The case holding that the registered trademark " " cannot be deemed as a trademark which has no technical mark alone or other distinctive character, and it cannot be deemed as an "trademark which might mislead a specific person into the quality of goods" under Article 7 (1) 11 of the Trademark Act, and it does not constitute "a trademark which might mislead the person into the quality of goods"

The case holding that the registered trademark “” does not constitute “a trademark which might mislead a specific person about the quality of goods” as provided by Article 7(1)11 of the Trademark Act, on the ground that, in relation to the software containing a financial processing program, personal portable device (PPA), portable electronic calculator, etc., the technical mark consisting solely of a technical mark indirectly and indirectly pertaining to the function and use of the designated goods, or there is no other distinctive character, and it does not constitute “a trademark which is likely to mislead a person into the quality of goods” under Article 7(1)11 of the Trademark Act.

Article 6(1)3, 7, and 7(1)11 of the Trademark Act

Supreme Court Decision 94Hu623 delivered on December 9, 1994 (Gong1995Sang, 496) Supreme Court Decision 2000Hu3418 delivered on December 10, 2002 (Gong2003Sang, 404 delivered on June 23, 2005), Supreme Court Decision 2004Hu2871 Delivered on June 23, 2005, Supreme Court Decision 2005Hu2786 Delivered on July 28, 2006

Plaintiff Co., Ltd. (Law Firm Square, Attorneys Gyeong-soo et al., Counsel for plaintiff-appellant)

Defendant (Attorney Kang Dong-chul, Counsel for defendant-appellant)

April 2, 2009

1. The decision made by the Intellectual Property Tribunal on November 24, 2008 on the case No. 2007Da3424 is revoked.

2. The costs of the lawsuit are assessed against the defendant.

The same shall apply to the order.

1. Basic facts

A. The registered trademark of this case

(1) Marks:

(2) Date of application/registration decision/registration date/registration date/registration number: March 27, 2001/ June 7, 2002/ July 26, 2002/No. 526315

(3) Trademark right holder: plaintiff

(4) Designated goods: “The cash withdrawal machine (ATM), software containing a financial processing program, personal portable device (PPA), portable electronic calculator, computer, computer memory device” in Chapter 9 of the classification of goods.

B. Details of the instant trial decision

The Defendant filed for a registration invalidation trial against the Plaintiff on the ground that “this case’s registered trademark is a technical mark consisting solely of a mark indicating its efficacy, use, and shape in a common way, which is the designated goods, and it is not possible for consumers to distinguish whose business the goods are indicated, and that it is likely that ordinary consumers mistake the quality of the goods when considering the remainder of the designated goods, and thus, it should be invalidated as it falls under Articles 6(1)3 and 7(1)11 of the Trademark Act.” The Intellectual Property Tribunal deliberated on the above case’s request for a trial on November 24, 2008 on the ground that “The registered trademark of this case constitutes a technical mark consisting solely of a mark indicating its nature (use, form) in a common way in relation to all the designated goods, and on the ground that it cannot be identified by the Defendant’s request for a trial decision on the goods related to its business.”

[Reasons for Recognition] Evidence No. 1-1, Evidence No. 2, and the purport of the whole pleadings

2. Whether the trial decision of this case is legitimate

A. Whether it falls under Article 6(1)3 and 7 of the Trademark Act

(1) Criteria for determination

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, efficacy, use, etc. of goods in a common way shall be used. Such technical trademark needs to be used even by anyone, and if it is intended to use it, it is hard to distinguish the trademark from other goods of the same kind. Thus, it is objectively determined in light of the concept of the trademark, the relationship with the designated goods, the situation of the trading society, etc., and it is not possible for ordinary consumers or traders to recognize that the trademark does not indicate the mere quality, efficacy, use, etc. of the designated goods when considering the overall composition of the trademark (see Supreme Court Decision 2005Hu2595, Jan. 26, 2006; Supreme Court Decision 2005Hu259567, Jul. 28, 2006).

In addition, Article 6 (1) of the Trademark Act provides that "a trademark other than those as referred to in subparagraphs 1 through 6, which does not enable consumers to recognize whose goods it indicates in connection with a person's business" under subparagraph 7 of the same Article. This provision provides that even if a trademark does not fall under any of subparagraphs 1 through 6, a trademark with no special distinction between one's own trademark and another's trademark cannot be registered. Therefore, whether a trademark with a special distinction is a trademark shall be determined depending on which general consumers can recognize the source of the goods in relation to certain goods (see Supreme Court Decision 2004Hu2871 delivered on June 23, 2005).

