[1] In a case where a trademark consisting solely of a conspicuous geographical name under the former Trademark Act is remarkably recognizable among consumers by long-term use, whether a trademark can be acquired by use even if the trademark registration is not permitted (affirmative)

[2] The case holding that the two trademarks are similar inasmuch as the trademark " and the cited trademark "" "CAMBRDGE, which are included in common", obtained distinctiveness through use as they have been widely recognized among consumers by long-term use, although they have a conspicuous geographical name,

[1] Even if trademark registration is not allowed on the ground that a trademark consisting solely of a conspicuous geographical name under the former Trademark Act (amended by Act No. 6414 of Feb. 3, 2001), it is merely a fact that a trademark consisting solely of a conspicuous geographical name cannot be registered as a trademark under the former Trademark Act even if the trademark is obviously recognizable among consumers by use, and it does not deny the acquisition of distinctiveness by use itself.

[2] The case holding that the trademark " and the cited trademark "" "CAMBRDGE, which are commonly included in the trademark "," acquired distinctiveness through use as a result of a long-term use, although they have a conspicuous geographical name but have been remarkably perceived among consumers, and thus both trademarks are similar.

[1] [2] Article 6 (2) of the former Trademark Act (amended by Act No. 6414 of Feb. 3, 2001); Article 7 (1) 7 of the Trademark Act

Campbam Co., Ltd. (Law Firm Maw Co., Ltd., Counsel for the plaintiff-appellant-appellant)

North Asia Development Limited Corporation (Defendant prior to the correction: Silopa Co., Ltd.) (Patent Attorney Song-chul, Counsel for defendant-appellant)

August 29, 2003

1. The decision made by the Intellectual Property Tribunal on March 28, 2003 on the case No. 2002Dang2283 shall be revoked;

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

The same shall apply to the order.

1. Basic facts

[Evidence: Evidence No. 1 to 3]

A. The registered trademark of this case

(a) Registration number: No. 518695;

(2) Date of application / Date of registration: July 5, 2000 / April 25, 2002

(3) Marks:

(4) Person entitled to registration: The defendant (the first person was the right of Silopia Co., Ltd.) and the transfer registration is made to the defendant on December 3, 2002).

(5) Designated goods: Article 6 [Attachment 1] of the Enforcement Rule of the Trademark Act 25 of the classification of the goods of category 25.

(b) The cited trademarks;

(1) A cited trademark 1

(a) Registration number: No. 316493;

(B) Date of application / Date of registration: January 25, 1994 / June 30, 1995

(C) Marks:

(D) Person Entitled to register: Plaintiff

(e) Designated goods: Article 6 [Attachment 1] [Attachment 1] of the former Enforcement Rule of the Trademark Act (amended by the Ordinance of the Ministry of Trade, Industry and Energy No. 83 of February 23, 1998), the Doz. 45 [Attachment 1] of the Product Classification 45], Schlage, Obbercot, anti-cot, locked, Baz, brut, low-sturg, brug, sweet, sweet, Kaz, Kaz., Kaurdi, Kaurg, Kaurgthr, Kashts, sports strts, sports air conditioners, postons, swimmings, swimmings, swimmings, clothes, clothes, clothes, shurgs, debris, debris, tags, debris, debris, knits.”

(2) A cited trademark 2

(a) Registration number: Unregistered;

(b) Date of application / Date of registration: Unregistered

(C) Marks:

(D) User: Plaintiff

(e) Goods using: “Personal Uniform”;

C. Details of the instant trial decision

The Plaintiff filed a petition for a trial on invalidation of the trademark under Article 71(1)1 of the Trademark Act, alleging that the registered trademark of this case against Sipya Co., Ltd. is identical or similar to the well-known and well-known cited trademark, and that the registration should be invalidated as it falls under Article 7(1)7, 9, 10, and 11 of the Trademark Act. The Intellectual Property Trial and Appeal Board rendered a trial on invalidation of the trademark under Article 71(1)1 of the Trademark Act, and the Korean Intellectual Property Trial and Appeal Board rendered a decision on March 28, 2003 to dismiss the Plaintiff’s petition for a trial on the grounds as described in paragraph (d) below.

