A. Criteria for determining whether the trademark is used to indicate the quality, use, etc. of the goods under Article 8 (1) 3 of the former Trademark Act (amended by Act No. 4210 of Jan. 13, 1990)

B. Whether a trademark applied for registration is a trademark indicating only the quality of a good if it is used in books, language, teaching materials, etc. as designated goods (negative)

A. The purport of Article 8 (1) 3 of the former Trademark Act (amended by Act No. 4210 of Jan. 13, 1990) provides that trademark registration shall not be granted for a trademark consisting solely of a mark indicating the origin, quality, etc. of goods under Article 8 (1) 3 of the same Act in a common way. The public interest request that no exclusive use of such trademark can be granted to a specific person only, and where such trademark is used, it is difficult to distinguish the trademark in relation to the same goods of another person because of the lack of distinguishability from other goods. Thus, in determining whether a trademark is used to indicate the quality, use, etc. of the goods, it shall be in accordance with the issue of whether the trademark is recognized as having a special distinction as a trademark as a trademark for the goods in question, and even if the trademark was actually made through an expression expressing or emphasizing the quality, use, etc. of the designated goods, it does not constitute a general trader or consumer, unless it is recognized that the trademark is reported by the general trader

B. The applied trademark "ACADDMIC" means the English language "ACADDMY" with the intent of "the Academy of Sciences," and "ACADDDMIC" has the meaning of "academicly, academicly, and academically," and it cannot be said that there is no means to suggest "the books used as teaching materials at a private teaching institute" or "the books in the academic field" if they are used in the books, language study materials, etc. of Class 52 of the product classification as designated goods. However, it is difficult to see that the designated goods as above are the use and quality of goods to the extent that anyone can directly recognize them, and it is difficult to see that the designated goods are the same, in light of the trade situation in our country that does not ordinarily use English.

Article 8(1)3 of the former Trademark Act (Amended by Act No. 4210, Jan. 13, 1990); Article 6(1)3 of the Trademark Act

[Plaintiff-Appellant] Plaintiff 1 and 1 other (Law Firm Han-sung, Attorneys Park Jae-young and 2 others, Counsel for plaintiff-appellant) and 1 other (Law No. 4548, Dec. 21, 1990)

Seoul High Court Decision 201Na1448 delivered on May 2, 201

The Commissioner of the Korean Intellectual Property Office

Korean Intellectual Property Office Decision 89Hun-won 878 dated June 30, 1990

The original adjudication shall be reversed, and the case shall be remanded to the Korean Intellectual Property Trial Office.

The grounds of appeal No. 1 are examined.

In light of the reasoning of the original trial decision, the term “Sauri” in this case’s trademark is related to goods such as books, language learning materials, etc., the meaning of “private teaching institute books and academic books,” etc. As such, the original trial decision only constitutes a mark directly indicating the nature (quality, purpose, etc.) of the designated goods, and maintained the first instance trial decision that rendered the instant application as a trademark cannot be registered pursuant to Article 8(1)3 of the Trademark Act.

Article 8(1)3 of the former Trademark Act (amended by Act No. 4210, Jan. 13, 1990) provides that trademark registration shall not be granted for a trademark consisting solely of a mark indicating in a common way the origin, quality, efficacy, efficacy, use, quantity, shape, price, method of production, processing method, method of use, method of use or time of the goods. The purport of the above provision is public interest request that the trademark cannot be used exclusively for a specific person, and if such trademark is used exclusively, it is difficult to distinguish the trademark from other person's like goods because it has no distinctive character with other goods. Thus, in determining whether a trademark is used to indicate the quality, use, etc. of the goods, it shall be determined in accordance with whether it is recognized as a special distinction among consumers in light of the actual transaction situation in Korea. Even if the trademark is made through expressing or emphasizing the quality, use, etc. of the designated goods, it shall not be deemed that the general trader or consumers report the trademark and it does not constitute the use of the designated goods.

In light of the fact that the original trademark "ACADDMIC" means the English language "ACADDMY" with the purport of "the Academy of Sciences," "ACADDDMY" has the meaning of "academicly, academically," and that the books and language learning materials of Class 52 of the product classification are designated goods, it cannot be said that there is no meaning of "the books used as teaching materials at a private teaching institute" or "the books in the academic field" if they are used for designated goods, it is difficult to view that the designated goods immediately are "the books used as teaching materials at a private teaching institute" or "the books in the academic field" or "ACADDMY" to indicate the purpose and quality of goods to the extent that anyone can have sense of belonging to the private teaching institute. In addition, it is difficult to view that the trademark is "the books in the English language," if they are used for designated goods.

Thus, since it is difficult to recognize the distinctiveness of the trademark with other goods in the trading society of the designated goods, or it is difficult to see that the exclusive use of the trademark is detrimental to the public interest, the decision of rejection is justified on the grounds as seen above is erroneous in the misapprehension of legal principles under Article 8(1)3 of the former Trademark Act. Therefore, the appeal to this point is justified.

Therefore, without further proceeding to decide on the remaining grounds of appeal, the case shall be remanded to the Korean Intellectual Property Office Appeal Trial Office. It is so decided as per Disposition by the assent of all participating Justices on the bench.

Justices Lee Jae-sung (Presiding Justice)