(2) Determination:

Examining whether the registered trademark of this case falls under Article 6 (1) 3 and 7 of the Trademark Act when considering all the designated goods in light of the above legal principles, the registered trademark of this case is a character trademark consisting of “Mini” and “Bank” with the intent of “a bank,” “bank,” and “Bank” with the intent of “a bank,” and in light of the level of English diffusion in Korea, ordinary consumers or traders recognize “aTM” as “small bank” in relation to the designated goods of the registered trademark of this case, and “a small storage store storing information, programs, etc.” and “a small storage store storing information, programs, etc.” and the meaning of “a small bank” and “a small storage store storing information, programs, etc.” appears to indicate or emphasize the nature of the designated goods of the registered trademark of this case. When ordinary consumers or traders think of the designated goods, anyone can not be directly perceived as indicating the automatic use of machinery or effect of the designated goods, etc., such as machine or software storage device or software.

The Defendant asserts that the registered trademark of this case is a trademark with no distinctive character that combines “Mini” indicating the size of the designated goods as “Bank” without distinguishing the place where the designated goods are sold, sold, manufactured, or provided services, but it does not form a new concept by combining the two words. However, in light of the designated goods, it is difficult to view that the part of “Bank” of the registered trademark of this case is a trademark with no distinctive character, or that it is a mark with no distinctive character indicating the place where the goods are sold, manufactured, or provided. Thus, the Defendant’s above assertion is without merit.

Therefore, the registered trademark of this case is not only to the extent that indirectly related to the function or use of the designated goods, but also to the extent that the registered trademark of this case is indirectly connected to the designated goods. ① The registered trademark of this case includes a number of trademarks including “BNK” (Evidence No. 8-1 through 95 of the evidence No. 8), such as “NK” (EASYK), “N bank bank, disc bank, COM andBNK,” etc., designated goods:

B. Whether it falls under Article 7 (1) 11 of the Trademark Act

(1) Criteria for determination

For the purpose of Article 7 (1) 11 of the Trademark Act, the term "trademark which might cause the misunderstanding of the quality of goods" means a trademark, in itself, which is likely to cause the misunderstanding of consumers as it has characteristics different from its original nature. In order to deem that a specific trademark is likely to cause the misunderstanding of quality of goods, the composition of the trademark shall not be deemed to cause the misunderstanding of quality of goods. For example, a certain economic relation or defective relation between goods recognized by the general public and goods using the trademark in reality, for example, a relation between the two goods belonging to the same system or in terms of materials, use, appearance, method, sale, etc., and a relation as to the characteristics of the goods shall be recognized to the extent that the misunderstanding of quality is likely to cause the misunderstanding or confusion of the quality of goods. It shall not be deemed that there is a concern that the determination of whether there is such concern may cause the misunderstanding of quality of goods shall be based on the trade norms (see Supreme Court Decision 200Hu234, Dec. 29, 1994).

(2) Determination:

Examining whether the registered trademark of this case falls under Article 7 (1) 11 of the Trademark Act in relation to the software containing a financial processing program (PPA), personal portable device (PPA), portable electronic calculator, computer and computer memory device among the designated goods, as seen above, general consumers or traders recognize the registered trademark of this case as a small storage place storing information or programs, etc. with respect to the designated goods of the registered trademark of this case, and thus, it cannot be said that the registered trademark of this case is "B Bank" because it is the mark "B Bank", and even if the registered trademark of this case is perceived only as a "small bank", it cannot be said that it belongs to the designated goods of the registered trademark of this case, and therefore, it cannot be said that it belongs to the system identical with the designated goods of the registered trademark of this case. Thus, it cannot be said that ordinary consumers might mislead consumers of the designated goods of this case as to the goods of this case due to the registered trademark of this case.

Therefore, in relation to the above designated goods, the registered trademark of this case does not constitute “a trademark likely to mislead or mislead the quality of goods” under Article 7(1)11 of the Trademark Act.

C. Sub-committee

Therefore, the instant registered trademark does not fall under Articles 6(1)3 and 7(1)7, and Article 7(1)11 of the Trademark Act, and thus, the instant trial decision, which concluded otherwise, is unlawful.

3. Conclusion

Therefore, the plaintiff's claim seeking the revocation of the trial decision of this case is reasonable, and it is so decided as per Disposition with the assent of all participating Justices.

Judges Kim Jong-hwan (Presiding Judge) and Kim Jong-soo