[1] The criteria for determining whether a service mark is eligible for registration, and whether the examples of registration of other service marks can be the grounds for the registration of a specific service mark (negative)

[2] The scope of designated service business for which a service mark can be registered where a mark without a special distinction has acquired distinctiveness by use

[3] Whether a trademark falling under Article 6 (1) 7 of the Trademark Act may be registered in accordance with Article 6 (2) of the Trademark Act where a trademark has acquired distinctiveness by use (affirmative)

[4] The case affirming the judgment of the court below that the registered service mark "Std 011" is not recognized as distinctive in its composition, but it is recognized as a distinctive acquisition by use in relation to the telephone communications business and radio communications business among the designated service business, and that it does not fall under Article 7 (1) 1, 4, and 11 of the Trademark Act in the case of use in the above service business

[1] Article 6 (1) of the Trademark Act / [2] Article 6 (2) of the Trademark Act / [3] Article 6 (2) of the Trademark Act / [4] Article 6 (2), Article 7 (1) 1, 4 and 11 of the Trademark Act

[1] Supreme Court Decision 99Hu529 delivered on July 9, 1999 (Gong1999Ha, 1631), Supreme Court Decision 97Hu2453 delivered on October 26, 199 (Gong1999Ha, 2426), Supreme Court Decision 99Hu2907 delivered on April 21, 200 (Gong2000Sang, 1300), Supreme Court Decision 200Hu1436 delivered on March 23, 2001 (Gong2001Sang, 1049) / [2] Supreme Court Decision 2004Hu2109 Delivered on March 10, 206 (Gong2006Sang, 676) / [3] Supreme Court Decision 2003Hu371364 delivered on July 23, 2003

KS Telecom Co., Ltd. (Law Firm Southern River, Attorneys Lee Dong-ho et al., Counsel for the plaintiff-appellant)

[Defendant-Appellant] Ktwitel Co., Ltd. (Law Firm Gyeongpyeong, Attorneys Gangnam-gu et al., Counsel for defendant-appellant)

Patent Court Decision 2004Heo331 delivered on December 24, 2004

All appeals are dismissed. The costs of appeal are assessed against each party.

We examine the grounds of appeal.

1. Judgment on the Plaintiff’s grounds of appeal

A. As to the distinctiveness of the registered service mark of this case

According to the reasoning of the judgment below, the court below determined that the registered service mark (registration number No. 47239) of this case consisting of “slick 011” refers to the service’s nature and quality in terms of the transmission speed and the transmission speed of communications, and thus, it cannot be recognized as a new concept because the designated service mark “slick 01” is recognized as the communications network identification number of the telecommunications service and the service cannot be seen as a mark distinguishing the service. In addition, the court below determined that the designated service mark “slick 01” refers to the service’s nature and quality in terms of the transmission speed and the transmission speed of communications.

In light of the records, since the registered service mark of this case is a technical mark indicating the excellence of quality or efficacy in relation to the teleex communications business, its distinctive character cannot be recognized. The part "011" also is the same as the network identification number of mobile phones commonly used or largely used in daily life, and thus it is difficult to recognize the distinctiveness of other services. In addition, in light of the relevant provisions such as Articles 1 and 36 of the former Telecommunications Business Act (amended by Act No. 5564 of September 17, 1998), Articles 1, 8, 19 through 22 of the former Rules on the Management of Telecommunications Numbers (Notice No. 198-59 of the Information and Communications Network Notice) and Articles 1, 1, 8, and 19 through 22 of the former Telecommunications Number (amended by Act No. 5564 of Sep. 17, 199), it is difficult to recognize the exclusive telecommunications service mark that “the above registered service mark can be acquired as an exclusive telecommunications network-related part.”

In addition, whether a service mark is eligible for registration or not shall be determined individually in relation to the designated service business (see Supreme Court Decision 2000Hu1436, Mar. 23, 2001). The registration examples of other service marks cannot be the basis for the registration of a specific service mark (see Supreme Court Decisions 97Hu1269, Dec. 26, 1997; 97Hu2453, Oct. 26, 199); and the fact that the service marks consisting of the identification number of the communications network are registered in majority in Korea and abroad cannot be viewed as having distinctiveness in relation to the telecom telecommunications business, etc.

