In the case where a trademark combining a trademark "A. G. S" and a trademark combining a trademark "Ace Glof Sce" with its upper part without distinctiveness is applied for as designated goods, the case holding that the upper part, the essential part of which has distinctiveness, has distinctiveness as a whole, since the trademark has distinctiveness.

In the case where a trademark combining a trademark "A. G. S" with a distinctive part at the bottom without distinguishability and a trademark combining a trademark "Ace Glof Sce" with its upper part as designated goods, the case holding that the upper part, the essential part of which has a distinctive character, has a distinctive character as a whole, on the grounds that the trademark has a distinctive character.

[1] Article 6 (1) 3 of the Trademark Act

Golf Service Co., Ltd. (Patent Attorney Shin Jae-sung et al., Counsel for defendant-appellant)

The Commissioner of the Korean Intellectual Property Office

Supreme Court Decision 2003Hu403 Delivered on May 14, 2003

1. The decision made by the Intellectual Property Tribunal on July 30, 2002 on the case No. 2002 Won2141 shall be revoked;

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

The same shall apply to the order.

1. Basic facts

Wo: the descriptions of Evidence A 1, 2, and Eul 1-1, 2, and 3

A. Details of the applied trademark of this case

(1) Application number: 40-2001-006039

(2) Date of application: February 19, 2001

(3) Marks:

(d) Designated goods: Golf-type No. 28 of the classification of goods of the Enforcement Rule of the Trademark Act [Attachment 1] : Golf-type, Golf-type, Golf-type, Golf-type, Golf-type

B. Details of the instant trial decision

The defendant applied Article 6 (1) 3 of the Trademark Act to the trademark applied to the plaintiff's applied the trademark of this case, and the plaintiff filed a petition for an appeal against this decision. The Korean Intellectual Property Tribunal reviewed the above case as 2002 Won2141 and dismissed the above case on July 30, 2002.

C. Summary of the reasoning for the instant trial decision

The pending trademark in this case is a character trademark that combines in common letters with ‘A. G. S' and ‘Acece', and can be easily separated and observed by ‘A.G.S' and ‘Acece Service' in the trading industry as well as general consumers.

Considering the level of English distribution in our country, "Ace Glof Service" located at the bottom of the applied trademark of this case is recognized as the meaning of "Polf's golf service, a kind of golf service, etc., and in relation to golf products, which are designated goods, it is directly sense that the character (quality, efficacy, etc.) of the goods is usually indicated in a common way. "A. G. S." located at the top of the applied trademark of this case is one that indicates only the first word in the English language "Ace Glof Service" located at the bottom of the applied trademark of this case, and it is obvious that anyone can easily recognize it as the abbreviation of this English language.

Thus, even if the trademark of this case is a word with a distinctive character, the trademark of this case is recognized as a mark indicating the characteristics of the goods as a whole, so long as it is directly recognizable as explaining the above English person, even though it is a character with a distinctive character.

2. The party's assertion as to the legitimacy of the trial decision of this case

A. Grounds for revoking the trial decision of this case by the plaintiff's assertion

(1) The trademark of this case is the main part of the upper group’s trademark “A. G.S.” and is marked in letters much larger than the upper group’s ‘A. G. S’ part, which is the main part of the trademark, and is indicated in letters “A. G. S.” on the lower part. The main part is the part that explains the above part.

(2) The part "A. G. S" of the trademark upper group of the applied trademark of this case is distinctive as a light that does not have any meaning with respect to the golf product or golf itself, which is its designated goods. Rather, in the English advance, only it is explained that the English advance is a supplementary guidance device for AGS as the weak.

(iii)In the case of a trademark combining a distinctive mark and an undistinctive mark, if the distinctive part is not an additional or auxiliary part of the trademark, and if the mark is the main part of the trademark without distinctive character, the mark with no distinctive character as a whole is recognized to consumers as a whole and the distinctive part is not well-known, and thus, as a whole, cannot serve as a mark of the origin of other goods, but in the case of the trademark applied for this case, it is not an additional or ancillary part as to the non-distinctive part.

