In a case where the examiner of the Korean Intellectual Property Office decided to reject the registration of the applied service mark “ ” on the ground that it constitutes Article 6(1)7 of the Trademark Act, etc., the case holding that the judgment below erred by misapprehending the legal principles on the ground that the above applied service mark constitutes a service mark with which it is impossible to distinguish consumers from whom they indicate services related to a person’s business, on the ground that the service mark as a whole constitutes “service mark with which it is impossible to distinguish consumers from whom they indicate services related to a person’s business.”

Articles 2(3) and 6(1)7 of the Trademark Act

White Co., Ltd. (Law Firm Sejong, Attorneys Cho Yong-ho et al., Counsel for the defendant-appellant)

The Commissioner of the Korean Intellectual Property Office

Patent Court Decision 2013Heo3999 Decided August 23, 2013

The judgment below is reversed, and the case is remanded to the Patent Court.

The grounds of appeal are examined.

1. Article 6(1)7 of the Trademark Act provides, one of the cases where a trademark cannot be registered, “a trademark other than those as referred to in subparagraphs 1 through 6, which does not enable consumers to distinguish goods related to 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, the source between the goods of the trademark and the goods of another person cannot be registered. Whether a trademark without distinctiveness is 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. If it is difficult to recognize distinctiveness of the goods of another person under the social norms, or it is deemed inappropriate to allow a specific person to monopoly the trademark, such trademark is not distinctive. This legal doctrine likewise applies to a service mark under Article 2(3) of the Trademark Act (see, e.g., Supreme Court Decision 2012Hu2951, Dec. 27, 2012).

2. We examine the above legal principles and records.

A person shall be appointed.

Of the pending service marks (application number omitted), the Korean language “bro” in the part of the pending service marks (application number omitted) is recognized to refer to general consumers as the “fluoring place,” and in light of the fact that the part of the English language “” is written in Korean “bro” at the right side along with the level of English distribution in the Republic of Korea, general consumers appear to be aware of it as the “brodity” used when people sleep. Therefore, the above part of the pending service marks (application number omitted) falls under the designated service business, as a whole, the designated service business consisting of “blodity” sales agent, etc., “blodity sales brokerage business using the Internet, etc.,” “blodity sales agent, etc.,” “blodity sales agent, etc.,” “blodity sales agent, etc. using the Internet, etc.,” “blodity sales agent, etc.,” “blodity sales agent, etc.,” this part of this case’s service business using the Internet, “distinctive, etc.,” and/re-related with the instant goods.

Nevertheless, the court below recognized that the applied service mark of this case is distinctive with respect to the designated service of this case. The court below erred by misapprehending the legal principles on the distinctiveness of the service mark, which affected the conclusion of the judgment. The ground of appeal pointing this out has merit.

3. Therefore, without examining the remaining grounds of appeal, the judgment of the court below is reversed, and the case is remanded to the court below for a new trial and determination. It is so decided as per Disposition by the assent of all participating Justices on the bench.

Justices Lee In-bok (Presiding Justice)