Woo Robro Round (Attorney Hwang Young-young, Counsel for the plaintiff-appellant-appellant)

The Commissioner of the Korean Intellectual Property Office

October 13, 2006

1. The decision made by the Intellectual Property Tribunal on April 27, 2006 on the case No. 2005 Won6422 shall be revoked.

2. The costs of lawsuit shall be borne by the defendant.

The same shall apply to the order.

1. Details of the trial decision;

A. Application trademark of this case

(1) Date/application number: February 27, 2004 No. 8829

(2) Composition: “Organization”

(3) Designated goods: Class 25 of the classification of goods: “Sastru, single, swets, sports straws, shoots for sports use, children’s clothes, campings, ebbbbbbrics, air-based strings, fishing big strings, ebrutts, ebbrus, ebrus, antigings, lighting strings, glugings, glugings, glugings, glugings, glugs, glugs for stable-gu games, ebrugs, ebrugs,” and Chapter 28 of the classification of goods.

A. The process of the instant trial decision

As to the Plaintiff’s applied trademark, the examiner of the Korean Intellectual Property Office rejected the Plaintiff’s claim on the ground that “The trademark applied for registration is a pattern with simple and ordinary sign, and thus constitutes Article 6(1)6 of the Trademark Act.” Accordingly, upon the Plaintiff’s petition for a trial against rejection, the Korean Intellectual Property Trial and Appeal Board (2005 Won6422) examined the trademark as a simple and ordinary sign, and subsequently, on April 27, 2006, the said decision was rendered to dismiss the Plaintiff’s claim on the ground that “the trademark applied for registration is composed of simple and ordinary marks, and it is difficult to view that the evidence submitted by the Plaintiff alone acquired distinctiveness through the use of the designated goods.”

2. Determination on the legitimacy of the instant trial decision

A. Summary of the plaintiff's assertion

(1) Main argument

The mark of the applied trademark of this case is not a simple multimond or a Mamond or Mamond figure, but a simple and malmond figure 2, with a certain area, and a simple and malmond or mamond figure 2 in Myanmar, respectively, and composed of 4 multiplemond or mamond figures to concentrate general consumers’ vision at the center of the applied trademark of this case as a whole, and there is no place other than the plaintiff in the Republic of Korea. Thus, there is no place other than the plaintiff in the Republic of Korea, the mark cannot be considered as a simple and malmond mark.

(2) Preliminary assertion

Since the Plaintiff started the business of “UMBRO” in England around 1924, the trademark applied for trademark in this case is widely used in goods related to the axiss in 90 countries around the world, and in Korea, the Plaintiff has sold the designated goods through various Internet shopping mallss, such as the professional axis team, and the article of the applied trademark was placed in various newspapers, and the product with the trademark applied for registration is advertised, and thus, the trademark applied for trademark in this case has acquired distinctiveness by use at the time of determining whether it is registered or not after its application date.

(3) Therefore, the instant trial decision that was otherwise determined should be revoked in an unlawful manner.

A. Whether it falls under Article 6(1)6 of the Trademark Act

Article 6 (1) 6 of the Trademark Act excludes a trademark consisting solely of a simple and ordinary mark from the subject of trademark registration. Thus, first of all, we examine whether the applied trademark of this case is a trademark corresponding thereto.

Examining the composition of the mark of the applied trademark in this case, one of the smallest shapes is placed in the shape of a Mamond pattern or side, such as “”.

일반적으로 “◇”와 같은 마름모 또는 “ ”와 같은 다이아몬드 모양은 간단하고 흔히 있는 표시로 볼 수 있다.

However, the mark of the applied trademark of this case is: (a) the shape in which the upper and lower width is narrow, or the shape of the Mamond ordinarily used is different from the shape of the Mamond ordinarily used, and (b) the shape of the Mamond, such as “,” is not composed of double lines; (c) the body with a certain width is not composed of double lines; (d) the body with a certain width is formed with a belt, and the size of two Mamon belts accounts for more than 1/2 of the total area of the Mamon belt; and (e) the two inspections are the same as forming four Mamon lines only with a belt, and the concentration of the Mamon lines is far larger than that of two Mamons composed. In light of these characteristics of the mark of this case, it is difficult to readily conclude that the composition is simple.

In addition, even if the composition of the applied trademark of this case is simple, there is no evidence to acknowledge that the trademark of this case is commonly used. Thus, the applied trademark of this case cannot be deemed as a trademark consisting solely of a simple and ordinary mark.

A. Sub-committee

Therefore, since the trademark applied for this case cannot be seen as falling under Article 6 (1) 6 of the Trademark Act, the trial decision of this case, which concluded differently without examining the plaintiff's conjunctive assertion, should be revoked as unlawful.

3. Conclusion

Thus, the plaintiff's claim of this case seeking the revocation of the trial decision of this case shall be accepted with merit.

Judges Hwang Han-sik (Presiding Judge)