(영문) 특허법원 2014.9.19.선고 2014허2344 판결

3) Designated goods: 10th category of goods for 10th category of goods, osossynn'sis,orthes, pendo pros and pores, Anackist's porr's porr's porr's porr's management, bone tyr's re-management, bone tyr's porr's joint and several liability, Acebercecell, Aceossa fosa and knee'sss, or the course of the decision of this case

1) On May 31, 2013, the examiner of the Korean Intellectual Property Office, upon the Plaintiff’s application, rendered a decision of refusal on the ground that the trademark constitutes a trademark consisting solely of a mark indicating the shape of the designated goods in a common way and falls under Article 6(1)3 of the Trademark Act, and the Plaintiff filed a petition for a trial against the Intellectual Property Tribunal, on the ground that the trademark in this case is a three-dimensional trademark consisting of four dopings, a strike, and although letters, etc. are indicated on the anti-doping surface, it is recognized that the overall shape or shape does not deviate from the scope of the shape or shape of the designated goods of this case ordinarily available in the trading society.

2) After the Intellectual Property Tribunal examines the trademark as 2013 Won4945 on March 3, 2014, the trademark of this case is a trademark indicating the shape of the goods in a common way in relation to the designated goods, and is merely a color used to give high-quality sense, and is written as stated in the three-dimensional trademark on March 3, 2014.

A person shall be appointed.

Therefore, this case's ruling was rendered to dismiss the plaintiff's above appeal on the ground that it falls under Article 6 (1) 3 of the Trademark Act.

[Ground of Recognition] A without dispute, entry of Gap evidence 1 through 4, and 15, and the purport of the pleading;

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

1) Article 6(1)3 of the Trademark Act provides that “A trademark consisting solely of a mark indicating the shape, etc. of the designated goods in a common way, based on the determination of whether the trademark has distinctiveness as a whole, as a trademark, is denied in cases of a trademark consisting solely of a mark indicating the shape, etc. of the designated goods in a common way. If a trademark consisting of not a trademark consisting solely of a mark indicating the shape, etc. of the designated goods in a common way, the distinctiveness of other goods is recognized as a whole. Determination of the distinctiveness

2) The applied trademark of this case is a three-dimensional shape, unique doping color, and distinctive character

A person shall be appointed.

The color is differentiated from the shape consisting of a shot, color, etc. commonly used in the medical parts for human body, etc., and the quality thereof is distinguishable from the product with metal or yellow material.If there is a shape that is used for the purpose of cutting such as the applied trademark in this case, consumers may easily distinguish the product of a company from the difference in the shape, color, and quality. Moreover, if there is a shape that is used for the purpose of cutting down such as the applied trademark in this case, consumers may easily distinguish the product

A person shall be appointed.

A trademark has its own ability to identify other products.

3) In the initial three-dimensional trademark, the Korean Intellectual Property Office established the examination criteria to determine the distinctiveness as a whole in the case of the initial three-dimensional trademark, and revised the examination criteria implemented on March 15, 2012, which was after the date of international registration of the instant applied trademark, to determine the distinctiveness solely based on the shape of the three-dimensional trademark.

However, the amended standard of review is inconsistent with the statutory text stipulating that “a trademark consisting solely of a mark indicating the shape, etc. of designated goods in a common way” under Article 6(1)3 of the Trademark Act is inconsistent with the statutory text stipulating that “a trademark consisting solely of a mark indicating the shape, etc. of designated goods in a common way.” In addition, the standard of review by the Korean Intellectual Property Office for convenience at the examination stage cannot be applied prior to the requirements prescribed by the Act

4) Article 2(1)1 (a) of the Trademark Act defines a mark as a mark under the Trademark Act that combines symbols, letters, diagrams, three-dimensional shapes, or the combination thereof or colors thereof. The combination of symbols, letters, etc. on three-dimensional shapes is consistent with the definition of marks under the Trademark Act. Three-dimensional trademarks are not necessarily a trademark consisting of three-dimensional shapes. A trademark consisting of three-dimensional shapes and letters must be entitled to trademark registration as a trademark. However, in the case of a color trademark, the Korean Intellectual Property Office determines that a trademark consisting of three-dimensional shapes should be registered by distinguishing between “three-dimensional shapes” and “three-dimensional shapes.” On the other hand, in the case of a three-dimensional trademark, it is inevitable to state “three-dimensional trademark” on the written application without having to file an application separately as above. In such a case, it is unreasonable to determine distinctiveness solely on the ground that the composition of the applied trademark in this case is “three-dimensional trademark” or “three-dimensional shapes,” without considering all other factors.

