The case holding that trademark " " cannot be registered as a trademark with a conspicuous geographical name as a whole, because it itself has no distinguishability by itself, and it cannot be deemed that it has acquired distinguishability by use.

The case holding that the trademark registration cannot be obtained on the ground that the Korean “Tgu” and “DAEGU” in the English part of the text of the applied trademark “” constitute the abbreviations of “Tgu” and “TAEWU” which are conspicuous geographical names among ordinary consumers or traders, and the Korean “New City” and “NEWS” both fall under the ordinary name of “New City”, which is designated goods of the applied trademark, and the applied trademark as a whole falls under the ordinary name of the “New” which is designated goods of the applied trademark, and the trademark in question indicates a conspicuous geographical name, and its own geographical name does not have distinctiveness, and it cannot be recognized that the trademark acquired distinctiveness through use because it is difficult

Article 6(1)4 and (2) of the Trademark Act

Daegu News Co., Ltd. (Patent Attorney Lee Jae-sung, Counsel for defendant-appellant)

The Commissioner of the Korean Intellectual Property Office

may 3, 2006

1. The plaintiff's claim is dismissed.

2. Litigation costs shall be borne by the plaintiff.

The decision made by the Intellectual Property Tribunal on October 27, 2005 on the case No. 2005 Won1209 shall be revoked.

1. Details of the trial decision;

A. On October 10, 2003, the Plaintiff filed an application for trademark registration under the following (hereinafter “instant applied trademark”). The examiner of the Korean Intellectual Property Office decided on January 26, 2005 on the ground that the “Tgu”, which is the essential part of the instant applied trademark, constitutes a conspicuous geographical name, and falls under Article 6(1)4 of the Trademark Act, and that “a newspaper” is not suitable to allow a specific person to monopoly, and thus, cannot obtain trademark registration as it falls under Article 7(1)7 of the Trademark Act.

(1) Composition:

A person shall be appointed.

(2) Application number: No. 40-2003-44769

(3) Designated goods: “Examination” in Chapter 16 of the Classification of Goods

B. As to a plaintiff's appeal for dissatisfaction against the above decision of refusal, the Korean Intellectual Property Tribunal recognized the trademark of this case as a conspicuous geographical name and an additional figure, but as a whole, it constitutes Article 6 (1) 4 of the Trademark Act by recognizing the trademark of this case as an essential part. Even if the trademark of this case has distinctiveness as a whole, it can be deemed as falling under Article 6 (1) 7 of the Trademark Act since there is no distinctiveness in light of the whole, since the trademark of this case cannot be seen as being considerably recognized among consumers as a result of the use of the trademark of this case before the application for trademark registration, and thus, it cannot be recognized that the trademark of this case can be registered under Article 6 (2) of the Trademark Act because the evidence submitted by the plaintiff cannot be seen as being considerably recognized as a result of the trademark of this case, the original decision rejecting trademark registration on October 27, 2005 was justified,

[No dispute is raised]

2. Determination as to the legitimacy of the trial decision

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

(1) As the trademark applied in this case is combined with a unique figure and text, it cannot be deemed as a trademark consisting solely of a conspicuous geographical name. The overall trademark of this case is not deemed as a trademark consisting solely of a conspicuous geographical name. In the case of newspapers designated as the designated goods of the applied trademark in this case, there are characteristics such as media that are published daily and periodically deliver large amounts of information to many people. Accordingly, the trademark of this case is of a nature indicating the source of goods that are capable of periodically publishing by a specific newspaper. Thus, as long as there is no same title as that of ordinary goods, the trademark of this case is sufficiently distinctive, unless there is any other similar title as in the case of ordinary goods. Since the Plaintiff registered a periodical in the Ministry of Culture and Tourism and used a newspaper continuously, the trademark of this case cannot be used as a newspaper, and thus, it does not go against the public interest even if it is used exclusively by the Plaintiff, even if the trademark of this case is already registered with multiple geographical names consisting solely of a conspicuous geographical name, but refusal of registration of the applied trademark in this case should be revoked.

(2) In accordance with the former Registration of Periodicals Act (wholly amended on January 27, 2005, the Act on the Freedom of Newspapers, etc. and Guarantee of Their Functions), the Plaintiff registered the "Tgu Newspapers" on the Ministry of Culture and Tourism, and published newspapers using the above title from August 7, 2001. In light of the content of its activities and distribution network, etc., the trademark of this case is recognized as indicating the Plaintiff's business among consumers as a result of using the trademark before the application for trademark registration, and thus, the trademark of this case can be registered pursuant to Article 6 (2) of the Trademark Act, and the decision of this case otherwise determined should be revoked.

