “tax system”, “shampoo and rinse”, “laundry”, “bundry products”, etc., which are identical or similar to the designated goods of the applied trademark of this case, as the term “environment-friendly product” indicates the quality or efficacy of the product, it can be seen that the trademark of this case, which falls under the above interpretation and concept, is widely used to indicate the quality or efficacy of the product, is the actual situation of a trade society.

Considering the concept of the trademark applied in this case, the relationship with the designated goods, and the actual circumstances of the trade society, etc., the trademark applied in this case is a technical mark that directly indicates the quality, efficacy, etc. of the designated goods and it is difficult to recognize the distinctiveness of the goods of others under social norms. Moreover, it is inappropriate to recognize the distinctiveness of the goods of others as a mark that should be used by all persons engaged in the same kind of trade industry, and it is not appropriate to grant a specific person exclusive right for the public interest. Thus, the trademark applied in Article 6

(3) Judgment on the Plaintiff’s assertion

(A) The Plaintiff asserts to the effect that “this case’s trademark “” can not be interpreted as a “district-friendly product” in its constituent words, unless it is combined with “EATRH” which is earlier by open (open (open) and used as a composite master, so long as it is not used, it is difficult for ordinary consumers to easily recognize it as a difficult content that requires high-quality English knowledge, and that the “EATRH” is not the meaning of “environment-friendly product.” Even if it is interpreted as such, its meaning can not be interpreted as a whole as a “district-friendly product.” Even if it is interpreted as such, it can not be seen as only as a secondary concept that can be achieved when examining the components of the designated product, but also as a very abstract meaning of quality and efficacy of the designated product.”

However, according to the evidence evidence evidence Nos. 6-2, 5, and 4, "FRINLY" has the prior meaning of "(s) pro-friendly English (s)", "EARH-FRALY" and "EARHHHHIENALY" as "district-friendly English (s)", and "EATRALY" as "not friendly and environmental harm to the region" (s)" (the following English advance). In light of the above contents, if "FRINALY" is used as a "friendly", it would be used as a "synthey" synthetic master, but it would not be used as an open (-) combination, as alleged by the plaintiff, and it would be possible to interpret "EALYY" as an "open meaning," but it would be interpreted as an "EPENY" as an "open meaning," and it can be used as an "open-H (synthey)" without the environmental meaning of "EALYYYY".

Therefore, the meaning of the trademark " " " as a whole is interpreted as a "district-friendly product" under the language law. As such, if the trademark of this case, which is interpreted as a "district-friendly product", is used in the designated product, such as snow and ice chemical preparations for melting snow and ice, washing solvents, air laundry, and dysium, etc., which are the designated product, the trademark of this case is directly perceived as a "district-friendly product" or "environment-friendly product, etc., and thus, it is difficult to accept the plaintiff's above assertion."

(B) The plaintiff asserts to the effect that "The trademark of this case, which is similar to the trademark of this case, has been registered in Korea as well as in many trademarks that are similar to the trademark of this case, has already been registered in a foreign country, shall be recognized as its distinctive character and registered."

However, whether a trademark is eligible for registration shall be determined individually in relation to the designated goods, and the registration examples of other trademarks shall not serve as the basis for the registration of a specific trademark (see Supreme Court Decision 2005Hu353, May 12, 2006, etc.). Whether a trademark for which an application for registration has been filed should be determined independently in relation to the designated goods under the Korean Trademark Act, and the legal system or language habits is not an application for registration of other foreign countries (see Supreme Court Decision 2002Hu1768, May 16, 2003, etc.).

Therefore, the above assertion by the first-party plaintiff cannot be accepted on a different premise.

(C) The Plaintiff asserts to the effect that “The trademark of this case was used for approximately 50 products for about 200 years since its establishment in the United States in 1967, and, in particular, was actively engaged in business at “Earthth Frily Process Services”, an affiliate to the same name as the trademark of this case, and exported considerable amount of the Plaintiff products from 201 to 201, the applied trademark of this case constitutes a mark with high recognition as the Plaintiff’s trademark and thus does not fall under Article 6(1)7 of the former Trademark Act.”

However, Article 6(1)7 of the former Trademark Act is based on the fact that the trademark has no, or weak, its original distinctiveness. Thus, even if the recognition of the Plaintiff’s assertion is recognized, it is merely a fact that the Plaintiff’s assertion can be registered as an acquisition of distinctiveness through the use of Article 6(2) of the former Trademark Act, and it does not constitute Article 6(1)7 of the former Trademark Act by re-recognition of the original or weak distinctiveness for such reason.

Even if the Plaintiff’s aforementioned assertion is deemed as having been made by the use of the trademark under Article 6(2) of the former Trademark Act, the use of the trademark abroad does not directly affect the domestic recognition of the trademark. Article 6(2) of the former Trademark Act provides that it is inappropriate to allow a specific person to use a trademark exclusively because the trademark has no or weak distinctiveness for a considerable period of time, and thus allow a specific person to use the trademark exclusively or continuously for a considerable period of time. As such, in order to recognize that the trademark is recognized as a case where it is recognizable as indicating the source of the goods of a specific person, the trademark as indicating its quality, efficacy, etc., the period of use, frequency and continuity of use, the production, sale and market share of the goods attached with the trademark, advertisement, publicity, quality of the goods, reputation of the trademark user, degree of credibility of the trademark user, and usage of the trademark at issue cannot be seen as having reached 160% of the former Trademark Act’s separate evidence as to the goods of the specific person.

Therefore, the plaintiff's above assertion cannot be accepted.

D. Whether the trial decision of this case is unlawful

Ultimately, the trademark applied for trademark of this case falls under Article 6 (1) 3 and 7 of the former Trademark Act (it cannot be deemed that the trademark acquired distinctiveness through the use of Article 6 (2) of the same Act) and cannot be registered. The trial decision of this case is the same as the conclusion, and it is lawful in the process of the trial because it is not unlawful in the process of the trial.

3. Conclusion

Therefore, the plaintiff's claim seeking the revocation of the trial decision of this case is dismissed as it is without merit, and it is so decided as per Disposition.

[Attachment] Designated goods of the applied trademark of this case: omitted

Judges Lee Jae-young (Presiding Judge) and Lee Jong-young