[1] The standard for determining whether a mark which has no original distinctive character acquires "distinctiveness through use" as a requirement for trademark registration under Article 6 (2) of the Trademark Act

[2] Whether the long-term use of a trademark recognized as identical affects the acquisition of "distinctiveness by use" under Article 6 (2) of the Trademark Act (affirmative)

[3] The case holding that, where a trademark "K2, K2, and K2, which is recognized as identical to the trademark, has been used for a long time, and thereafter has been used continuously and indirectly, the trademark " " acquired distinctiveness by the use"

[1] As a result of using this trademark before its application for trademark registration, Article 6 (2) of the Trademark Act clearly recognizes the trademark's recognition among consumers as a trademark indicating whose goods, notwithstanding the provisions of Article 6 (1) 3 through 6 of the same Act, since the trademark has no distinctive character and thus granting a detailed right to a trademark inappropriate to allow a specific person to use it, its standard should be strictly interpreted and applied. However, considering the period of use, frequency and continuity of use of the trademark, the production, sale quantity and market share of the goods bearing the trademark, methods of advertisement and publicity, frequency, contents, period and amount of advertisement and publicity, quality of goods, reputation and credit of the trademark user, degree and appearance of concurrent use of the trademark, the acquisition of distinctiveness by use can be recognized, in full view of the following factors:

[2] A trademark acquired distinctiveness by use is limited to the trademark itself used in fact and it is not possible to recognize the acquisition of distinctiveness even for the trademark similar thereto, but the long-term use of a trademark recognized as identical to the trademark is an element supporting the acquisition of distinctiveness.

[3] The case holding that, where a trademark "K2, K2, and K2, which is recognized as identical to the trademark, has been used for a long time, and thereafter has been used continuously and indirectly, the trademark " " acquired distinctiveness by the use"

[1] Article 6 (1) 3 through 6, Article 6 (2) of the Trademark Act / [2] Article 6 (2) of the Trademark Act / [3] Article 6 (1) 3 through 6, Article 6 (2) of the Trademark Act

[1] Supreme Court en banc Decision 92Hu2274 delivered on May 24, 1994 (Gong1994Ha, 1831) Supreme Court Decision 2005Hu339 delivered on May 12, 2006 (Gong2006Sang, 1074)

Korea Co., Ltd. and one other (Law Firm Square, Attorneys Park Jong-soo et al., Counsel for the plaintiff-appellant)

Defendant

K2-sports Co., Ltd. (Law Firm Pacific et al., Counsel for the plaintiff-appellant)

Patent Court Decision 2005Heo930 decided July 7, 2006

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

The grounds of appeal (to the extent of supplement in case of supplement submitted after the expiration of the period) are examined.

1. As to the first to third grounds

A. Notwithstanding the provisions of Article 6(1)3 through 6 of the Trademark Act, where the trademark is recognized remarkably among consumers as a trademark indicating whose goods it had been applied before the application for trademark registration, the standard should be strictly interpreted and applied (see Supreme Court en banc Decision 92Hu2274 delivered on May 24, 1994). However, considering the following factors: (a) the term of use, frequency and continuity of use of the trademark; (b) the production and sale of goods bearing the trademark; (c) the market share, method, frequency and amount of advertisement and publicity; (d) quality of goods; (e) quality of goods; (g) reputation of a trademark user; (d) reputation and credit of a trademark user; (e) degree and mode of concurrent use; and (e) the degree of distinguishability of the trademark; and (e) the trademark itself, if it is recognized that the trademark has become distinctive after being used by a specific person for a long time, it can be recognized that it has become distinctive after being used by a specific person.

B. According to the reasoning of the lower judgment, the lower court acknowledged facts as indicated in its reasoning after comprehensively taking account of the adopted evidence, and rejected the acquisition of distinctiveness by using the trademark “K2” on the ground that the use of “K2” in relation to the acquisition of distinctiveness by use is nothing more than six months since the Plaintiff Company mainly used K2-related trademark Doned K2 and began to use only the trademark “K2” around 2004.

However, the above determination by the court below is without merit for the following reasons.

According to the records, the Plaintiff Company and the Plaintiff Company used the Plaintiff Company’s 200 billion trademarks for 20 years, including the Plaintiff Company’s 200,000 KMM 2 and the Plaintiff Company’s 300,000,000,000 won-based trademarks and 300,000,000 won-based trademarks and 200,000,000 won-based trademarks and 30,000,000 won-based trademarks and 40,000,000 won-based trademarks and 30,000,000,000 won-based trademarks and 20,000,000 won-based trademarks and 30,000,000 won-based trademarks and 40,000,000 won-based trademarks and 205,00,000 won-based trademarks and 200,000,00 won-based trademarks and 201.

Thus, the plaintiff company used the trademark identical to K2 for a long time from 202 to 3 years and six months from the registration decision date of the trademark of this case, and used the trademark continuously and indirectly for three years and six months from 2002 to 3 years and six months from the registration decision date of the trademark of this case, and the trademark "" to the majority of the traders and consumers with regard to mountaineering, safetyation, and other disposable products have reached the recognition of the trademark of the plaintiff company. Thus, the plaintiff company acquired distinctiveness by use.

C. Nevertheless, the court below held that consumers cannot be deemed to have acquired distinctiveness with the Plaintiff’s trademark until the date of the decision to register the trademark of this case. In so doing, the court below erred by misapprehending the legal principles on determining distinctiveness of the trademark and by misapprehending the rules of evidence, etc., which affected the conclusion of the judgment, and the grounds of appeal assigning this error are with merit.

2. Conclusion

Therefore, without further proceeding to decide on the remaining grounds of appeal, the lower judgment is reversed, and the case is remanded to the lower court for further proceedings consistent with this Opinion. It is so decided as per Disposition by the assent of all participating Justices on the bench.

Justices Shin Hyun-chul (Presiding Justice)