[1] Criteria for determining whether a trademark constitutes "a trademark indicating the quality, efficacy, use, etc. of goods in a common way" under Article 51 (1) 2 of the Trademark Act

[2] The case holding that since the challenged mark " " constitutes "a trademark indicating the quality, etc. of goods used in a common way" under Article 51 (1) 2 of the Trademark Act, it does not fall under the scope of the right without any need to prepare for the same or similar type of the registered trademark "

[1] Whether a trademark constitutes "a trademark indicating the quality, efficacy, use, etc. of goods in a common way" under Article 51 (1) 2 of the Trademark Act shall be objectively determined by taking into account the concept possessed by the trademark, the relationship with the goods using the trademark, the circumstances of the trade society, etc. Even if the trademark is intended, if the degree of the design does not reach the degree of a new distinctive character, such as the technical or explanatory meaning of the letter drawing the special attention of the general public, as a whole, it constitutes a trademark under Article 51 (1) 2 of the Trademark Act if it is directly recognizable that the quality, efficacy, use, etc. of the goods used by ordinary consumers or traders are indicated at the time of considering the goods used.

[2] The case holding that in light of the level of Korean language education in Korea, "the" of the challenged mark " " appears to be difficult for ordinary people to see," and as a whole, since the degree of the design drawing " cannot be seen to have a new distinctive character, such as that the technical or explanatory meaning of ordinary people can not be straight enough, it is recognized that ordinary consumers or traders can have a new distinctive character, it is recognized as "fair," and the "weigh" of the challenged mark "the goods using the challenged mark," the goods using the challenged mark "melt tea, lurries, cans, flurries, red cans, so that the trademark does not belong to the designated goods of the same kind as "the goods of this case" as "the goods of this case are not identical or similar to the trademark of this case" and "the goods of this case are not identical or similar to "the goods of this case" under Article 5 (1) of the Trademark Act.

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

[1] Supreme Court Decision 90Hu175 Decided December 11, 1990 (Gong1991, 482) Supreme Court Decision 2000Hu2569 Decided June 11, 2002 (Gong2002Ha, 1705) Supreme Court Decision 2008Hu4585 Decided May 13, 2010 (Gong2010Sang, 1165)

Bosung Green Co., Ltd. (Patent Attorney Lee Sung-sung et al., Counsel for the defendant-appellant)

Bobn F&B Co., Ltd. (Law Firm Square, Attorneys Kim Ho-ho et al., Counsel for the plaintiff-appellant)

Patent Court Decision 2009Heo3077 Decided September 4, 2009

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

The grounds of appeal are examined.

1. Whether a trademark constitutes “a trademark indicating the quality, efficacy, use, etc. of goods in a common way” under Article 51(1)2 of the Trademark Act ought to be objectively determined by taking into account the concept possessed by the trademark, the relationship with the goods using the trademark, the circumstances of the transaction society, etc. Even if the trademark is drawing up, the degree of drawing up does not reach the degree of having a new distinctive character, such as that the technical or explanatory meaning of characters drawing the special attention of the general public cannot be sensed as a whole, and if it is possible for ordinary consumers or traders to directly recognize that the quality, efficacy, use, etc. of the goods used are indicated when considering the goods used, such trademark constitutes a trademark under Article 51(1)2 of the Trademark Act (see, e.g., Supreme Court Decisions 90Hu175, Dec. 11, 1990; 200Hu2569, Jun. 11, 2002; 408Hu585, May 2010).

2. We examine the above legal principles and records.

The challenged mark “” is a mark in the shape of an lapsy, written in the shape of an lapsy, written in the shape of an lapsy, written in a small letter with the word “lapsy,” and is composed of two figures and letters in red color. However, considering the level of Korean language education, the degree of the lapsy as seen above cannot be deemed to have a new distinctive character, such as where the technical or explanatory meaning of the word drawing the special attention of the general public cannot be directly sensed, and even if the mark in question is considered to have the actual usage of the challenged mark, it cannot be seen that the ordinary consumers or traders are perceived as “lapsy”, and it is difficult to view otherwise in light of the actual usage of the challenged mark as “lapsys”, “lapsys and drinks”, “lapsys and drinks”, “lapsys and drinks”, “lapsys and drinks”, “lapsys and drinks”, etc., which are subject to the verification of the quality of the challenged mark.

Therefore, since the challenged mark constitutes a trademark under Article 51(1)2 of the Trademark Act, which generally uses the quality, etc. of goods, the designated goods are not identical or similar to the registered trademark “” (registration number omitted) of this case, the designated goods are not within the scope of the right, without any need to prepare for whether it is identical or similar to the registered trademark “” (registration number omitted) of this case.

The judgment of the court below to the same purport is just and acceptable, and there is no error in the misapprehension of legal principles as to Article 51 (1) 2 of the Trademark Act as alleged in the grounds of appeal.

In addition, the Supreme Court's decision on Article 51 (1) 1 of the Trademark Act cited in the ground of appeal by the defendant is inappropriate to be invoked in the instant case where Article 51 (1) 2 of the Trademark Act is at issue, and a trial decision (the Korean Intellectual Property Trial and Appeal Board Decision 2008Da3702 dated April 17, 2009) that the registration of the instant registered trademark between the plaintiff and the defendant is not invalid in the invalidation trial of the trademark of this case becomes final and conclusive, and the kind of the trial and the cause of the trial do not affect any other legal effect in this case

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 Kim Nung-hwan (Presiding Justice)