Requirements to be protected as "any other mark indicating other person's goods" provided for in Article 2 subparagraph 1 (a) of the Unfair Competition Prevention and Trade Secret Protection Act.

The form of a product shall be allowed to be reproduced and produced in principle unless it is protected by a design right or patent right. However, in exceptional cases where the form of a product obtains the function of indicating place of the product and acquires it up to its well-knownness, it shall be protected under the Unfair Competition Prevention and Trade Secret Protection Act because it falls under the "mark indicating other person's goods" under Article 2 subparagraph 1 (a) of the Unfair Competition Prevention and Trade Secret Protection Act. In addition, in order to obtain well-knownness with the function of indicating place of origin, the form of the product must have a unique design character that strongly appeals the consumer's sense compared with other similar goods. In addition, the form of the product must have a distinctive character to the extent that ordinary consumers can recognize that the product is the product of a specific business entity for a long time. Furthermore, the type of the product in question is used continuously, actively, and exclusively as the product of a specific business entity for a long time, or a strong publicity and advertisement is made within a short time or in a strong manner.

Article 2 subparagraph 1 (a) of the Unfair Competition Prevention and Trade Secret Protection Act

Supreme Court Decision 2001Da44925 Delivered on October 12, 2001 (Gong2001Ha, 2461) Supreme Court Decision 2002Da11410 Delivered on June 14, 2002

Defendant

Defendant

Seoul Central District Court Decision 2005No1209 Decided February 3, 2006

The judgment below is reversed, and the case is remanded to Seoul Central District Court Panel Division.

1. The form of a product is allowed to be reproduced and produced in principle unless it is protected by a design right or patent right. However, in exceptional cases where the form of a product obtains the function of indicating the source of the product and acquires it up to its well-knownness, it shall be protected under the Unfair Competition Prevention and Trade Secret Protection Act (hereinafter “Unfair Competition Prevention Act”) by falling under “any other mark indicating that it is another person’s product” as provided in Article 2 subparag. 1(a) of the same Act (see Supreme Court Decisions 2001Da44925, Oct. 12, 2001; 2002Da11410, Jun. 14, 2002, etc.). In order to obtain well-knownness with the function of indicating the source of the product, the form of the product must have unique design features that strongly appeal to the consumer’s sense of origin compared with other similar products, and the product should have specific types and characteristics of the product in question to the extent that it can be easily recognizable to the general consumers or its exclusive use of the product.

2. According to the evidence employed by the court below, a paper pen direction-setting system (hereinafter “instant paper pen direction-setting system”) in which the Defendant imitated the victim non-indicted 1’s operation by using non-indicted 1 club is being produced and sold is containing inner plastic bags in a paper-based rectangular bag and causing to fluor in a paper-based square bag (which has a unique nature that contains long fluority and fluoring down fluor with long fluor). While the Defendant’s use of the above paper-based plastic bags, the paper-based paper-setting system was printed on the front side of the above direction-setting system, such as the name of plants extracted from raw materials or phrases explaining the quality of the paper-based products, the paper-based content of the instant paper-based envelope was continuously printed on the front or back side of the instant paper-based plastic bags, and the content of the instant paper-based product was produced and sold in a direction-setting direction-setting for consumers to use the paper-based product.

According to these facts, it is deemed that the form of a direct square bag shape is in the form of a paper pen shape. This is identical to the basic form of a paper pen pattern manufactured and sold in Korea and abroad, and even though there is a paper bag containing a paper paper content that has inflicted a volume on the outer envelope, it is hard to see that it is in the form clearly distinguishable from that of another general plastic bag form, so it is difficult to see that the paper pen direction system of the club is in the form clearly distinguishable from that of another general plastic bag form. In addition, the reason why general consumers choose the paper pen system of this case of the club, which is superior to the design of the product, and the reason why the paper pen system of this case of the tobacco club is in the same way as that of the product's product's product's product's product's product's product's product's product's product's product's product's product's product's product's product's product's first direction-setting direction-setting form or CRNB's product's product's product'.

Nevertheless, the court below determined that the product itself constitutes a product mark under the Unfair Competition Prevention Act on the ground that the instant paper direction-setting system of the club was first developed in Korea and takes the position in the market. Thus, the court below erred by misapprehending the legal principles on the "mark indicating other person's goods" under Article 2 subparagraph 1 (a) of the Unfair Competition Prevention Act, which affected the conclusion of the judgment. The ground of appeal pointing this out is with merit.

3. Therefore, the lower judgment is reversed, and the case is remanded to the lower court for further proceedings consistent with this Opinion. It is so decided as per Disposition by the assent of all participating Justices on the bench.

Justices Park Si-hwan (Presiding Justice)