Whether the effect of trademark rights (affirmative) and whether the same legal doctrine applies to service mark rights in cases where a company, which is a corporation, has indicated its trade name and has omitted a part of the company’s type, and has indicated its abbreviation in a common way (affirmative)

Articles 51(1)1, 66(1)1, and 93 of the Trademark Act

[Plaintiff-Appellant-Appellee] Plaintiff 1 and 1 other (Law Firm Han, Attorneys Lee Jong-soo et al., Counsel for plaintiff-appellant-appellee)

Defendant

Prosecutor

Attorney Kim Yong-ho

Seoul Western District Court Decision 2012No904 decided October 23, 2012

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

The grounds of appeal are examined.

1. The main text of Article 51(1)1 of the Trademark Act provides that trademark rights are not effective in relation to a trademark indicating one’s trade name or a well-known abbreviation thereof in a common way. Here, “the trade name shall be indicated in a common way.” The term “the trade name” is premised on the fact that a general consumer can recognize that it is a trade name. As such, if a corporate company omits a part of its trade name while indicating its trade name, unless it is widely known, it cannot be deemed that a general consumer can recognize the company’s trade name in a common way, and it cannot be deemed that the company’s trade name is ordinarily used, and it is merely an abbreviation of the trade name. Such an abbreviation indication extends to the trademark right even if it is indicated in a common way, unless it is widely known (see Supreme Court Decisions 200Hu3708, Mar. 23, 200; 205Do5385, Oct. 14, 2005).

A person shall be appointed.

2. According to the evidence duly admitted by the court below, an ombudsman, the representative director of which is the representative director, has the right to use the designated service business as “electronic application apparatus and computer software retail business” and has the service mark right (hereinafter “instant service mark right”) concerning the service mark (registration number omitted) composed of the right, such as the right. The defendant omitted the part of the “stock company”, which is the kind of company’s name, from the “stock company ombudsman”, the name of the company that is a representative director (hereinafter “Defendant company”), and used the mark, etc. consisting of the two parts on the right side (hereinafter “Defendant mark”), such as “computer and peripheral devices wholesale business, electronic commerce business,” etc.

Examining in light of the aforementioned legal principles, Defendant mark merely indicates the abbreviation of Defendant company’s trade name, and it cannot be viewed as expressing its trade name itself. Thus, even if it is indicated in a common way as long as its trade name is not well-known, the effect of the instant service mark right extends to the instant service mark right.

Nevertheless, under the premise that the Defendant mark constitutes an indication of the Defendant company’s trade name, the lower court acquitted the Defendant on the ground that the mark constitutes a mark indicating its trade name in a common way without examining further whether its abbreviation is well-known. In so doing, the lower court erred by misapprehending the legal doctrine on Article 51(1)1 of the Trademark Act, thereby adversely affecting the conclusion of the judgment. The grounds of appeal pointing this out are 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 Kim So-young (Presiding Justice)