[1] Method of determining whether a service mark is eligible for registration, and whether the registration examples of other service marks can serve as a basis for the registration of a specific service mark (negative)

[2] The case affirming the judgment of the court below that the registered service mark "SPED 011" composed of the combination of the part "SPED" and the part "011" is not recognized as distinctive in relation to "radio call service business, telegraph communications business, telecom communication business, facsimile communications business, remote screen communications business, computer communications business, communications business, and public enterprise telecommunications network service business" in its designated service

[3] The scope of designated service business eligible for registration of a service mark where a mark deemed to have no special distinction has acquired distinctiveness by use

[4] Relation to Article 6(1)7 of the Trademark Act and Article 6(2) of the same Act

[5] The case affirming the judgment of the court below that the registered service mark "SPE 011" is not recognized as distinctive in its composition, but it is recognized as a distinctive acquisition by use in relation to the telephone communications business and radio communications business among the designated service

[6] The case holding that even if the registered service mark "SPE 011 is recognized as a distinctive acquisition from the relationship between the telephone communications business and the wireless communications business, the registration service mark "SPED" and the registered service mark in the form of "011" are recognized as a combination of the registered service mark in the form of "SPED" and "011", and that the part of "SPED" and "011", which are its constituent elements, are not recognized as a distinctive acquisition by independent use, cannot be deemed as a result of recognizing the exclusive right of the registered service mark holder and prohibiting others from freely using.

[7] The case affirming the judgment of the court below holding that the registered service mark "SPE 011" cannot be deemed as a seal or mark used by the state for supervision or certification when used for telephone communications business or radio communications business during the designated service business, and the application, registration, or use of the above registered service mark is likely to disrupt public order or good customs, or it is not likely to mislead consumers as to the quality of the designated service business by deceiving consumers so that the communication network identification number can be recognized as a specific person's private property

[1] Whether a service mark is eligible for registration should be determined individually in relation to the designated service business, and the registration examples of other service marks cannot be grounds for the registration of a specific service mark.

[2] The case affirming the judgment of the court below that the registered service mark "SPED 011" composed of the combination of the part "SPED" and the part "011" is not recognized as distinctive in relation to "radio call service business, telegraph communications business, telecom communication business, facsimile communications business, remote screen communications business, computer communications business, communications business, and public enterprise telecommunications network service business" in its designated service

[3] Even if, as a result of the use of a mark deemed to have no special distinction, consumers or traders have recognized as a distinctive mark indicating the source of service business and thus, it is actually limited to the service business in which the service mark is actually used, and thus, the service mark can only be registered, and any similar service business cannot be registered.

[4] Article 6 (1) 7 of the Trademark Act means that even a service mark that does not fall under any of the subparagraphs 1 through 6 of Article 6 (1) of the Trademark Act means that a trademark with no special distinction cannot be registered. Thus, even if a mark appears to have no special distinction when objectively seen only its concept or the relationship of designated service business, etc., without considering its use condition, if the applicant's use of the mark leads to the recognition of the mark as indicating his/her service business among consumers or traders, barring special circumstances, that trademark does not fall under a service mark with no special distinction under Article 6 (1) 7 of the Trademark Act, and as a result, it does not change solely on the ground that Article 6 (2) of the Trademark Act does not include a service mark.

[5] The case affirming the judgment of the court below that the registered service mark "SPE 011" is not recognized as distinctive in its composition, but it is recognized as a distinctive acquisition by use in relation to the telephone communications business and radio communications business among the designated service

[6] The case holding that even if the registered service mark "SPE 011 is recognized as a distinctive acquisition from the relationship between the telephone communications business and the wireless communications business during the designated service, it is recognized as a distinctive acquisition as a whole with respect to the entire registered service mark in the form of combination with the "SPED" and the "011" part, and it is not recognized as a distinctive acquisition with respect to the "SPED" and the "011" part, which are its constituent elements, as it is not recognized as a distinctive acquisition by independent use, it cannot be deemed as a result of recognizing the exclusive right of the registered service mark holder and prohibiting others from using freely.