(4) As to the registration examples of existing other trademarks, there are many cases where a combination of English words and English characters made with the first words that are hard to recognize distinctiveness has been recognized and registered with the recognition of distinctiveness. KDI (KO) KR, ETRI, KAIT (Elecreics and Telecommics), etc. are made according to the first head characters of English language without distinctiveness even in the name of a legal entity. They cannot be said to have no distinctive character.

B. Defendant’s assertion

(1) The pending trademark in this case is a mark indicating the efficacy, quality, etc. of the designated goods because it is recognized that ordinary consumers have expressed the first letter in English language, indicating the meaning of ‘Ace Glof Service’ under the upper part of ‘A. G. S', and thus, it is a mark indicating the efficacy, quality, etc. of the designated goods.

In particular, ‘Ace' is a mark indicating the efficacy, quality, etc. of designated goods, since it is very easily English language when considering the level of English dissemination in our country, and its development itself is an external language in which it is registered in advance in the Korean language.

(2) Although the Plaintiff asserts that many trademarks showing the composition similar to the instant applied trademark have been registered, the existence of the eligibility for registration of a trademark is to be determined individually according to each trademark in relation to the designated goods, and is not subject to an application for registration of another trademark, and rather, denies the eligibility for registration of a trademark that constitutes a trademark by omitting a part of the technical words.

3. Determination

A. Separate observation of the applied trademark of this case

The trademark of this case is a character trademark consisting of "A. G. G. S" and "Acece at the bottom of about 1/3 of the entire area," and it cannot be deemed that the upper part and the lower part were indivisible, or that the upper part and the lower part were combined with the lower part and the lower part, and thus, it can be easily viewed and observed. In the event that the trademark of this case is applied for separate observation as above, the upper part are combined with two in the upper part and the lower part, and it does not seem to have any meaning in relation to golf products, which are designated goods of the applied trademark of this case, as it does not appear to have any meaning in relation to the designated goods of this case, and thus, it is not deemed to have distinctiveness in relation to the designated goods. Accordingly, considering the level of English distribution of our country, considering the lower part, it cannot be recognized as a "gy service directly used by ordinary consumers," and thus, it constitutes a technical mark indicating the quality of the designated goods in a common way.

B. The essential part of the applied trademark of this case

Therefore, the trademark applied in this case is composed of a mark combining the upper part having distinctiveness and the lower part having no distinctiveness. Since the upper part having distinctiveness of the trademark applied in this case is more than 1/2 of the area occupied in the whole trademark, and the upper part having such distinctiveness is more than 1/2 of the area occupied in the whole trademark, and is located in the upper part which is easily visible to attract the snow of the person seeing the location map, it cannot be deemed as a supplementary or incidental part of the lower part which is the non-distinctiveness of the trademark applied in this case. The trademark applied in this case shall be deemed to have dealt with the whole or part of the essential part of the trademark applied in this case. Since the trademark applied in this case has distinguishability,

C. Judgment on the defendant's assertion

In this regard, the defendant alleged that ordinary consumers recognize the upper part of the trademark of this case as the abbreviation of "A. G. S" in the upper part of the trademark of this case under the indication of "Glof Service", and in such a case, the trademark of this case in relation to the designated goods can be easily separated and observed from the upper part of the trademark of this case. However, the defendant's assertion that the upper part of the trademark of this case and the lower part of the trademark of this case can be easily separated and observed from the lower part of the trademark of this case is as follows: (1) in a case where a trademark of this case can be separately observed and observed in many separate parts, each separated part can not be seen differently from the original part, and (2) in a case where the upper part of the trademark of this case and at least the lower part of the trademark of this case are separately observed, the defendant's assertion that "Glof Service" of this case should not be seen as one part of the trademark of this case.

(2) Thus, if the trademark applied in this case is registered, the scope of the right is limited to the upper part having distinctiveness in relation to the designated goods, and even if it does not extend to the lower part having distinctiveness, it is irrelevant to whether the trademark applied in this case has distinctiveness as a whole.

3. Conclusion

Thus, the trademark applied in this case cannot be deemed as a technical trademark under Article 6 (1) 3 of the Trademark Act, and therefore the decision of this case which different conclusions is unlawful, and thus is revoked.

Judges Cho Yong-ho (Presiding Judge)