(b) Markets:

(1) Whether the trademark of this case constitutes Article 6(1)4 of the Trademark Act

Article 6 (1) 4 of the Trademark Act does not apply only to a trademark consisting solely of a conspicuous geographical name, the abbreviation thereof or map. Even if the trademark consisting of a conspicuous geographical name, etc. or a trademark consisting of a business-type mark or a technical (technical) mark without distinguishability, if the word constituting a trademark by combination is not the case where the original conspicuous geographical name, the trademark consisting of the business type or the technical meaning, or a trademark is completely new, or a trademark is entirely new, it cannot be deemed that the trademark is a combination of a geographical name, etc., and thus, the application of the above provision cannot be deemed excluded. Even if there is a combination of other distinctive letters, symbols, diagrams, etc., and even if such combination is merely an incidental or auxiliary trademark, or if the trademark is recognized as a trademark indicating a conspicuous geographical name as a whole, it cannot be said that the above provision of the Trademark Act is applied (see Supreme Court Decision 9Hu3168, Jun. 24, 194; 2008Hu16826, Apr. 16, 2002).

The applied trademark of this case is comprised of “Cheong-gu” and “DEGU” in the shape of blue and blue-do, and the concept of “Examination related to Daegu Metropolitan City” is clear. On the other hand, the above figure portion is composed on the left side of the letter portion and cannot be seen as having produced a special name and concept. As such, the essential part of the applied trademark of this case is the word portion and its incidental or auxiliary figure is deemed to be combined with the word portion. However, the above part constitutes the abbreviation of “Seoul Metropolitan City” and “DEGU” in English constitutes the abbreviation of the trademark of this case, which is a conspicuous geographical name, and the trademark of this case falls under the ordinary name of the designated goods of the applied trademark of this case, and there is no need to see that the trademark of this case constitutes a trademark of this case, which constitutes a trademark of this case, and the trademark of this case and the trademark of this case cannot be seen as falling under the trademark of this case as a trademark of this case, and thus, the trademark of this case does not constitute a new concept or new concept of the trademark of trademark of this case.

On the other hand, daily publication of daily information and its ripple effect is high to many people. However, even if a newspaper’s title is used as a mark, it cannot be determined that it is superior to any other trademark in all cases. Since a newspaper’s title is not derived from its intrinsic function and it is difficult to view that it is a result from the use of a trademark as well as other trademarks, it can be individually and specifically registered as a trademark in a case where a distinctive character is recognized or used. As seen above, it is difficult to recognize that the trademark applied for registration of this case has no distinctive character only with the trademark indicated a conspicuous geographical name and obtained a distinctive character through the use of the trademark as seen above, as seen in paragraph (2). Further, since the Plaintiff’s trademark applied for registration of this case has continued to use the trademark of this case as an examination of the Ministry of Culture and Tourism, and the Plaintiff’s exclusive use of the trademark of this case cannot be seen as a result of the use of the trademark of this case, since it cannot be seen that the trademark of this case cannot be registered in accordance with the provisions of the former Periodicals Act.

(2) Whether the trademark of this case constitutes Article 6(2) of the Trademark Act

The purport of Article 6 (2) of the Trademark Act, in cases where, as a result of the use of the trademark before filing an application for trademark, consumers obtain registration notwithstanding the provisions of paragraph (1) 3 through 6 of the same Article in cases where the trademark is recognized remarkably among themselves, is to grant a right to a mark that cannot be used exclusively for a specific person, so its standard should be strictly interpreted and applied. Thus, the fact that the trademark is widely recognized among consumers is advertised to a certain extent cannot be presumed only by the fact that the trademark has been advertised to a certain extent, and in detail, it should be clearly determined by evidence that the trademark itself has been considerably recognized among consumers. On the other hand, whether the trademark has distinctiveness from such use should be determined at the time of registration or rejection ruling (see Supreme Court Decision 2002Hu1768 delivered on May 16, 2003).

However, comprehensively taking account of the overall purport of arguments in Gap evidence Nos. 3 through 10, 12 through 14, the plaintiff registered the "Tgu Newspaper" with the Ministry of Culture and Tourism, published Nos. 2,420 from August 7, 2001 to August 10, 2004 by continuously publishing newspapers using the above No. 28,560, published 85 employees as of August 2004, the plaintiff employed 1.29 billion won as of August 2004, and owned the assets of 139 domestic distribution networks, and the plaintiff had a lot of domestic distribution networks, and there is no evidence to acknowledge the fact that the plaintiff opened the Internet homepage of this case from 2002 to 204 to 2004 to publicly announce the fact that the plaintiff had been using the Internet homepage of this case, and there is no reason to acknowledge the fact that the plaintiff had been using the Internet homepage of this case.

(c) Conclusion

Therefore, the applied trademark of this case is not eligible for trademark registration because it falls under Article 6 (1) 4 of the Trademark Act, and the decision of this case is legitimate.

3. Conclusion

Therefore, the plaintiff's claim is dismissed as it is without merit. It is so decided as per Disposition.

Judges Lee Sung-ho (Presiding Judge)