Therefore, the court below's decision is justified in determining that the registered service mark of this case is not recognizable in relation to the teleex Communications Business, and there are no errors in the misapprehension of legal principles as to the distinctiveness of the service mark, the violation of the rules of evidence, the incomplete hearing, and the omission of judgment, etc.

B. As to the acquisition of distinctiveness by the use of the registered service mark of this case

Even if, as a result of the use of a mark deemed to have no special distinction, consumers or traders recognize the distinctiveness as an identification mark indicating the source of service business and thus, the acquisition of distinctiveness by use is actually limited to the service business in which the service mark is actually used and thus, the service mark can only be registered, and any similar service business cannot be registered.

Examining the reasoning of the judgment below in light of the above legal principles and records, the court below is just in holding that the registered service mark of this case cannot be viewed as an identification mark indicating the source of the plaintiff's service business among general consumers in relation to the teleex communications business, etc. by the plaintiff's use, and there is no error of law such as misunderstanding of legal principles as to the acquisition of distinctiveness by the use of the service mark,

2. Judgment on the Defendant’s grounds of appeal

A. As to the acquisition of distinctiveness by the use of the registered service mark of this case

Article 6(1)7 of the Trademark Act means that even a service mark that does not fall under any of subparagraphs 1 through 6 of Article 6(1) of the Trademark Act means that a trademark with no special distinction cannot be registered. Thus, even if a mark appears to have no special distinction when objectively seen only its concept or the relationship with designated service business without considering its use condition, if the applicant’s use of the mark leads to the applicant’s recognition of the mark as indicating his service business among consumers or traders, it shall not constitute a service mark with no special distinction under Article 6(1)7 of the Trademark Act, barring any special circumstances. As a result, it does not interfere with obtaining the registration of a service mark, and it does not change merely because it does not include a service mark under Article 6(1)7 of the Trademark Act (see Supreme Court Decision 201Hu2863, Jul. 11, 2003).

Examining the reasoning of the judgment below in light of the above legal principles and the records, the court below acknowledged facts as stated in its reasoning based on the adopted evidence, and held that the registered service mark of this case is not recognized as distinctive in its composition, but it is just in holding that the registered service mark of this case acquired distinctiveness by the plaintiff's use as an identification mark indicating the source of the plaintiff's service by the plaintiff's use in relation to the designated service (hereinafter "tel communications business, etc."). There is no error in the misapprehension of legal principles as to the acquisition of distinctiveness by the use of the service mark, violation of the rules of evidence, or incomplete trial, as alleged in the grounds

Meanwhile, even if the registered service mark of this case is recognized as a distinctive acquisition in relation to the use of telephone communications business, etc., it is recognized as a distinctive acquisition as a whole with respect to the registered service mark of this case in a form consisting of the English language “slick” part and the Arabic figure “011” part, and it is not recognized as a distinctive acquisition by independent use with respect to the “slick” part or “011” part, which are its constituent elements, and thus, it cannot be deemed as a result of recognizing the Plaintiff’s exclusive right to use and prohibiting another’s free use, which is the identification number of communications network. There is no ground for appeal on this point.

B. As to Article 7(1)1, 4, and 11 of the Trademark Act

The court below held that if the registered service mark of this case is used for telephone communications business, etc., it cannot be deemed as a seal or mark for supervision or certification used by the public agencies of the State, and that the application, registration, or use of the registered service mark of this case may disturb public order or good customs by nullifying national policy and information and communication order, or that it may not be deemed that there is a concern for misleading consumers as to the quality of designated service business by deceiving consumers so that the information and communication network identification number may be perceived as a private property of a specific person. In light of the relevant Acts and subordinate statutes and records, the above judgment of the court below is just and acceptable, and there is no error in the misapprehension of legal principles as to Article 7 (1) 1, 4, and 11 of the Trademark Act, as argued in the Grounds for Appeal.

3. Conclusion

Therefore, all appeals are dismissed, and the costs of appeal are assessed against each party. It is so decided as per Disposition by the assent of all participating Justices on the bench.

Justices Kim Young-ran (Presiding Justice)