[1] Criteria for determining distinguishability of a trademark with a product containing creative works such as books

[2] The case holding that the registered trademark "Linux" cannot be deemed as a trademark with no distinctive character or a consumer's deceptive trademark where it is used on the designated goods such as books

[1] A trademark consisting of goods containing creative works such as books, etc. shall reach the extent that the trademark does not simply express or emphasize the contents of the designated goods, but should reach the extent that the trademark is recognizable as being ordinarily used by ordinary consumers as being indicated the contents of the designated goods. However, it constitutes a trademark consisting solely of a mark indicating the quality, use, etc. of the designated goods under Article 6(1)3 of the Trademark Act in a common way.

[2] The case holding that Article 6 (1) 3 of the Trademark Act does not apply to the registered trademark "Linux, widely known as a common name or official mark of a computer operating system program, and it cannot be deemed that the registered trademark constitutes a trademark under Article 6 (1) 3 of the Trademark Act, and it cannot be deemed that the use of the registered trademark does not lead to misconception or misunderstanding of the quality of the goods, as long as the registered trademark does not constitute a trademark that is ordinarily used in the above designated goods, and it does not constitute a trademark under Article 6 (1) 1 of the Trademark Act, since it is difficult for ordinary consumers to recognize that the contents of the computer operating system program can be included in the above designated goods and it is difficult to recognize that the registered trademark is ordinarily used in the above designated goods, since it does not constitute a trademark that is used in a common way only with the use or utility of the above designated goods and it does not constitute a trademark under Article 6 (1) 1 of the Trademark Act.

[1] Article 6 (1) 3 of the Trademark Act / [2] Articles 6 (1) 3 and 7 (1) 11 of the Trademark Act

Plaintiff

Youngjin.com Co., Ltd. and twenty-three others

Patent Court Decision 200Heo1801 delivered on October 13, 2000

The part of the lower judgment against the Plaintiff is reversed, and that part of the case is remanded to the Patent Court.

1. The court below held that the term "Linux" was widely known to computer users as one kind of common name or official mark among the designated goods in the computer operation system at the time of the registration of the "Linux" of the registered trademark of this case, and that the registered trademark of this case is used in the "book, poster, study paper, recorded tape (not music), recorded compact disc [not music music] among the designated goods, and if the contents of the designated goods are related to the "Linux" program, the registered trademark of this case is merely a mark indicating the purpose and efficacy, etc. of the goods, and if the contents of the designated goods are not related to the "Linux" program, the registered trademark of this case is likely to mislead general consumers as to the "Linux" program, and that the registered trademark of this case is invalid under Article 6 (1) 17 (1) of the Trademark Act or Article 6 (1) 7 (1) of the Trademark Act.

2. However, a trademark consisting solely of a mark indicating the quality, use, etc. of the designated goods under Article 6(1)3 of the Trademark Act, which is beyond simply suggesting or emphasizing the contents of the designated goods included in the designated goods. In this case, if the registered trademark of this case widely known as a common name or an official mark of the computer operating system program is used on the designated goods, it is not likely that the contents of the goods are related to the program. However, in light of the fact that a general consumer of the designated goods trades goods with a focus on the contents or contents of the creative production contained in the goods rather than the trademark, it is difficult to see that ordinary consumers are aware that the contents of the computer operating system program can be recorded in the designated goods in a common way, and thus, it does not constitute a registered trademark under Article 6(1)3 of the Trademark Act or Article 6(1)1 of the Trademark Act, insofar as it is difficult to see that the registered goods are used by ordinary consumers in a common way, it does not constitute a trademark under Article 7(1) of the Trademark Act.

Nevertheless, the court below erred by failing to exhaust all necessary deliberations as to whether the registered trademark of this case with respect to the above designated goods constitutes a trademark under Article 6 (1) 3 or Article 7 (1) 11 of the Trademark Act, and thereby violating the rules of evidence and thereby affecting the conclusion of the judgment. The ground of appeal pointing this out has merit.

3. Therefore, we reverse the part of the judgment below against the plaintiff and remand this part of the case to the court below as per Disposition.

Justices Zwon (Presiding Justice)