[1] The meaning of "a trademark other than those under subparagraphs 1 through 6 of Article 6 of the former Trademark Act, which does not enable consumers to distinguish whose goods it indicates in connection with a person's business," and the standard for determining whether a trademark has no distinctiveness

[2] Criteria to determine whether a trademark is so-called “self-known trademark” under Article 7(1)10 of the former Trademark Act

[3] Where Company A filed for registration invalidation against Company B on the ground that the registered trademark “” used as the package design of the product’s package constitutes a trademark without distinctiveness, the case affirming the judgment below that there is no ground for invalidation of registration under Articles 6(1)7, 7(1)10 and 11 of the former Trademark Act on the ground that the figure part of the registered trademark is recognized as distinctive, and it is difficult to regard the pre-use trademark “” as a well-known trademark, and that the registered trademark is not identical or similar to the pre-use trademark

[1] Article 6(1)7 of the former Trademark Act (wholly amended by Act No. 14033, Feb. 29, 2016) provides for one of the cases where a trademark cannot be registered (Article 6(1)7 “a trademark, other than those referred to in subparagraphs 1 through 6, by which consumers cannot distinguish the goods related to a person’s business” (Article 33(1)7 of the current Trademark Act provides for the same purport as only expressions under Article 33(1)7). This means that even if a trademark does not fall under subparagraphs 1 through 6 of the same Article, it is impossible to distinguish the source between its goods and others’ goods. Whether a trademark has no distinctiveness is objectively determined in light of the concept bearing a trademark, the relationship with the designated goods, and the circumstances of the trade society. Where it is difficult to recognize distinctiveness of goods of another person or it is deemed inappropriate for a specific person to exclusive trademark in light of social norms, such trademark has no distinctiveness.

[2] Whether a trademark is a so-called well-known trademark under Article 7(1)10 of the former Trademark Act (wholly amended by Act No. 14033, Feb. 29, 2016) (see, e.g., current Trademark Act only to the same purport as the expression under Article 34(1)11 of the same Act) should be determined on the basis of whether the trademark was objectively widely known in terms of transaction circumstances or social norms, considering the use and supply of the trademark, the period, method, mode, and scope of business activities, etc.

[3] Where Company A filed for registration invalidation against Company B on the ground that the registered trademark “,” which was used as the package design of the product’s packaging, constitutes a trademark without distinctiveness, the case affirming the judgment below that the registered trademark does not fall under Article 6(1)7 of the former Trademark Act (wholly amended by Act No. 1403, Feb. 29, 2016; hereinafter the same) and the registered trademark “” does not constitute a trademark under Article 6(1)7 of the former Trademark Act, and it is hard to view that the shape of the registered trademark is ordinarily used as an expression method in relation to the designated product. In light of the relationship between the designated product and the transaction society, the design of packing the product is functioned as the distinguishing mark of origin, and it is not appropriate for a specific person to monopoly the above design, and thus, it is difficult to view the registered trademark as a trademark under Article 6(1)7 of the former Trademark Act (wholly amended by Act No. 14033, Feb. 29, 2016; hereinafter the same) and it is not known to general consumers.

[1] Article 6(1)7 of the former Trademark Act (wholly amended by Act No. 14033, Feb. 29, 2016; see current Article 33(1)7); Article 33(1)7 of the Trademark Act / [2] Article 7(1)10 of the former Trademark Act (wholly amended by Act No. 14033, