[1] Whether the application of Article 6(1)4 of the Trademark Act is excluded in a case where a trademark applied for satisfies the requirements for distinctiveness under each subparagraph of Article 6(1) of the Trademark Act in a case where a trademark has produced a new concept beyond its original conspicuous geographical name, etc. or a new distinctive character is formed by combining a trademark with a trademark with a trademark with a trademark with no other distinctive character (affirmative) / The point of time to determine whether the applied trademark satisfies the requirements for distinctiveness under each subparagraph of Article 6(1) of the Trademark Act

[2] Where an examiner of the Korean Intellectual Property Office rejected a trademark registration on the grounds that the applied trademark constitutes Article 6(1)4 and 7 of the Trademark Act, the case holding that the above applied trademark has sufficient distinctiveness and thus the trademark registration should be allowed

[1] Article 6(1)4 of the Trademark Act provides that a trademark consisting solely of a conspicuous geographical name, the abbreviation thereof, or a map may not be registered. The purport of Article 6(1)4 is to refrain from granting a right to exclusive use only to a specific individual as it is impossible to recognize the distinctiveness of a trademark due to its apparentness and well-knownness. In light of the foregoing, Article 6(1)4 of the Trademark Act is applicable in cases where a trademark combines a conspicuous geographical name, etc. with another non-distinctive mark. However, if such combination results in the creation of a new concept or a new distinctive character without the original conspicuous geographical name, etc., the application of the said provision is excluded.

On the other hand, the standard point of determining whether a trademark applied for registration satisfies the distinctiveness requirements under each subparagraph of Article 6(1) of the Trademark Act is the time of determining whether the trademark is registered or not, in principle, the time of the decision of refusal is the time of the decision of rejection where the registration is decided by a trial.

[2] In a case where the Korean Intellectual Property Office examiner rejected trademark registration on the ground that the trademark “” comprised of the designated goods falls under Article 6(1)4 and 7 of the Trademark Act, the case holding that the court below erred by misapprehending the legal principles, since the trademark applied for trademark registration is not simply a “university located in Seoul,” but a new concept of “national University located in Gwanak-gu, Seoul, etc.,” which is a “national University” has a sufficient distinctive character as a general consumer or trader, and thus, the trademark registration of the designated goods should be granted, on the ground that it constitutes Article 6(1)4 and 7 of the Trademark Act

[1] Article 6 (1) of the Trademark Act / [2] Article 6 (1) 4, 7, and (2) of the Trademark Act

[1] Supreme Court Decision 201Hu1142 Decided April 13, 2012 (Gong2012Sang, 811), Supreme Court Decision 201Hu958 Decided December 13, 2012 (Gong2013Sang, 193)

Seoul University Industry-Academic Cooperation Foundation (Patent & Law Firm Auyang, Patent Attorney Jeong-ok et al., Counsel for the plaintiff-appellant)

The Commissioner of the Korean Intellectual Property Office

Patent Court Decision 2014Heo2092 Decided September 18, 2014

The appeal is dismissed. The costs of appeal are assessed against the defendant.

The grounds of appeal are examined.

1. Article 6(1)4 of the Trademark Act provides that a trademark consisting solely of a conspicuous geographical name, the abbreviation thereof, or a map may not be registered. The purport of such provision is to refrain from granting exclusive license to only a specific individual as it is impossible to recognize the distinctiveness of a trademark due to its apparentness and well-knownness. In light of the foregoing, the provision of Article 6(1)4 of the Trademark Act may also apply in cases where a trademark combines a conspicuous geographical name, etc. with another non-distinctive mark. However, in cases where a trademark creates a new concept or a new distinctive character is created by such combination, the application of the aforementioned provision is excluded (see, e.g., Supreme Court Decision 201Hu958, Dec. 13, 2012).

Meanwhile, the standard point of determining whether a trademark applied for registration satisfies the distinctiveness requirements under each subparagraph of Article 6(1) of the Trademark Act is, in principle, the time of determining whether to register the trademark, and where determining whether to grant registration by an appeal against a decision of refusal, the time of such decision (see Supreme Court Decision 201Hu142, Apr. 13, 2012, etc.).

2. In light of the circumstances revealed based on the facts stated in its reasoning, the lower court determined that the trademark of this case (application number omitted) consisting of the designated goods as indicated in the [Attachment] of the lower judgment, such as agricultural product-based type, is indivisiblely combined with the “Seoul”, which is a conspicuous geographical name, and thus, the new concept of “National University located in Gwanak-gu, Seoul, etc.,” not simply refers to “Seoul,” but also the new concept of “National University,” which is located in Gwanak-gu, Seoul, has sufficient distinctiveness among general consumers or traders, and thus, it does not fall under all of Article 6(1)4 and 7 of the Trademark Act, and thus, trademark registration of each of the above designated goods should be allowed, and as long as it does not fall under Articles 6(1)4 and 6(2) of the Trademark Act, it does not need to separately consider whether the trademark has acquired distinctiveness by individual use of each of the designated goods under Article 6(2) of the Trademark Act.

3. Examining the reasoning of the lower judgment in light of the records, including the evidence duly admitted, the lower court’s determination is based on the legal doctrine as seen earlier. In so doing, contrary to what is alleged in the grounds of appeal, the lower court did not err by misapprehending the legal doctrine on determining the distinctiveness of a trademark as to the designated goods and on Articles 6(1)4, 7, and 6(2)

The Supreme Court precedents cited by the Defendant in the grounds of appeal are different from this case, and thus are inappropriate to be invoked in this case.

4. Therefore, the appeal is 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 So-young (Presiding Justice)