[1] The criteria for determining whether a service mark is eligible for registration, and whether the examples of registration of other service marks can be the grounds for the registration of a specific service mark (negative)

[2] The degree of proof as to whether the use under Article 6 (2) of the Trademark Act has distinctiveness

[3] The case holding that a registered service mark consisting of "011" cannot be deemed as having acquired a special distinction since it is not appropriate for the public interest to place a specific mobile telephone service provider monopoly as an identification number for a communications network

[1] Article 6 (1) of the Trademark Act / [2] Article 6 (2) of the Trademark Act / [3] Articles 6 (2) and 7 (1) 1 of the Trademark Act, Article 36 of the Telecommunications Business Act

[1] Supreme Court Decision 9Hu529 delivered on July 9, 1999 (Gong1999Ha, 1631), Supreme Court Decision 97Hu2453 delivered on October 26, 199 (Gong1999Ha, 2426), Supreme Court Decision 99Hu2907 delivered on April 21, 200 (Gong200Sang, 1300), Supreme Court Decision 200Hu1436 Delivered on March 23, 2001 (Gong201Sang, 1049) / [2] Supreme Court Decision 99Hu1645 Delivered on September 17, 199 (Gong199Ha, 2215) 203Hu16375 delivered on May 16, 2003

KS Telecom Co., Ltd. (Law Firm Southern River, Attorneys Lee Dong-ho et al., Counsel for the plaintiff-appellant)

[Defendant-Appellant] Ktwitel Co., Ltd. (Law Firm Gyeongpyeong, Attorneys Gangnam-gu et al., Counsel for defendant-appellant)

Patent Court Decision 2004Heo324 delivered on December 24, 2004

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

We examine the grounds of appeal.

1. As to the distinctiveness of the registered service mark of this case

According to the reasoning of the judgment below, the court below determined that the registered service mark of this case (registration No. 48592) composed of “011” is a communication network identification number for the telecommunications service to general consumers in relation to its designated service business, and it is difficult to see that the registered service mark of this case is a mark distinguishing the service from its designated service business.

In light of the records, it is difficult to deem that the registered service mark of this case is distinctive from the service mark of this case as a general consumer because it is the same as the identification number of the mobile phone that is commonly used or large to be used in daily life. In addition, in light of the relevant provisions such as Articles 1 and 36 of the former Telecommunications Business Act (amended by Act No. 5564 of September 17, 1998) and Articles 1, 8, 19, 19, and 22 of the former Telecommunications Number Management Rule (amended by Act No. 1998-105 of the Information and Communications Network Notice) and Articles 1, 8, 19, and 22 of the former Telecommunications Number Management Rule, the identification number of the service mark of this case is a limited resource belonging to the ownership and management of the State, and it is not appropriate to recognize the identity of the mobile service provider as a special service mark in relation to the registration and change of the assigned service mark.

In addition, whether a service mark is eligible for registration shall be determined individually in relation to the designated service business (see Supreme Court Decision 2000Hu1436, Mar. 23, 2001). The registration examples of other service marks cannot be the basis for the registration of a specific service mark (see Supreme Court Decision 97Hu1269, Dec. 26, 1997; Supreme Court Decision 97Hu2453, Oct. 26, 199); and the fact that the service marks consisting of the identification number of the communications network are registered in majority in Korea and abroad do not necessarily mean that the registered service mark of this case has distinctiveness in relation to the designated service business.

Therefore, the court below is justified in finding that the registered service mark of this case is not distinctive in relation to its designated service business, and there are no errors in the misapprehension of legal principles as to the distinctiveness of service mark, violation of the rules of evidence, incomplete hearing, omission of judgment, etc., as alleged in the

2. As to the acquisition of distinctiveness by the use of the registered service mark of this case

In a case where, as a result of the use of a mark deemed to have no special distinction, consumers or traders have been recognized as eligible for registration of a service mark since it becomes considerably recognizable as the identification mark indicating the source of service business, the standard should be strictly interpreted (see Supreme Court Decisions 9Hu1645, Sept. 17, 1999; 9Hu1645, Sept. 17, 2009; 2002Hu1768, May 16, 2003, etc.). The fact that the applicant used the service mark itself in a way appropriate for distinguishing it from the service business of others, which is clearly recognized by evidence that general consumers have become considerably aware of it (see, e.g., Supreme Court Decisions 9Hu3023, Jan. 30, 2001; 2002Hu1768, May 16, 2003).

Examining the reasoning of the judgment below in light of the above legal principles and records, it is insufficient to find that the registered service mark of this case was recognized as a service mark indicating the Plaintiff’s source of service by the Plaintiff’s use at the time of its decision of registration, and that the Plaintiff continuously advertised the service mark using an independent service mark such as “digital 011”, “Std 011” and “SPED 011” in the mass media does not constitute a case where the registered service mark of this case or a service mark similar thereto is used. Thus, the court below is just in holding that the registered service mark of this case cannot be deemed as having acquired the distinctiveness by the use of the registered service mark, and there is no error of law such as misunderstanding of legal principles as to the acquisition of distinctiveness by the use of the service mark, violation of the rules of evidence, and incomplete deliberation, etc. As alleged in the grounds of appeal

3. 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.

Justices Kim Young-ran (Presiding Justice)