[1] Criteria for determining whether a mark indicates quality, efficacy, use, etc. in a common way, and whether the above legal principles apply to a service mark (affirmative)

[2] The case holding that since the challenged mark " " constitutes a technical mark indicating the quality, use, etc. of "security service," which is a service business, in a common way, and its validity does not extend to the right of registered service mark

[1] Articles 2(3) and 51(1)2 of the Trademark Act / [2] Articles 2(3) and 51(1)2 of the Trademark Act

[1] Supreme Court Decision 2007Da11958 Decided October 11, 2007

Plaintiff (Patent Attorney Lee Jong-chul, Counsel for the plaintiff-appellant)

E.C. C. C.C. (Patent Attorney Lee Jae-jin, Counsel for the defendant-appellant)

Patent Court Decision 2010Heo4748 Decided October 15, 2010

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

The grounds of appeal are examined.

A mark indicating the quality, efficacy, use, etc. of goods identical with or similar to the designated goods of the registered trademark in a common way cannot be deemed to have an effect on trademark rights (see Article 51(1)2 of the Trademark Act). Whether a mark is indicated in a common way as to the quality, efficacy, and use of goods shall be determined objectively by taking into account the concept possessed by it, the relationship with the designated goods, the circumstances of the transaction society, etc. The legal principle applies likewise to service marks under Article 2(3) of the Trademark Act (see Supreme Court Decision 2007Da11958, Oct. 11, 2007).

We examine in light of the above legal principles and records.

The challenged mark “S” consists of not only two times the COP but also red lines such as “S” only in the part of “S”. Unlike S, “COP” parts are somewhat gypted, and it is difficult to see that there is a new concept due to the combination, it is common sense that ordinary consumers recognize the challenged mark by dividing it into “S” and “COP.”

However, in light of the English language with the purport of “COP”, “police officers,” and “scambling a criminal,” etc. of the Republic of Korea’s English dissemination level and use status, etc., the “security service business”, which is the use service business of the challenged mark, has a sense of quality, use, etc. to general consumers in Korea, and “S” is not recognized as a simple and scambling mark as a simple and scambling word, and it is difficult to see that the concept of the text portion is offset to the degree of recognizing a separate distinctive character that absorbs the whole composition or characters of the challenged mark, and it is difficult to see that the challenged mark as a whole constitutes a technical mark indicating the quality, use, etc. of the service business in a common way, and thus it does not affect the right to use the registered service mark of this case.

Nevertheless, the lower court determined that the challenged mark is not a technical mark on the premise that the challenged mark consists of four letters with simple English characters and is recognized as a new sculpture. The lower court erred by misapprehending the legal doctrine on determining whether the challenged mark falls under Article 51(1)2 of the Trademark Act, thereby adversely affecting the conclusion of the judgment. The ground of appeal assigning this error is with merit.

Therefore, 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.

Justices Ahn Dai-hee (Presiding Justice)