5) Article 52(1) of the Trademark Act provides that where a trademark combining three-dimensional shapes and letters is registered, whether the scope of protection is recognized as a whole as a combination of three-dimensional shapes and letters, and the three-dimensional shapes themselves do not recognize the scope of protection. If a three-dimensional shape itself lacks distinctiveness and a combination of distinctive letters is registered, a person against whom a right is asserted cannot recognize his/her right at the time of determining the scope of protection at the stage of the master design of a right, or a ground for limitation of effect under Article 51(1)2 and 2-2 of the Trademark Act may be asserted. In the event of a trademark combining three-dimensional shapes without distinctiveness, there is no reason to refuse the registration.

6) The trademark applied in this case cannot be deemed as a trademark inappropriate for a specific person to exclusively read in the public interest.

7) Therefore, the trademark applied in this case is not deemed a technical mark under Article 6(1)3 of the Trademark Act, inasmuch as the trademark applied in this case’s trademark is entirely identified as a whole. The trial decision of this case to be otherwise determined should be revoked in an unlawful manner.

B. Defendant’s assertion

1) In the case of a multi-level trademark, Article 8 of the criteria for trademark examination determines the appearance of the goods or packaging thereof only in three-dimensional shapes. In the event that the trademark of this case, which is the designated goods, is used in the "White joint and several liability", the three-dimensional shape of the applied trademark of this case, is recognized as either the shape of artificial high tolerance or the shape of artificial high tolerance, and thus, it is deemed that the shape of the designated goods is not distinctive. Even when considering colors and letters in the applied trademark of this case, the three-dimensional color of the applied trademark of this case is used as a part of the view of high tolerance, as well as the color used as a part of the view of high tolerance, which is used to see high-class consumers as well as the color of the applied trademark of this case.

A person shall be appointed.

As such, the trademark applied in this case cannot be seen as having distinctiveness in color and text.

2) In the event of a combination of letters, diagrams, etc. with a non-distinctive shape, deeming a non-distinctive shape as a three-dimensional trademark and allowing the registration of a three-dimensional shape without distinctiveness as a three-dimensional trademark does not coincide with the purpose of introducing a three-dimensional trademark to protect the source of goods, etc. The existence or validity of a three-dimensional shape without distinctiveness is anticipated by the registration of a three-dimensional shape without distinctiveness as a trademark. Consumers are likely to mislead and confuse the exclusive effect of a three-dimensional shape without distinctiveness as if the three-dimensional shape with no distinctive character exists. There is a problem that is contrary to the public interest, such as unfairly

3) Article 7(1)13 of the Trademark Act provides that “a trademark consisting solely of three-dimensional shapes, colors, the combination of colors, sound or odor essential to the function of a product that intends to obtain trademark registration or its packaging” shall be an absolute ground for registration. This also presents “the functionality of a product that cannot be registered as a trademark if the shape of the product solely results from the nature of the product itself.” Furthermore, a trademark is distinguishable from a typical trademark and a non-exclusive trademark. Since a non-exclusive trademark itself is recognized as distinctiveness only if it has distinctiveness or acquires distinctiveness by use, even if a trademark combines a three-dimensional trademark, consumers are aware of the function of the product rather than the function of the product, unless a three-dimensional trademark has distinctiveness or acquires distinctiveness by use. In addition, even if a character is a three-dimensional trademark whose distinctiveness is recognized as the origin of the product, it cannot be said that a three-dimensional trademark functions as a trademark regardless of the three-dimensional or non-dimensional shape and thus it is not a three-dimensional trademark.

4) Article 51 of the Trademark Act provides that even if a three-dimensional shape is applied for and registered as a three-dimensional trademark, the trademark right is not effective in the event that the three-dimensional shape does not have distinctiveness.

The purpose of this is to prevent competitors from supplying goods to which such function is applied or from restricting their freedom to adopt technical means to apply such function to their goods by excluding the case of goods shapes in which a three-dimensional trademark is engaged in technical action. Even if letters with no distinctive character are combined in a three-dimensional shape, the effect of a three-dimensional shape is limited without distinctive character, and thus, in light of the above provision, a three-dimensional trademark should be determined by the three-dimensional shape alone.

3. Whether it falls under Article 6 (1) 3 of the Trademark Act

A. Composition of the applied trademark of this case

A person shall be appointed.

is the same.