[7] The case affirming the judgment of the court below that the registered service mark "SPE 011" cannot be deemed as a seal or mark used by the state for supervision or certification when it is used for telephone communications business or radio communications business during the designated service business, and the application, registration, or use of the above registered service mark is likely to disrupt public order or good customs, or it is not likely to mislead consumers as to the quality of the designated service business by deceiving consumers so that the communication network identification number can be recognized as a specific person's private property

[1] Article 6 (1) of the Trademark Act / [2] Article 6 (1) 7 of the Trademark Act / [3] Article 6 (2) of the Trademark Act / [4] Article 6 (1) 7 and (2) of the Trademark Act / [5] Article 6 (1) 7 and (2) of the Trademark Act / [6] Article 6 (1) 7 and (2) of the Trademark Act / [7] Article 7 (1) 1, 4 and 11 of the Trademark Act

[1] Supreme Court Decision 99Hu529 delivered on December 26, 1997 (Gong1998Sang, 414), Supreme Court Decision 99Hu529 delivered on July 9, 199 (Gong1999Ha, 1631), Supreme Court Decision 97Hu2453 delivered on October 26, 199 (Gong199Ha, 2426), Supreme Court Decision 99Hu2907 delivered on April 21, 200 (Gong200Sang, 1300), Supreme Court Decision 200Hu1436 delivered on March 23, 201 (Gong201Sang, 1049) / [3] Supreme Court Decision 200Hu3636 delivered on March 23, 2006 (Gong2001Sang, 207Hu36364, March 26, 2006]

KS Telecom Co., Ltd. (Law Firm Southern River, Attorneys Lee Dong-ho et al., Counsel for the plaintiff-appellant)

[Defendant-Appellant] Ktwitel Co., Ltd. (Law Firm Gyeongpyeong, Attorneys Gangnam-gu et al., Counsel for defendant-appellant)

Patent Court Decision 2004Heo3317 delivered on December 24, 2004

All appeals are dismissed. The costs of appeal are assessed against each party.

We examine the grounds of appeal.

1. Judgment on the Plaintiff’s grounds of appeal

A. As to the distinctiveness of the registered service mark of this case

According to the reasoning of the judgment below, the court below determined that the registered service mark (registration number omitted) of this case consisting of “SPED 01” refers to “radio call service business, telegram service business, telecom communication business, telecom communication business, facsimile communications business, telescil communication business, computer network business, telecommunications business, telecommunications business, and public enterprise telecommunications network service business” (hereinafter “radio call service business, etc.”) among the designated service business, and “SPED” refers to the nature and quality of the service in terms of the transmission speed and the connection speed of the telecommunications, and thus, it is difficult to view the “011” portion as the telecommunications network identification number of the telecommunications service and as the mark identifying the service, and thus, it cannot be recognized as a distinctive character because it cannot be deemed that a new concept is formed by combining the aforementioned non-distinctive parts.

In light of the records, among the registered service marks of this case, the “SPE” portion constitutes a technical mark directly indicating the excellence of quality or efficacy in relation to the radio call service business, etc., and thus, its distinctiveness cannot be recognized. The “011” portion is the same as the network identification number of a mobile phone commonly used or largely used in daily life, and thus, it is difficult to deem that the distinctiveness of other service business is recognized. In addition, in light of the relevant provisions such as Articles 1 and 36 of the former Telecommunications Business Act (amended by Act No. 5564 of Sep. 17, 1998), Articles 1, 8, and 19 through 22 of the former Rules on the Management of Telecommunications Numbers (Notice No. 198-105 of the Information and Communications Network Notice) and the aforementioned new concept of “the aforementioned mobile service mark’s unique identification number can not be seen as being obtained as a new concept of mobile service mark, which is an exclusive network-related part of the registered service mark.”

In addition, whether a service mark is eligible for registration shall be determined individually in relation to the designated service business (see Supreme Court Decision 2000Hu1436, Mar. 23, 2001). The registration examples of other service marks cannot be the basis for the registration of a specific service mark (see Supreme Court Decision 97Hu1269, Dec. 26, 1997; Supreme Court Decision 97Hu2453, Oct. 26, 199); and the fact that the service marks consisting of the identification number of the communications network are registered in majority in Korea and abroad cannot be viewed as having distinctiveness in relation to the radio call service business, etc.

