[1] The meaning of "a trademark, other than those referred to in subparagraphs 1 through 6, which does not enable consumers to distinguish goods related to a person's business," and the standard for determining which trademark does not have distinctiveness

[2] Where a trademark appears to have no distinctiveness when objectively seen only its own concept or the relationship with the designated goods, etc., but the applicant’s use of the trademark led to a significant recognition between consumers or traders as to whose business the trademark indicates goods, whether the trademark does not constitute a trademark with no distinctiveness under Article 6(1)7 of the Trademark Act (affirmative), and the standard point of time for determining whether the trademark has distinctiveness by use (=the time when the registration of the trademark is decided)

[3] In a case where Gap et al., a trademark right holder of the registered trademark " " "" and " " sought injunction against infringement of trademark rights against Eul et al., the case holding that the above registered trademark consisting solely of " " "" or "" in Korean not specially drawn up constitutes "a trademark which does not enable consumers to distinguish who indicate goods related to his/her business" under Article 6 (1) 7 of the Trademark Act

[1] Article 6 (1) 7 of the Trademark Act / [2] Article 6 (1) 7 and (2) of the Trademark Act / [3] Article 6 (1) 7 and (2) of the Trademark Act

[1] [2] Supreme Court Decision 2012Hu2951 Decided December 27, 2012 (Gong2013Sang, 271) / [2] Supreme Court Decision 2001Hu2863 Decided July 11, 2003 (Gong2003Ha, 1734)

Plaintiff 1 and one other (Attorney Full-time et al., Counsel for the plaintiff-appellant)

Gabd Co., Ltd. and one other (Attorneys Seo Young-chul et al., Counsel for the plaintiff-appellant)

Seoul High Court Decision 2011Na103368 decided January 9, 2013

All appeals are dismissed. The costs of appeal are assessed against the plaintiffs.

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

1. Regarding ground of appeal No. 1

A. Article 6(1) of the Trademark Act provides, “A trademark, other than those referred to in subparagraphs 1 through 6, for which a trademark cannot be registered.” This means that even if a trademark does not fall under any of subparagraphs 1 through 6 of the same Article, a trademark without distinctiveness of one’s own goods may not be registered at the time of a decision of registration. Whether a trademark constitutes a trademark with no distinctiveness shall be determined objectively by taking into account the concept of the trademark holding, the relationship with the designated goods, and the circumstances of the transaction society. If it is difficult to recognize distinctiveness of one’s own goods under the social norms or it is deemed inappropriate for a specific person to monopoly the trademark for public interest (see Supreme Court Decision 2012Hu2951, Dec. 27, 2012, etc.).

B. We examine the above legal principles and records.

According to the reasoning of the lower judgment and the evidence admitted by the lower court, each of the trademarks listed in [Attachment 4 7, 7946] and “ ” (Trademark No. 427947) at the time of the original adjudication, as of November 2, 1998, at the time of the decision to register the trademark “” (Trademark No. 427946), which is one of the trademarks listed in [Attachment 4 7, 8] at the time of the original adjudication, was widely recognized and used as referring to the learning materials and tools applying the doctrine of the Early Childhood Education Act or the doctrine thereof among ordinary consumers as well as employees and traders of the industries related to early childhood education, around November 2, 1998. On the other hand, in each of the designated goods of each of the above registered trademarks, all of the complete goods, such as “patching, satching, plastic agents, metal satus, etc., are closely related to teaching materials and tools for early childhood education or early childhood education.

In full view of these circumstances, each of the trademarks listed in Appendix 4 Nos. 7 and 8 at the time of the original adjudication consisting solely of the Korean language “,” or English “,” which is not specially devised, shall not be deemed to have distinctiveness as an indication of the source of other goods in relation to the finished goods, such as necks, ices, plastic completes, and metal completes, based on the time of the decision to register the trademark. Moreover, it is not appropriate to allow a specific person to monopoly, each of the above trademarks constitutes “a trademark which, as prescribed by Article 6(1)7 of the Trademark Act, does not distinguish which consumers indicate goods related to a person’s business.”

The judgment below to the same purport is just, and there is no error by misapprehending the legal principles as to Article 6 (1) 7 of the Trademark Act.

2. Regarding ground of appeal No. 2

A. Even if a mark appears to have no distinctiveness when objectively seen without considering its use’s concept or the relationship with the designated goods, where the applicant’s use of the mark leads to a consumer or trader’s recognition as to whose business the mark indicates goods, as a trademark, the mark may not be registered as a trademark with no distinctiveness under Article 6(1)7 of the Trademark Act, but may not be registered as a trademark if it still lacks distinctiveness even considering its use’s use condition (see, e.g., Supreme Court Decision 2001Hu2863, Jul. 11, 2003). Whether it has distinctiveness through such use ought to be determined at the time of decision to register the trademark (see, e.g., Supreme Court Decision 2012Hu2951, Dec. 27, 2012).

B. We examine the above legal principles and records.

According to the reasoning of the judgment below and the evidence admitted by the court below, at the time of the decision of registration of each registered trademark listed in No. 4 No. 7 and No. 8 as indicated in the judgment of the court below, various companies other than the plaintiffs have used the word “monme” or “MONESSORI” as well. Considering the above circumstances, even if considering the plaintiffs’ advertising performance and sales performance, each of the above registered trademarks consisting solely of “” in Korean or English “,” which is closely related to teaching materials and instruments related to early childhood education or early childhood education at the time of the decision of registration, it cannot be deemed that each of the designated goods that are closely related to the aforementioned designated goods, such as “paty, saty, plastic saty, metal satus, etc.,” whose business activities are expressed among consumers.

The judgment below to the same purport is just, and there is no error by misapprehending the legal principles on the acquisition of distinctiveness by the use of a trademark.

3. Regarding ground of appeal No. 3

The lower court determined that each of the above marks did not constitute an unfair competition act under Article 2 subparag. 1(a) through (c) of the Unfair Competition Prevention and Trade Secret Protection Act, on the grounds that it is difficult to deem that the marks, “,” or “,” as indicated in [Attachment 4] Nos. 3, 4, 7, 8, 11, and 12 as indicated in the holding, obtained distinctiveness and well-knownness as a product or business mark as of November 7, 2012, which was the date of closing argument in the lower court.

In light of the relevant legal principles and records, the above determination by the court below is just, and there is no error by misapprehending the legal principles on unfair competition.

4. As to the grounds of appeal Nos. 4 and 5

The lower court determined that the trademark right or service mark right infringement on each of the above trademarks, service marks, or marks, or marks, “” or “ ”, as indicated in [Attachment 4] Nos. 1, 2, 5, 6, 9, and 10 as indicated in its holding, is not an unfair competition act as defined in Article 2 subparag. 1 (a) through (c) of the Unfair Competition Prevention and Trade Secret Protection Act, on the ground that the trademark right or service mark right infringement on each of the above trademarks, service marks, or marks, or marks, is not identical or similar in comparison with the respective marks of the Defendants listed in [Attachment 1] when the original adjudication is rendered in the form of not adding “Korea or KREA” due to lack of distinctiveness.

In light of the relevant legal principles and records, the above determination by the court below is just, and there were no errors by misapprehending the legal principles on infringement of trademark rights or service mark rights, or unfair competition acts.

5. Conclusion

Therefore, all appeals are 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 Shin (Presiding Justice)