[1] The method of determining whether a trademark constitutes "technical trademark" under Article 6 (1) 3 of the Trademark Act, which is a requirement for indicating the raw material of the product

[2] The case holding that the applied trademark " " constitutes a "technical mark" under Article 6 (1) 3 of the Trademark Act

[1] Article 6 (1) 3 of the Trademark Act provides that "a trademark consisting solely of a mark indicating the origin, quality, raw material, efficacy, use, etc. of goods in a common way" shall not be registered. Such "technical trademark" needs to be used even if it is necessary for the distribution process of goods, and it is intended to use it, so that it cannot be exclusively used by a specific person, and if such trademark is allowed, it is hard to distinguish it from other person's like goods. Therefore, whether a trademark indicates the raw material of goods should be objectively determined in light of the concept of the trademark, the relation with the designated goods, and the situation of the trade society. If a general consumer or a trader recognizes that the goods whose meaning is the trademark are being used as raw material of the designated goods or are used as raw material of the designated goods, such trademark cannot be registered as indicating the raw material of the goods.

[2] The case holding that in light of the relation between "rice mixtures and rice extractions" as the mark of the applied trademark " " "" and the designated goods "products (including rice extractions)" and "products containing rice extractions", they are actually being used or used as raw materials and thus ordinary consumers or traders are aware of the fact that they are used or are used as such raw materials, and the applied trademark is not suitable for directly indicating the raw materials or processing methods to allow a specific person to exclusively use them, and it is difficult to distinguish them as the source mark in relation to the same goods, and therefore, it constitutes "technical mark" under Article 6 (1) 3 of the Trademark Act.

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

[1] Supreme Court Decision 2002Hu192 Decided May 13, 2003 (Gong2003Sang, 1367) Supreme Court Decision 2002Hu1140 Decided August 16, 2004 (Gong2004Ha, 1552) Supreme Court Decision 2004Hu3454 Decided April 27, 2006 (Gong2006Sang, 967)

Furthermore, Cambodia (Attorney Hwang Young-young et al., Counsel for the defendant-appellant)

The Commissioner of the Korean Intellectual Property Office

December 11, 2009

1. The plaintiff's claim is dismissed.

2. The costs of lawsuit shall be borne by the Plaintiff.

The decision made by the Intellectual Property Tribunal on August 20, 209 on the case No. 2008 Won8317 shall be revoked.

1. Basic facts

[Reasons for Recognition] Uncontentious Facts, Gap evidence 1, 2, 3, Eul evidence 5-2, 6, the purport of the whole pleadings

A. The plaintiff's applied trademark

(1) Date/ Number of the application: January 18, 2007 / No. 3225

(2) Composition:

(3) 지정상품 : 우유(쌀추출물이 함유된 것), 치즈제품(쌀추출물이 함유된 것), 감자튀김(쌀가루가 함유된 것) 등(상품류 구분 제29류), 빵(쌀가루가 함유된 것), 곡물제조품으로 만든 스낵(쌀가루가 함유된 것) 등(상품류 구분 제30류)(이하 원고의 출원상표를 ‘이 사건 출원상표’라 한다).

B. Details of the instant trial decision

(1) On January 18, 2007, the Plaintiff filed an application for the trademark of this case. On July 18, 2008, the Korean Intellectual Property Office rendered a decision of refusal on the ground that the trademark of this case falls under Article 6 (1) 3 and 7 of the Trademark Act, which is a mark indicating the characteristic of the designated goods’ ingredients, processing methods, etc., and thus, it cannot be registered.

(2) Following the plaintiff's appeal and appeal against the above decision of refusal, the Korean Intellectual Property Trial and Appeal Board reviewed it, and rendered a trial decision of this case to dismiss the plaintiff's appeal on the ground that the trademark applied for trademark of this case cannot be registered as it falls under Article 6 (1) 3 of the Trademark Act.

