[1] The existence of distinctiveness of a registered trademark (affirmative) and whether the above legal principles also apply to a service mark where the registered trademark contains a part of which distinctiveness has been acquired by including a long-term use of the registered trademark, and where the distinctiveness already acquired has not been lost by combining other parts (affirmative)

[2] In a case where Gap University Industry-Academic Cooperation Foundation filed an appeal for invalidation of registration against Eul school juristic person entitled to registration of " " " of the registered service mark " on the ground that the registered service mark constitutes Article 6 (1) 4 and 7 of the Trademark Act, the case holding that the judgment below erred by misapprehending legal principles on the ground that the registered service mark cannot be deemed as having no distinguishability of the registered service mark from the registered service mark as a whole

[1] Where a mark identical to a mark which has no or weak distinctiveness among the composition of a registered trademark has been used for a long time in a trade society, and where it is recognized considerably among consumers as to whose business the trademark had been registered before its registration as to the goods used, such part has distinctiveness as to the goods used. Thus, in a case where, as such, the part acquired distinctiveness is included as it is, and where the distinctiveness already acquired is not lost due to the combination with other components, the registered trademark cannot be said to have no distinctiveness as to the goods used as a whole, and such legal principle applies likewise to service marks pursuant to Article 2(3) of the Trademark Act.

[2] In a case where Gap University and Industry Cooperation Foundation filed an appeal for invalidation of the registration against Eul school juristic person entitled to registration of " "" on the ground that the registered service mark constitutes Article 6 (1) 4 and 7 of the Trademark Act, the case holding that the judgment below erred in the misapprehension of legal principle as to the designated service business since the part of " "" in the composition of the registered service mark is merely the abbreviation of "Gyeongnam-do", which is a conspicuous geographical name, and it cannot be viewed as having distinctiveness since it is nothing more than the abbreviation of "Gyeongnam-do" and "university" which is an ordinary name, but it has been widely recognized as indicating the service business related to Eul school juristic person's business until the date of a long-term registration decision as a result of its use in the designated service business, and the registered service mark, including the above part "," which acquired distinctiveness, has become distinctive as to the designated service business in which the mark was used, and it cannot be seen as a combination of the part "KYGNM UNIVIVIVY" and the part "".

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

[1] Supreme Court Decision 2005Hu2977 Decided May 15, 2008

Gyeong University (Patent & Multi-Korean Patent Attorney Park Jong-chul et al., Counsel for the plaintiff-appellant)

School Foundation (Law Firm LLC et al., Counsel for the defendant-appellant)

Patent Court Decision 2010Heo8191 Decided July 8, 2011

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

The grounds of appeal are examined (to the extent of supplement in case of supplemental appellate briefs not timely filed).

1. As to whether a registration invalidation trial constitutes an interested party

In light of the records, the defendant filed for a registration invalidation trial against the plaintiff on the ground that the plaintiff's registered service mark (registration No. 1 omitted) " " "" is identical or similar to the registered service mark (registration No. 2 omitted) of this case. At the time of the decision of this case, the plaintiff has a direct interest in the extinguishment of the registered service mark of this case.

Therefore, the plaintiff constitutes an interested party entitled to file a registration invalidation trial against the registered service mark of this case, and there is no error in the misapprehension of legal principles as to interested parties in the registration invalidation trial, as otherwise alleged in the ground of appeal.

2. As to whether the registered service mark of this case has a distinctive character

Where a mark identical to a mark that has no or weak distinctiveness among the composition of a registered trademark has been used for a long time in the trading society and is recognized considerably as to which consumer indicates goods related to his/her business before its registration, that part has distinctiveness as to the goods used (see Supreme Court Decision 2005Hu2977, May 15, 2008, etc.). Thus, in cases where the part which acquired distinctiveness as above is included as it is, and thus, the distinctiveness already acquired through the combination with other components is not lost, the registered trademark cannot be said to have no distinctiveness as to the goods used as a whole, and such legal doctrine likewise applies to a service mark pursuant to Article 2(3) of the Trademark Act.

In light of the aforementioned legal principles and the records, the part of the registered service mark “” in the composition of the instant registered service mark “” itself is merely the abbreviation of “Seoul-do”, which is a conspicuous geographical name, and thus, it cannot be deemed as having distinctiveness. However, as a result of its use in the designated service business of this case for a long time, consumers came to have been clearly aware of the mark as indicating the Defendant’s service business related to the Defendant’s business, and thus, the registered service mark of this case, including the part “,” which acquired distinctiveness, has a distinctive character as to the designated service business of this case where the mark was used. Accordingly, the registered service mark of this case, including the part “,” which acquired its distinctive character, cannot be deemed to have reduced distinctiveness as a whole due to the combination with “KYGNM UNIVIVSY” and one part “Seoul-do,” which is a conspicuous geographical name, and thus, the designated service business cannot be deemed to have a distinctive character as to the designated service business as a whole.

However, the court below acknowledged that the mark “”, etc. around January 7, 2005, which was the date of the registration decision of this case, was widely known to ordinary consumers, but held that the registered service mark of this case constitutes a mark with no distinctiveness on the grounds that it cannot be deemed as a service mark identical to the service mark actually used. Such judgment below erred by misapprehending the legal principles as to the determination of distinctiveness of a trademark, which affected the conclusion of the judgment, and the grounds of appeal pointing this out

3. Conclusion

Therefore, without further proceeding to decide on the remaining grounds of appeal, the lower judgment is reversed, and the case is remanded to the lower court for further proceedings consistent with this Opinion. It is so decided as per Disposition by the assent of all participating Justices on the bench.

Justices Min Il-young (Presiding Justice)