D. Summary of the grounds for the instant trial decision

(1) Whether Article 7(1)7 of the Trademark Act is applicable

With respect to whether the registered trademark of this case and the cited trademarks are similar, the overall appearance of the trademark of this case is different from the same figure and text, and the name and concept are different. Since both the registered trademark of this case and the cited trademarks have a common element of "CAMBRDGE", it can be simply called and conceptualized by "camb". However, the above "CAMBRDDGE" portion is one of the passive requirements for trademark registration under Article 6 (1) 4 of the Trademark Act, and it cannot be viewed as having distinctiveness since the distinctive character by using a conspicuous geographical name was recognized as trademark registration requirements only after the date of application of the trademark of this case ( July 6, 200), and since the trademark of this case has no distinctive character by using a conspicuous geographical name at the time of application of the registered trademark of this case, it cannot be seen as the trademark of this case and the remaining part of "CAMDGE" portion can not be seen as excluding the registered trademark of this case and the registered trademark of this case cannot be seen as the trademark of this case.

(2) Whether it falls under Article 7 (1) 9 through 11 of the Trademark Act

In order to fall under any of the subparagraphs 9 through 11 of Article 7 (1) of the Trademark Act, both trademarks are premised on the possibility of misconception and confusion among consumers because they are identical or similar to one another. Thus, the registered trademark of this case and the cited trademark of this case are not similar to each other, and thus no longer necessary to look at the remaining points, the registered trademark of this case does not fall under Article 7 (1) 9 through 11 of the Trademark Act.

(3) Therefore, we cannot accept the Plaintiff’s assertion that the registered trademark of this case falls under Article 7(1)7, 9 through 11 of the Trademark Act and the registration should be invalidated.

2. The parties' assertion on the legitimacy of the instant trial decision

A. Grounds for revocation of the Plaintiff’s trial decision

(1) From March 21, 1977 to March 21, 1977, the Plaintiff has continuously used the CAMBRIDDGE as a core hybrid brand, and in various media, the cited trademarks are referred only to CAMBRIDGE, and general consumers are also recognized as the Plaintiff’s brand. In light of the fact that the quoted trademarks are widely known and well-known to domestic general consumers.

(2) The “CAMBRIDDGE” portion constitutes a conspicuous geographical name, and thus cannot be registered as a trademark pursuant to Article 6(1)4 of the Trademark Act, but it cannot be readily concluded that there is no distinctiveness solely for such reason. Rather, the above “CAMBRDGE” portion is widely known to domestic ordinary consumers as indicating the cited trademarks or the new type of trademark on which it is indicated, thereby obtaining distinctiveness by use.

(3) The registered trademark 1 of this case and the cited trademark 1 of this case contain both "CAMBRDDGE" parts, and as long as the parts are not combined with a series of indivisible parts, both trademarks are separated from "CAMBRDDGE" and thus, they are similar to each other and designated goods. Thus, the registered trademark of this case constitutes Article 7(1)7 of the Trademark Act.

(4) The registered trademark 2 of this case and the cited trademark 2 of this case contain both “CAMBRDGE” parts, and their marks are similar to each other and designated goods. Thus, the registered trademark of this case constitutes Article 7(1)9 of the Trademark Act.

(5) Article 7 (1) 10 of the Trademark Act applies in cases where, even though a well-known trademark cannot be seen as a similar trademark, any similar trademark is deemed to have been easily connected with another person's well-known trademark, goods, etc. or to have close connection with another person's trademark or goods, etc., and thus, may cause mistake or confusion as to the origin of goods. Thus, the trial decision of this case, which held that the trademark does not fall under the above provision merely because it is not similar to the trademark of this case without examining the well-known and well-knownness of the cited trademark, is unlawful.

(6) Since the cited trademarks are recognized as at least the source of a specific person with respect to a new document, the registered trademark of this case using similar marks for similar designated goods constitutes Article 7(1)11 of the Trademark Act.

B. Defendant’s assertion

(1) According to Article 6 (2) of the former Trademark Act (amended by Act No. 6414, Feb. 3, 2001; hereinafter the same) which was in force at the time of the filing date of the trademark of this case, the term CAMBRIDGE or CAMDGE is a conspicuous geographical name and has no distinctive character, and there was no distinctive character for a trademark consisting solely of a conspicuous geographical name, and the above term CAMBRIDDGE portion, including the above term CAMGE portion, is not recognized, in light of the fact that the trademark of this case is registered as a trademark notwithstanding the provision of the cited trademark 1, which is the prior registered trademark.

(2) The registered trademark of this case and the cited trademarks are different from their overall appearance, and if they are compared with the remaining parts except the above "CAMBRIDDGE" portion without distinctiveness in their titles and concepts, both trademarks are not similar as a whole.

