[1] Where the applied trademark or service mark consisting of several words or phrases falls under Article 6 (1) 7 of the Trademark Act because it has no distinctiveness

[2] The case holding that the applied trademark/service mark "engines yourververververververververververververververververververververververververververververververververververververververververververververververververververververververver

[1] Article 6(1)7 of the Trademark Act cannot be deemed as having no distinctiveness solely on the ground that the applied trademark or the applied service mark consists of several words or sentences. Furthermore, in light of the designated goods or the designated service business, it is inappropriate to allow a specific person to exclusively use the applied trademark or the applied service mark only when it becomes inappropriate to allow a specific person to exclusively use the trademark on account of the circumstances such as recognition of its source as an ordinary relief or advertisement in the trading society rather than indicating its source.

[2] The case holding that a trademark/service mark “engines”, which was applied in four English languages, does not constitute a trademark with no distinctiveness under Article 6(1)7 of the Trademark Act, since it is difficult for ordinary consumers or traders to have a sense of meaning, and it is difficult to conclude that the designated goods or the designated service business is a technical mark indicating the quality, use, shape, etc. of the designated goods or the designated service business, or that it is widely used relief or advertisement proposal

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

Kententna Mben Rober K. Carben Bec flush flush flush (Law Firm Central Law Firm, Attorneys Lee E-Ba et al., Counsel for the plaintiff-appellant)

The Commissioner of the Korean Intellectual Property Office

Patent Court Decision 2005Heo3895 Decided August 25, 2005

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

The grounds of appeal are examined.

Article 6(1) of the Trademark Act lists reasons why a trademark cannot be registered under subparagraphs 1 through 6, and furthermore, even if a trademark does not fall under subparagraphs 1 through 6, a trademark which does not enable consumers to obtain trademark registration, even though it does not fall under subparagraphs 7 through 7, may not obtain trademark registration. Whether a applied trademark or a applied service mark falls under Article 6(1)7 of the Trademark Act and thus has no distinctiveness is determined depending on whether ordinary consumers can recognize its source in relation to the designated goods or the designated service business (see Supreme Court Decision 96Hu979 delivered on February 28, 1997). Further, it cannot be deemed as falling under subparagraph 7 because the applied trademark or the applied service mark has no distinctiveness solely on the ground that it consists of the phrases or sentences made in several words, and it is inappropriate for consumers to obtain trademark registration under Article 6(1)7 of the Trademark Act to exclusively use it as an advertisement relief or advertisement that is commonly used, rather than indicating its source in relation to the designated goods or the designated service business.

Examining the reasoning of the judgment below in light of the aforementioned legal principles and the records, the Plaintiff’s trademark/service mark of this case is composed of four English English languages, such as “engine your,” and it is difficult to deny distinctiveness based on its meaning because ordinary consumers or traders are unable to have a sense of their meaning in light of the level of English distribution in Korea. Furthermore, even if ordinary consumers or traders can easily recognize their meaning, it is deemed that “day’s competitiveness is processed,” and even if the word “mal” or “mar” is included in the phrase, it is difficult to readily conclude that the designated goods in relation to the designated goods or service business, such as the quality, use, mode, or advertisement, etc. of the designated goods or service business, or the designated goods in relation to “technical consultation business related to Dog and cutting equipment shape,” among the designated goods in question, are difficult to recognize the source of the designated goods or the designated goods in relation to the designated goods or service business.

Nevertheless, the court below's decision to reject the application of this case's trademark/service mark is justified since its distinguishability is denied under Article 6 (1) 7 of the Trademark Act, based on different opinions. The judgment of the court below is erroneous in the misapprehension of legal principles as to the distinctiveness of a trademark, which affected the conclusion of the judgment, and the ground of appeal assigning this error has merit.

Therefore, the judgment below is reversed, and the case is remanded to the court below for a new trial and determination. It is so decided as per Disposition by the assent of all participating Justices on the bench.

Justices Jeon Soo-ahn (Presiding Justice)