[1] Criteria for determining whether a trademark constitutes "a trademark consisting solely of a mark indicating the quality, efficacy, etc. of designated goods in a common way" under Article 6 (1) 3 of the Trademark Act

[2] The case holding that since the applied service mark " " constitutes a technical mark, it cannot be registered under Article 6 (1) 3 of the Trademark Act

[1] Articles 2(3) and 6(1)3 of the Trademark Act prohibit the registration of a service mark consisting solely of a mark indicating in a common way the origin, quality, efficacy, use, time, etc. of a service business from being used, should be determined objectively by taking into account the concept of the service mark, the relation with the designated service business, the circumstances of the transaction society, etc., as it is necessary for any person to use the service mark as it is necessary to indicate it in the course of the distribution of the ordinary service business, and it is necessary for any person to use it, and if such service mark is allowed to be used exclusively by any person, it is difficult to distinguish it from other person’s own service business.

[2] The case holding that since the pending service mark " " " constitutes a technical mark consisting solely of a mark indicating the nature of "electronic gambling machinery, electronic lottery machines, gambling and lottery computer function test, inspection, research business, counseling business," etc. in the designated service business, since it is directly sense that ordinary consumers can use "gambling or computer game" as a whole, it constitutes a technical mark consisting solely of a mark indicating the nature of "electronic gambling machine, electronic lottery machine, gambling and lottery function" in a common way, it cannot be registered pursuant to Article 6 (1) 3 of the Trademark Act

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

[1] Supreme Court Decision 2002Hu1140 decided Aug. 16, 2004 (Gong2004Ha, 1552) Supreme Court Decision 2005Do5358 decided Oct. 14, 2005 (Gong2005Ha, 1828) Supreme Court Decision 2004Hu2246 decided Apr. 14, 2006

Gamining Letoo Lease International, Artificial Roco World (Law Firm Central, Attorney Jeong Jae-in, Counsel for the plaintiff-appellant)

The Commissioner of the Korean Intellectual Property Office

May 15, 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 February 11, 2009 on the case No. 2008 Won5980 shall be revoked.

1. Basic facts

[Reasons for Recognition] Unsatisfy, Gap evidence 1, 2, Eul evidence 1-4

A. The plaintiff's applied service mark

(1) Date/ Number of the application: June 13, 2007 / No. 41-207-16148

(2) Composition:

(3) Designated service business: a test business on the functions of electronic gambling machines/electronic lottery machines/ gambling and lottery computer in category 42 of service business classification; an inspection business on the functions of electronic gambling machines/electronic lottery machines/ gambling/ gambling and lottery computer; a research business on the functions of electronic gambling machines/electronic lottery machines/ gambling/ gambling and lottery computer; a consultation business on the functions of electronic gambling machines/electronic lottery machines/ gambling/ gambling and lottery computer; and a consultation business on the functions of electronic gambling machines/electronic lottery machines/ gambling/ gambling and lottery computer (teing, singing, research and authorization), and six other categories (hereinafter referred to as “the Plaintiff’s pending service mark” in this case).

B. Details of the instant trial decision

(1) On May 23, 2008, the Korean Intellectual Property Office rendered a decision to refuse the registration of the instant pending service mark on the ground that the pending service mark constitutes a technical mark in relation to the designated service business, and falls under Article 6(1)3 of the Trademark Act, and that if the pending service mark is used for the designated service business, it is likely for ordinary consumers to misunderstand the quality of the designated service business as it is provided by an authorized organization, etc. in relation to international gambling, and thus, it cannot be registered on the ground that the registered service mark falls under Article 7(1)11 of the Trademark Act. Accordingly, on June 24, 2008, the Plaintiff filed a petition for an appeal against the said decision to refuse the registration of the pending service mark.

(2) On February 11, 2009, the Intellectual Property Tribunal dismissed the Plaintiff’s request for a trial on the ground that the pending service mark constitutes a technical mark consisting solely of a mark indicating the nature of the designated service in a common way, and thus, it cannot be registered without further review as to whether it falls under Article 7(1)11 of the Trademark Act.

2. Whether the pending service mark cannot be registered as a technical mark

The Plaintiff asserts that the decision of the Korean Intellectual Property Office rejecting the registration of the instant pending service mark is unlawful, since the pending service mark is not a technical mark, and it does not fall under Article 6(1)3 of the Trademark Act, and it does not fall under Article 7(1)11 of the Trademark Act because consumers are unlikely to mislead consumers as to the quality of designated service business. Accordingly, the issue of the instant case is whether the pending service mark constitutes a technical mark under Article 6(1)3 of the Trademark Act, and ② whether the pending service mark constitutes a mark likely to mislead consumers as to the quality of designated service business under Article 7(1)11 of the Trademark Act, and the issue of convenience ① is examined first.