Therefore, it is reasonable that the court below determined that the registered service mark of this case is not distinctive in relation to the radio call service business, etc., and there are no errors in the misapprehension of legal principles as to the distinctiveness of the service mark, the violation of the rules of evidence, the incomplete hearing and omission of judgment, etc.

B. As to the acquisition of distinctiveness by the use of the registered service mark of this case

Even if, as a result of the use of a mark deemed to have no special distinction, consumers or traders recognize the distinctiveness as an identification mark indicating the source of service business and thus, the acquisition of distinctiveness by use is actually limited to the service business in which the service mark is actually used and thus, the service mark can only be registered, and any similar service business cannot be registered.

Examining the reasoning of the judgment below in light of the above legal principles and records, the court below is just in holding that the registered service mark of this case cannot be deemed to have been perceived as an identification mark indicating the source of the plaintiff's service business between ordinary consumers in relation to the radio call service business, etc.

2. Judgment on the Defendant’s grounds of appeal

A. As to the acquisition of distinctiveness by the use of the registered service mark of this case

Article 6(1)7 of the Trademark Act means that even a service mark that does not fall under any of subparagraphs 1 through 6 of Article 6(1) of the Trademark Act means that a trademark with no special distinction cannot be registered. Thus, even if a mark appears to have no special distinction when objectively seen only its concept or the relationship with designated service business without considering its use condition, if the applicant’s use of the mark leads to the applicant’s recognition of the mark as indicating his service business among consumers or traders, it shall not constitute a service mark with no special distinction under Article 6(1)7 of the Trademark Act, barring any special circumstances. As a result, it does not interfere with obtaining the registration of a service mark, and it does not change merely because it does not include a service mark under Article 6(1)7 of the Trademark Act (see Supreme Court Decision 201Hu2863, Jul. 11, 2003).

Examining the reasoning of the judgment below in light of the above legal principles and the records, the court below acknowledged facts as stated in its reasoning based on the adopted evidence, and held that the registered service mark of this case is not recognized as distinctive in its composition, but it is just in holding that the registered service mark of this case acquired distinctiveness by the plaintiff's use as an identification mark indicating the source of the plaintiff's service by the plaintiff's use in relation to the designated service (hereinafter "tel communications business, etc."). There is no error in the misapprehension of legal principles as to the acquisition of distinctiveness by the use of the service mark, violation of the rules of evidence, or incomplete trial, as alleged in the grounds

Meanwhile, even if the registered service mark of this case is recognized as a distinctive acquisition in relation to the use of telephone communications business, etc., it is recognized as a distinctive acquisition as a whole with regard to the registered service mark of this case in the form of combination of the English language “SPED” and the Arabic number “011” part, and it is not recognized as a distinctive acquisition by independent use with regard to the “SPED” part or “011” part, which is its constituent element, and thus, it cannot be deemed as a result of recognizing the Plaintiff’s exclusive right to use the “011” portion, which is a communications network identification number, by recognizing the distinctiveness acquisition by use as above. There is no ground for appeal on this point.

B. As to Article 7(1)1, 4, and 11 of the Trademark Act

The court below held that if the registered service mark of this case is used for telephone communications business, etc., it cannot be deemed as a seal or mark for supervision or certification used by the public agencies of the State, and that the application, registration, or use of the registered service mark of this case is likely to disrupt public order or good customs by nullifying national policy and information and communication order, or that it cannot be deemed that there is a concern for misleading consumers as to the quality of designated service business by deceiving consumers so that the information and communication network identification number can be perceived as a specific person's private property. In light of the relevant statutes and records, the above judgment of the court below is just and acceptable, and there is no error in the misapprehension of legal principles as to Article 7 (1) 1, 4, and 11 of the Trademark Act, as otherwise alleged in the ground of appeal.

3. Conclusion

Therefore, all appeals are dismissed, and the costs of appeal are assessed against each party. It is so decided as per Disposition by the assent of all participating Justices on the bench.

Justices Kim Young-ran (Presiding Justice)