(3) Article 7(1)9 through 11 of the Trademark Act assumes that both trademarks are identical or similar to one another and thus likely to mislead or confuse consumers. However, insofar as the registered trademark of this case and the cited trademark of this case are not similar to each other, the registered trademark of this case does not fall under Article 7(1)9 through 11 of the Trademark Act without the need to examine whether the registered trademark of this case is well-known and well-known.

(4) The evidence submitted by the Plaintiff alone is insufficient to recognize that the cited trademark is well-known and well-known.

3. Determination on the legitimacy of the instant trial decision

A. Whether the registered trademark of this case constitutes Article 7(1)7 of the Trademark Act

(1) Whether the registered trademark of this case and the cited trademark 1 are similar

The similarity of trademarks shall be determined by whether there is a concern for mistake or confusion as to the origin of the goods by observing two trademarks used for the same kind of goods in terms of appearance, name, concept, etc. in general, objective, and apart from the perspective of appearance, name, and concept, etc., and on the basis of a direct perception that ordinary consumers or traders feel with respect to the trademark. The combination trademark consisting of each constituent part of letters, letters, or diagrams is not necessarily called and conceptualized by the entire constituent part, but can be called and conceptualized simply by only a part of the constituent part unless it is indivisible to the extent that each constituent part is deemed natural if the separate observation of the constituent part is made, and if it is possible to think two or more names or concepts from one trademark, and if it is deemed that one of them is identical or similar to another's trademark, the two trademarks are similar (Supreme Court Decision 200Hu815 Decided 27, 200).

Examining the appearance of the registered trademark of this case and the cited trademark 1, the registered trademark of this case is composed of English persons, "MNI CABRDDGE" under the name of the English persons, similar to king, and the cited trademark 1 is a trademark consisting of two trademarks, and the Korean characters, "CAMBRID ME MESS" and "a group member bus with camping mileage," which are similar to the original form, are composed of two trademarks in sequence. The overall appearance of both trademarks is different.

As to the name and concept of both trademarks, since each figure of both trademarks cannot be deemed to have a special name or concept, both trademarks shall be separated from the remainder of the letters except the figure portion and shall be called and conceptualized. Meanwhile, the letter of the trademark of this case shall be combined with CAMBRDGE and CAMBRDDGE, and the letter of the cited trademark 1 shall be combined with CAMBRDDGE and CAMBDGE, and referring to 'cambb' and 'camb' as a whole, each part of each part of the above letters shall be separated from each other. If each part of the above letters is separately observed and observed, there is no reason to see that it is indivisible to the extent that it is natural in the trade, and since such combination does not form a special concept, both trademarks shall be separated from each part of the above letters and shall be separated from the concept of "CAMBDGE" and the concept of each part shall be the same.