A. Whether it constitutes a technical mark

(1) Determination criteria

Article 2(3) and Article 6(1)3 of the Trademark Act provides that no registration of a service mark consisting solely of a mark indicating in a common way the origin, quality, efficacy, use, time, etc. of a service business shall be obtained. The above-mentioned service mark needs to be used even if it is indicated in the distribution process of the ordinary service business and it is necessary for anyone to use it, and it is intended to use it, so it is difficult to distinguish it from others’ public interest request and if it is allowed to allow a specific person to use it, it is difficult to distinguish it from others’ relationship with the same service business. Thus, the determination of which service mark constitutes it shall be made objectively by taking into account the concept of the service mark, the relation with the designated service business, the circumstances of the transaction society, etc. (see Supreme Court Decision 2004Hu2246, Apr. 14, 2006).

(2) Specific determination

The term “GAMING”, the pending service mark of this case, is a combination of characters and letters written in the order of street, with the English language “GAMING” and “LABOTRIES” and “INTRAL”. However, according to the respective descriptions in subparagraph 1, 2, and 3 of subparagraph 2-3, the term “GAMING” means “gambling, internal, video [computer], etc.,” and the term “LABOTRIES” is a multiple type of “LABOTRALSYY” and the term “INSTNALALALALALALALALALALALALALALALALALALALALALALNALALAL” can be recognized as having the meaning of “international, international, international organization, international enterprise, etc.”

According to the above facts, the pending service mark of this case is classified as the "international laboratory or research institute on gambling or computer game" as a whole by ordinary customers. Thus, in the event that the pending service mark of this case is used in the designated service business "testing or research on gambling or computer game" as a test, inspection, research, counseling, etc. on the function of electronic gambling/electronic lottery machines/electronic lottery tickets/ gambling and computer for rehabilitation," which is a designated service business whose contents are "testing or research on gambling or computer game", general consumers are recognized as having the nature of the above designated service business as it is. Accordingly, the pending service mark of this case constitutes a technical mark consisting solely of a mark indicating the nature of the above designated service business in a common way, and thus, it cannot be registered pursuant to Article 6 (1) 3 of the Trademark Act.

B. Determination on the Plaintiff’s assertion that the distinctiveness by use was acquired

The Plaintiff asserts that, even if the pending service mark of this case constitutes a technical mark in relation to the designated service business, the Plaintiff only uses the pending service mark exclusively for the designated service business, and thus, the pending service mark of this case is clearly recognized among consumers as the Plaintiff’s service mark in relation to the designated service business, the decision of the Korean Intellectual Property Office rejecting the registration is unlawful.

On the other hand, since the country in which the Plaintiff seeks to register the applied service mark of this case is Korea, the issue of whether the applied service mark of this case is considerably recognized as the Plaintiff’s service mark in relation to the designated service business ought to be examined on the basis of Korean consumers. However, since the evidence Nos. 3-1 through 7, Nos. 4, 5, and 6 are merely magazines or articles without any evidence to acknowledge that both were distributed in Korea, it cannot be recognized that the applied service mark of this case was used as the Plaintiff’s service mark in relation to the designated service business. As shown in the above evidence, even if the applied service mark of this case was used in Korea as the Plaintiff’s service mark in relation to the designated service business, the period of use, mode of use, and scale of use of the applied service mark of this case as shown in these evidence can not be seen as being used to the extent that the applied service mark of this case was considerably recognizable among consumers as the Plaintiff’s service mark in relation to the designated service business. Accordingly, it is difficult to accept the Plaintiff’s above assertion.

C. Sub-committee

As seen above, the pending service mark of this case cannot be registered as a technical mark in relation to the testing, inspection, research, counseling, etc. of the functions of computers for Embling Machinery/Electronic Machines/Membling and Lottery Tickets among its designated service business, and even if there are many designated service businesses, such as the pending service mark of this case, even if there are many designated service businesses, the registration of the pending service mark of this case must be rejected (see Supreme Court Decision 2004Hu2109, Mar. 10, 2006). Thus, the registration of the pending service mark of this case shall be entirely rejected without further review as to whether the pending service mark constitutes a technical mark in relation to other designated service businesses (see Supreme Court Decision 2004Hu2109, Mar. 10, 2006). Accordingly, a decision rejecting the registration of the pending service mark of this case is justifiable.

3. Conclusion

Therefore, without further review as to the remaining issues, the trial decision of this case is legitimate as the conclusion is identical to this conclusion. Thus, the plaintiff's claim seeking the revocation is dismissed as it is without merit. It is so decided as per Disposition.

Judges Noh Tae (Presiding Judge)