B. Introduction background of the three-dimensional trademark and provision of the Trademark Act

1) There was no provision on multi-level trademarks under the Trademark Act, which does not allow registration. However, in order to actively cope with the international trend that permits registration of multi-level trademarks, and to expand the applicant’s scope of choice of trademarks, the Trademark Act partially amended by Act No. 5355 on August 22, 1997, thereby allowing registration of trademarks in three-dimensional shapes. (1)

2) Trademark Act provisions

A) Article 2 (Definitions) (1) The terms used in this Act are defined as follows:

1. The term "trademark" means any of the following items (hereinafter referred to as "mark") which is used by a person who produces, processes, or sells goods as his/her business in order to distinguish goods related to his/her business from those of another person:

(a) Any sign, letter, figure, three-dimensional shape or any combination thereof, or a combination of these colors;

B) Article 6 (Requirements for Trademark Registration)

(1) Trademark registration may be obtained, except for the following trademarks:

3. Article 7 (Trademark consisting solely of a mark indicating in a common way the origin, quality, raw materials, efficacy, use, quantity, shape (including the shape of a package), price, production method, processing method, method of use, method of use or time of the goods);

(1) Notwithstanding Article 6, none of the following trademarks may be registered:

13. Trademarks consisting solely of three-dimensional shapes, colors, the combination of colors, sound or odor essential (in cases of service business, referring to cases essential to the use and purpose of the service business) to secure the functions of goods requiring trademark registration or their packaging;

D) Article 9 (Application for Trademark Registration)

(2) Where a trademark for which trademark registration is being sought is comprised of three-dimensional shapes under Article 2 (1) 1 (a) or marks falling under Article 2 (1) 1 (b), the purport and explanation (excluding explanation in cases of three-dimensional shapes) of such trademark shall be inserted in an application, as prescribed by Ordinance of the Ministry of Trade, Industry

(v) Article 51 (Scope of Not Effect of Trademark Right);

(1) No trademark right (excluding the right to a collective mark with geographical indication) shall have the effect in any of the following cases:

2. A trademark with a shape identical or similar to a three-dimensional shape of a registered trademark used for goods identical or similar to the designated goods of the registered trademark, in cases where it is impossible to distinguish the three-dimensional shape of the registered trademark with respect to which the goods related to the person's business are displayed in a common way, in terms of the ordinary name, origin, quality, raw materials, efficacy, use, quantity, method of use and time of production, price or production method;

(f) Article 52 (Scope of Protection of Registered Trademarks, etc.)

(1) The scope of protection of a registered trademark shall be determined by a trademark recorded in an application for trademark registration (in cases of a trademark falling under Article 2 (1) 1 (c), visual expression). The standards for determining whether a trademark combining three-dimensional shapes and letters has distinctiveness shall be determined.

A) Article 2(1)1(a) of the Trademark Act provides that “a trademark consisting of a sign, letter, figure, three-dimensional shape or a combination of these shapes or of these colors” as “a mark” and recognizes a mark consisting of symbols, letters, and diagrams on three-dimensional shapes as well as on three-dimensional shapes.”

B) Article 6(1)3 of the Trademark Act provides that a trademark consisting solely of a mark indicating a shape in a common way may not be registered as a trademark. Article 7(1)13 of the same Act provides that a trademark consisting solely of three-dimensional shapes that are essential to secure the function of goods or their packaging shall not be registered. However, the foregoing provision does not provide that a trademark consisting of “a mark indicating a shape in a common way” or “three-dimensional shapes that are essential to secure the function of the packaging of goods or their packaging” cannot be registered. In addition, the Trademark Act does not provide that a trademark consisting of two-dimensional shapes alone from a trademark consisting of three-dimensional shapes, symbols, letters, and diagrams, to determine its distinctiveness. On the ground that the three-dimensional shape includes the three-dimensional shape, there is no provision that ought to be determined based solely on the three-dimensional shape, disregarding the combined sign, character, or figure and disregarding the shape.

C) In relation to trademark registration, Article 6(1) of the Trademark Act provides that trademark registration may be obtained if the trademark does not fall under a trademark without distinctiveness under any of the subparagraphs of the same Article. Article 7(1) of the same Act provides that trademark registration may be obtained if the trademark is not a trademark with no distinguishability under the same Article. Unless there exist grounds for limiting registration, trademark registration is not denied, and the applicant’s free choice of trademark ought to be recognized, unless there exist grounds for limiting registration. There is no reason to view that trademark is a

D) The scope of protection of a registered trademark is determined based on a trademark written in an application. Thus, a trademark combining three-dimensional shapes, symbols, letters, etc. cannot be deemed to have been determined by the entire scope of protection and by three-dimensional shapes.