2. Whether the trademark of this case can be registered

A. Legal doctrine

Article 6 (1) 3 of the Trademark Act provides that a trademark cannot be registered with a mark consisting solely of a mark indicating the origin, quality, raw material, efficacy, and use of goods in a common way. Such technical trademark needs to be used even if it is necessary for the distribution process of goods and it is intended to be used exclusively by any specific person because it is intended to do so, and if such trademark is allowed, it is hard to distinguish it from others' like goods. Thus, whether a trademark indicates the raw material of the goods should be objectively determined in light of the concept of the trademark, the relation with the designated goods, the situation of the trade society, etc., and if the trademark is actually used as raw material of the designated goods or is recognized by ordinary consumers or traders as being used as raw material of the designated goods, such trademark cannot be registered with the raw material of the goods (see, e.g., Supreme Court Decisions 2002Hu192, May 13, 2003; 2004Hu46, Apr. 26, 2004).

B. Determination

The applied trademark of this case is a mark that is composed of multiple types of “INFUSON” under the foregoing, “INFUSON” under the term “RICE”, “injectings, mixturess, extractions,” etc., and is composed of two or more marks (Evidences 6, 7, 8, and 9, respectively).

따라서 이 사건 출원상표는 도안화되어 있기는 하나 그 정도가 문자의 인식력을 압도할 정도는 아니어서 그 전체적인 의미가 ‘쌀주입(물), 쌀혼합(물), 쌀추출물(우려낸 액체)’ 등임을 알 수 있으므로, 이를 그 지정상품들인 ‘우유(쌀추출물이 함유된 것), 치즈제품(쌀추출물이 함유된 것), 감자튀김(쌀가루가 함유된 것), 빵(쌀가루가 함유된 것), 곡물제조품으로 만든 스낵(쌀가루가 함유된 것)’ 등과 관련하여 살펴보면, 이 사건 출원상표는 그 지정상품의 원재료나 가공방법을 보통으로 사용하는 방법으로 표시한 표장만으로 된 상표에 해당한다.

이에 대하여 원고는, 국내에서 발간되는 영한사전에는 각 단어의 중요도 및 난이도를 나타내기 위하여, 널리 사용되고 있어 상대적으로 쉬운 단어 앞에는 세 개의 별표(★)를 붙이고, 상대적으로 덜 중요하고 어려운 단어 앞에는 더 적은 수의 별표를 붙이거나 아예 붙이지 않고 있는데, 이 사건 출원상표의 표장을 구성하는 일부분인 ‘INFUSION’은 국내 발간 영한사전에 별표가 전혀 표시되어 있지 아니할 정도로 어려운 단어에 해당하여 일반 수요자가 사전을 찾아보기 전에는 이 사건 출원상표를 보고 ‘쌀주입(물), 쌀혼합(물)’ 등의 의미를 가지는 것으로 직감할 수 없다고 할 것이므로 이 사건 출원상표는 기술적 표장에 해당하지 아니한다는 취지로 주장한다.

However, in light of the domestic English distribution level, since there is no indication in the front of the "INF USION" in the domestic publication in advance, it is not always difficult for general consumers to find out the trademark in advance to the extent that it is difficult for general consumers to understand its meaning. Moreover, even if the general consumers can not express the overall meaning of the trademark in this case without finding prior to the trademark in advance, the trademark in this case can not be seen as a technical mark of Article 6 (1) 3 of the Trademark Act because the "mix rice and rice extraction", which means the trademark in this case, is actually used as a raw material or its raw material in light of the relation with the above designated goods. Further, the trademark in this case is deemed to have been aware of the general consumers or traders as being used as the raw material or its raw material. In addition, the trademark in this case is intended to be used exclusively by any specific person, such as when advertising the characteristics of the designated goods with the raw material or processing method directly, and it is difficult to distinguish it as its origin in relation to the like goods of others.

Therefore, the above designated goods among the applied trademarks of this case are not eligible for trademark registration because they fall under Article 6 (1) 3 of the Trademark Act, and one application for trademark registration is considered as one of the designated goods even if there are several designated goods. Thus, as long as the above designated goods among the applied trademarks of this case cannot be registered, the trademark of this case cannot be registered in whole.

3. Conclusion

Therefore, the trial decision of this case, which concluded as above, is legitimate, and the plaintiff's claim for revocation is dismissed as it is without merit. It is so decided as per Disposition.

Judges Noh Tae (Presiding Judge)