[1] The purport of Article 6(1)4 of the former Trademark Act, which denies registration of a trademark consisting solely of a conspicuous geographical name, its abbreviation or map / The meaning of “a conspicuous geographical name” and the base point of time for its determination / The method of determining whether a conspicuous geographical name can be seen as a conspicuous geographical name, and whether such a legal doctrine likewise applies to service marks (affirmative)

[2] In a case where Gap filed for a registration invalidation trial against Eul, the holder of the registered service mark " " "," on the grounds that the registered service mark constitutes a service mark consisting solely of a conspicuous geographical name under Article 6 (1) 4 of the former Trademark Act, the case holding that the judgment below erred by misapprehending the legal principle on the ground that there is room to regard the "private source" of the registered service mark as a conspicuous geographical name widely known to ordinary consumers at the time of the decision on the registration of the registered service mark

[1] Article 6(1)4 of the former Trademark Act (wholly amended by Act No. 1403, Feb. 29, 2016; Article 33(1)4 of the current Trademark Act) provides that trademark registration may not be granted for a trademark consisting solely of a conspicuous geographical name, the abbreviation thereof, or a map thereof (Article 6(1)4 of the former Trademark Act (wholly amended by Act No. 14033, Feb. 29, 2016); and Article 33(1)4 of the former Trademark Act provides that such trademark cannot be recognized as distinctive character due to its apparentness and well-knownness; thus, the legislative purpose of not granting exclusive right to use only to a specific individual. Here, “low geographical name” means that a trademark is widely known to ordinary consumers; and the base point of time for determining whether a geographical name may be seen as a conspicuous geographical name ought to be reasonably determined by comprehensively taking into account all the circumstances that may affect ordinary consumers’ awareness, including textbooks, news reports, surveys, etc. as of the foregoing point of time.

[2] In a case where Party A filed for a trial on invalidation of the registration of a registered service mark on the ground that the registered service mark “Sariwon” part of the registered service mark “B” was located in North Korea’s region as the name of the city located in North Korea, and became known nationwide, the case holding that the judgment below erred by misapprehending the legal principles on the ground that the registration of the registered service mark constituted a conspicuous geographical name under Article 6(1)4 of the former Trademark Act (wholly amended by Act No. 14033, Feb. 29, 2016) and that the registered service mark constituted a service mark solely with a conspicuous geographical name, the court below erred by misapprehending the legal principles, in light of the fact that Party A was widely known in depth from the Joseon Dynasty era, and that the registered service mark was still known as one of the cities in North Korea’s representative cities after the Japanese colonial rule was set up.

[1] Article 6(1)4 of the former Trademark Act (wholly amended by Act No. 14033, Feb. 29, 2016; see current Article 33(1)4 of the Trademark Act) / [2] Article 6(1)4 of the former Trademark Act (wholly amended by Act No. 14033, Feb. 29, 2016; see current Article 33(1)4 of the Trademark Act)

[1] Supreme Court Decision 2004Hu240 Decided April 28, 2004 (Gong2012Sang, 811), Supreme Court Decision 201Hu142 Decided April 13, 2012 (Gong2012Sang, 811), Supreme Court Decision 201Hu958 Decided December 13, 2012 (Gong2013Sang, 193)

Plaintiff (Law Firm Squa, Attorneys Shin Young-chul et al., Counsel for the plaintiff-appellant)

Defendant (Attorney Park Sung-soo et al., Counsel for the defendant-appellant)

Patent Court Decision 2016Heo841 Decided May 12, 2017

The judgment below is reversed, and the case is remanded to the Patent Court.

The grounds of appeal are examined (to the extent of supplement in case of supplemental appellate briefs not timely filed).

1. Registered service mark and key issue of this case

The registered service mark (registration number omitted) of this case is a designated service business, and was composed of "", and was decided on June 26, 1996.

The key issue of this case is whether the registered service mark of this case is not eligible for registration because it constitutes a conspicuous geographical name, which is an important part of the registered service mark of this case.

2. Article 6(1)4 of the former Trademark Act (wholly amended by Act No. 14033, Feb. 29, 2016); or Article 33(1)4 of the current Trademark Act provides that trademark registration may not be granted for a trademark consisting solely of a conspicuous geographical name, the abbreviation thereof, or a map thereof (see, e.g., Supreme Court Decision 201Hu958, Dec. 13, 2012). The legislative purport of the aforementioned legal doctrine is to ensure that trademark registration is not granted to a certain individual (see, e.g., Supreme Court Decisions 2004Hu240, Apr. 28, 2004; 2011Hu2131, Apr. 13, 2012). The aforementioned legal doctrine is that the trademark’s name can be reasonably determined based on the survey of the general consumers as to whether there were significant impacts on trademark registration (see, e.g., Supreme Court Decision 2013Hu14131, Apr., 213).

3. According to the reasoning of the lower judgment and the record, the following facts are revealed.

(a) Sariwon is the name of an area located in the Yellow Sea of North Korea;

B. During the Joseon Dynasty, Sariwon was the main point of traffic where the “won” was installed along with the Measures Institute, Egynasium, Hosium, Hasium, and Hasium. From the Japanese colonial era, Sariwon was known to be the center of railroad traffic along with the Gari Line and the Yellow Sea Line. Gariwon was on the city in 1947, and the Yellow Sea was divided into the Yellow Sea and the Yellow Sea in 1954, and it became the seat of the Do office of Yellow Sea. The administrative district of North Korea was divided into 9Do1, Special Metropolitan City and 2 Metropolitan City around 196, which was the time when the decision to register the instant registered service mark was made, but Gariwon was not only at that time, but also at that time, the seat of the Do office of Yellow Sea in North Korea.

C. The textbooks and departments of social subjects in the Republic of Korea, middle and high schools published from the 1960s to the 2010s are also described or indicated in the direction, including the location of the Dog of Yellow Sea and the main points of traffic.

D. In search via the Internet portal site, newspaper articles related to Sriwon are mainly concentrated from the 1920s to the early 1940s, but even thereafter, Sriwon is one of the cities representing North Korea in North Korea, such as economic cooperation between South and North Korea.

E. Meanwhile, around July 1996, around the time of the registration of the instant registered service mark, the registration was refused on the ground that the trademark consisting of “” only of a conspicuous geographical name.

4. As above, in light of the fact that private interest sources were widely known from the Joseon Dynasty to the deep west, as well as the fact that it still remains known as one of the cities representing North Korea after the Japanese colonial rule, there is room to regard the part of the registered service mark of this case as a conspicuous geographical name widely known to ordinary consumers as of June 26, 1996, which was the date of the decision to register the registered service mark of this case.

The lower court determined that at the time of June 26, 1996, the term “private source” cannot be deemed as a conspicuous geographical name widely known to general consumers in Korea, based on the result of consumer recognition investigation conducted in 2016. However, it is difficult to view that such consumer recognition investigation was conducted 20 years after the date of the decision to register the instant registered service mark, and that it reflected the general consumer’s perception at the time of the decision to register the instant registered service mark.

Therefore, the court below erred by misapprehending the legal principles on conspicuous geographical names and thereby adversely affecting the conclusion of the judgment. The ground of appeal assigning this error is with merit.

5. The plaintiff's appeal is with merit, and the judgment of the court below is reversed, and the case is remanded to the court below for a new trial and determination. It is so decided as per Disposition by the assent of all participating Justices

Justices Kim Chang-suk (Presiding Justice)