E) The application for trademark registration of this case is indicated as “three-dimensional trademark”. However, the Korean Intellectual Property Office classifys the trademark that combines only three-dimensional shapes with the trademark that combines three-dimensional shapes, symbols, letters, etc. according to the procedures for the application for trademark registration as “three-dimensional trademark” without distinguishing them. Thus, a trademark that combines three-dimensional shapes, symbols, letters, etc. can only be applied for by stating it as “three-dimensional trademark.” Therefore, the applicant cannot be deemed to have filed only three-dimensional shapes on the ground that the application for trademark registration was written as a three

F) In a trademark consisting of three-dimensional shapes, symbols, letters, etc., where the three-dimensional shape has no distinctiveness and has distinctiveness in letters, etc., a three-dimensional shape without distinctiveness cannot function as an indication of origin. As such, there is no possibility of confusion as to the origin between similar three-dimensional shapes of goods. Consumers are likely to recognize that it is difficult for them to recognize whose business the goods are related from the text, etc. with distinctiveness.

In addition, permitting the registration of such a trademark is not contrary to the purpose of the three-dimensional trademark system in order to actively cope with the international trend that permits the registration of a three-dimensional trademark and to expand the applicant’s choice range of trademarks.

In addition, Article 51 (1) of the Trademark Act limits the exercise of the right of prohibition unfairly by prescribing that the use of a trademark in the same or similar form does not affect the effect of the trademark right if the three-dimensional registered trademark has no distinctiveness.

Therefore, granting a trademark registration cannot be deemed as going against the public interest or going against the purpose of the three-dimensional trademark system.

G) The issue of whether the appearance of the goods or packaging indicates the general form of the goods is indicated in Article 8 of the Trademark Examination Criteria by the Korean Intellectual Property Office is a "three-dimensional form" but the trademark examination criteria are merely an internal examination criteria determined by the Korean Intellectual Property Office for the convenience of trademark examination.

H) Therefore, a trademark consisting of three-dimensional shapes, symbols, letters, etc. ought to be determined not by the three-dimensional shape alone, but by the combination of two-dimensional shapes, as a whole, the existence of distinctiveness ought to be determined. A trademark that is recognizable as being used as an identification mark indicating the origin of the goods by combining distinctive signs, letters, etc. with a three-dimensional shape without distinctiveness should be recognized as having distinctiveness.

D. Whether the applied trademark of this case is distinctive

The trademark applied in this case is a combination of three-dimensional shapes and letters, and it shall be judged whether the trademark applied in this case is distinctive as a whole. Thus, in accordance with such legal principles, it is deemed that the trademark applied in this case has distinctiveness.

Of the applied trademarks in this case, the three-dimensional shapes consisting of a half-dimensional shape in which the dunes are formed. With respect to “White joint and several balls”, which are the designated goods, consumers recognize the shape of artificial high tolerance. As such, consumers cannot be deemed to have granted distinctiveness by the above three-dimensional shape as a mark indicating the shape of the designated goods in a common way (no dispute exists between the parties regarding this point). Moreover, the applied trademark in this case is expressed in doping with the entire three-dimensional shape. Doping color is ordinarily visible to high-quality and high-quality and high-quality and high-quality and high-quality and high-level and high-level and high-level, and thus, it cannot be deemed that the distinctiveness is granted by the above color.

A person shall be appointed.

Unless ‘LOX', unlike the size and body size of the language created by combining ‘LOX', ‘BOOX', and ‘delta', ‘delta', and ‘delta' immediately below the term ‘delta'. ‘BIOX delta', which is a part of the text, have no technical meaning indicating the nature, etc. in relation to the designated product, and the character itself is recognized as distinctive character. In addition, if the trademark sample (Evidence No. 15) submitted at the time of application is located among marks, and it can be easily recognized by consumers when considering the importance of the entire mark. Even if the above text is presented in the real size (Ga4.5 cm, vertical length.3 5 mm) and the shape of the trademark, there is no difficulty in recognizing the relevant character. Moreover, it cannot be seen that the trademark is recognizable by the description or shape of the product added to the three-dimensional shape.

Therefore, the trademark of this case is recognized as a distinctive character as a whole.

E. Sub-committee

Ultimately, the applied trademark of this case cannot be seen as a mark indicating the shape of the designated goods in a common way with respect to the designated goods, and it does not fall under Article 6 (1) 3 of the Trademark Act.

4. Conclusion

If so, the decision of this case is unlawful and the plaintiff's claim seeking revocation is reasonable, and it is so decided as per Disposition by the assent of all participating Justices.