[1] Meaning of “a trademark indicating, in a common way, the ordinary name of goods” under Article 51(1)2 of the Trademark Act

[2] In a case where Gap corporation filed a claim for the confirmation of the scope of right against Eul corporation to confirm the scope of right as it does not fall under the scope of right of the registered trademark " " "," the designated goods of which are "red red ginseng (products made by extracting red ginseng as raw materials)" with "red red ginseng (products made by extracting red ginseng as raw materials)" and "red red ginseng, processed red ginseng, and red ginseng processed ginseng," the case affirming the judgment below which held that the challenged mark falls under Article 51 (1) 2 of the Trademark Act and does not fall under the scope of right without any need to prepare the same or similar trademark as the registered trademark

[1] Article 51 (1) 2 of the Trademark Act / [2] Article 51 (1) 2 of the Trademark Act

[1] Supreme Court Decision 2008Hu4585 Decided May 13, 2010 (Gong2010Sang, 1165), Supreme Court Decision 2009Hu3572 Decided May 26, 201 (Gong2011Ha, 1321) (Gong201Ha, 1321)

Seoul Hong Ginseng Co., Ltd. (Patent Dan Patent & Patent Attorney Gu-Appellee et al., Counsel for the defendant-appellant)

Korea Ginseng Corporation (U.S. Patent Firm and one other, Counsel for the defendant-appellant)

Patent Court Decision 2013Heo5360 decided November 29, 2013

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

The grounds of appeal are examined (to the extent of supplement in case of supplemental appellate briefs not timely filed).

1. Article 51(1)2 of the Trademark Act “trademark indicating in a common way the ordinary name of goods” refers to not only the partners but also the general name of the goods that is used by ordinary consumers in actual transaction (see Supreme Court Decision 2004Hu2246, Apr. 14, 2006, etc.). “A trademark indicating the quality, efficacy, efficacy, use, etc. of goods in a common way” under the same subparagraph refers to a trademark indicating the quality, efficacy, purpose, etc. of goods in a common way, which can be sensed by ordinary consumers as having indicated their quality, efficacy, use, etc. when considering the goods used by them. Whether it falls under such a trademark ought to be objectively determined by taking into account the concept holding the trademark, relation with the goods used, the situation of the trade society, etc. (see, e.g., Supreme Court Decision 2008Hu4585, May 13, 2010).

A person shall be appointed.

2. According to the reasoning of the judgment below, the challenged mark with the used goods as "red red ginseng (products made by extracting them with red ginseng as raw material)" is a mark in the form in which white letters are written in a rectangular figure, such as the right color, and in detail, the word "red red ginseng G" is written in the direction of the vertical length in a ushegle. In light of the above, the word "red red ginseng G" is written in the direction of the vertical length in a ushegle, and is marked as a mark which is written in the left side and right side of the above word "G" with a remarkably small size compared thereto.

However, in light of the records, the term “red ginseng” constitutes a common name of a product using red ginseng, and the term “fluor” constitutes a technical mark that can be perceived by ordinary consumers as indicating the quality, efficacy, and use, etc. of a product using the English language, which is the English language language with the purport of “highness and high-class,” and thus, constitutes a technical mark that can be perceived as indicating the quality, efficacy, and use, etc. of a product using the trademark. Moreover, the addition of a simple and mixed mark, which is merely a simple and sealed letter written Alphaba, without any particular distinctive character, does not create a new distinctive character, and furthermore, it cannot be said that the overall composition of the challenged mark or the letter, etc. of the letter, etc. subject to confirmation, is also intended to have a new distinctive character, by offsetting or absorbing the

Therefore, the challenged mark falls under the trademark stipulated under Article 51 (1) 2 of the Trademark Act, and it does not fall under the scope of the right without any need to prepare for whether the designated goods are identical or similar to the registered trademark "(registration number omitted) of this case using functional health foods, red ginseng, processed red ginseng and red ginseng, etc. using red ginseng as the main ingredient."

The judgment below to the same purport is just, and contrary to the allegations in the grounds of appeal, there were no errors by misapprehending the legal principles on Article 51 (1) 2 of the Trademark Act.

3. 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 on the bench.

Justices Shin Young-chul (Presiding Justice)