피고는 양 상표에 공통으로 포함된 'CAMBRIDGE' 부분이 현저한 지리적 명칭이므로 식별력이 없어 요부가 될 수 없다고 주장하므로 살피건대, 을 1, 2호증의 각 1 내지 3의 각 기재에 의하면 영문자 'CAMBRIDGE'는 '영국 남동부의 도시, (그 도시의) CAMBRIDGE 대학'을 뜻하는 단어인 사실을 인정할 수 있고 반증이 없고, 상표법 제6조 제1항 제4호 는 현저한 지리적 명칭만으로 된 상표는 상표등록을 받을 수 없다고 규정하고 있기는 하나, 한편 갑 4호증의 1, 2, 갑 5 내지 8호증, 갑 9호증의 1, 2, 갑 10 내지 12호증의 각 기재 및 변론의 전취지를 종합하면 원고는 1977. 3. 21.부터 자신이 제조·판매하는 신사복에 '캠브리지(CAMBRIDGE)'라는 상표를 사용하기 시작하였고, 1987. 9. 11.부터는 신사복, 양복바지 등 남성의류에 '캠브리지 멤버스(CAMBRIDGE MEMBERS)'라는 상표를 사용하기 시작하였으며, 1994. 1. 25. 위 '캠브리지 멤버스(CAMBRIDGE MEMBERS)'라는 문자를 포함하여 구성한 인용상표 1에 대하여 상표등록출원을 하여 1995. 6. 30. 원고 명의로 상표등록을 마친 후 이를 신사복, 캐주얼의류 등에 현재까지 사용하여 온 사실, 원고는 1977. 3. 21. 위 '캠브리지(CAMBRIDGE)'라는 상표를 사용하기 시작하면서부터 그 상표를 사용한 제품에 대하여 지속적으로 광고를 하여 왔고, 인용상표 1의 홍보를 위하여 1998.경에는 약 6억 원을, 1999. 및 2000.경에는 각각 약 13억 원을 광고비로 지출한 사실, 컨슈머뉴스가 1999. 10.경 실시한 '99 글로벌 소비자 선호대상' 설문조사 결과 남성정장 부문에서 인용상표 1을 부착한 제품이 대상으로 선정되었고, 한국섬유경제신문이 1999. 11. 20.부터 같은 달 25.까지 실시한 '26-37세 남성소비자의 구매행동 조사'에서 현재 보유하고 있는 남성복 브랜드, 자주 입는 남성복 브랜드, 구매희망 남성복 브랜드 부문에서 모두 인용상표 1이 1위로 선정되었으며, 한국리서치가 1999. 12. 17. 실시한 '99 소비자 주권 대상' 조사 결과 인용상표 1을 부착한 제품이 갤럭시, 맨스타 등 다른 상표들보다 고객만족도가 높고 이미지가 좋은 것으로 나타났고, 우먼타임스라는 잡지사가 2001. 2.경 실시한 '여성소비자가 뽑은 최고 명품 대상' 설문조사 결과 남성정장 부문에서 인용상표 1을 부착한 제품이 최고 명품 대상으로 선정된 사실, 인용상표 1은 각종 언론매체에서 원고의 신사복 등 남성 의류에 관하여 '캠브리지 멤버스'라는 명칭 외에 그 약칭인 '캠브리지'만으로도 자주 호칭되었고, 리써치 인터내셔날 코리아(Research International Korea)가 2001. 7. 2.부터 같은 달 14.까지 실시한 소비자들의 인식 조사 결과 전체 응답자의 86%가 '캠브리지 멤버스'를 인지하고 있었고 전체 응답자의 95.3%가 '캠브리지'를 원고의 남성 의류 브랜드로 인지하고 있었던 것으로 나타나는 등 인용상표 1 및 그 약칭인 '캠브리지(CAMBRIDGE)'는 국내 남성 의류 시장에서의 인지도, 시장점유율 등에서 선두권을 유지하고 있는 사실을 인정할 수 있고 반증이 없는 점에 비추어 볼 때 인용상표 1 및 그 약칭인 '캠브리지(CAMBRIDGE)'는 원고에 의하여 오랫동안 꾸준히 사용되어 옴으로써 거래자나 일반 수요자들 사이에 원고가 제조·판매하는 신사복 등 남성 의류 상품을 표시하는 상표로 널리 인식된 것으로 보이므로, 이 사건 등록상표 및 인용상표 1에 공통으로 포함된 'CAMBRIDGE' 부분이 그 지정상품에 대한 관계에서 현저한 지리적 명칭이라는 이유만으로 식별력이 없다고 볼 수 없으므로, 위 주장은 이유 없다.

In other words, the defendant asserts that the trademark consisting solely of a conspicuous geographical name under the former Trademark Act, which had been in force at the time of application for the trademark of this case, is not recognized as distinctive character by the use, and thus, it cannot be recognized as a distinctive character by the "CAMBRDDGE," which is a part of the trademark of this case. However, even if trademark registration is not permitted by the ground that the trademark consisting solely of a conspicuous geographical name under the former Trademark Act was acquired by use, it is merely a geographical name that cannot be registered as a trademark under the former Trademark Act, even if the trademark consisting solely of a conspicuous geographical name is recognized among consumers by use, and it does not deny the acquisition of distinctiveness by use.

(2) Whether the registered trademark of this case and the cited trademark 1 are similar to the designated goods

The designated goods of the registered trademark of this case and the cited trademark 1 are clothes, such as clothes, shoes, and caps, and decorations directly related thereto, and the use, quality, producers, sales channels, and consumer scope. Thus, the designated goods of both trademarks are identical or similar to each other.

(3) Therefore, the instant registered trademark is similar to the cited trademark 1, and its name and concept are likely to cause misconceptions or confusions among ordinary consumers or traders as to the source of designated goods. Thus, both trademarks constitute similar trademarks, and the designated goods are also identical or similar to each other. Thus, the instant registered trademark constitutes Article 7(1)7 of the Trademark Act.

B. Sub-committee

Therefore, as long as the registered trademark of this case falls under Article 7 (1) 7 of the Trademark Act, it cannot be registered as trademark without examining whether it falls under Article 7 (1) 9 through 11 of the remaining Trademark Act, and the decision of this case, which has different conclusions, is unlawful.

4. Conclusion

Therefore, the plaintiff's claim of this case is reasonable, and it is so decided as per Disposition.

Judges Cho Yong-ho (Presiding Judge)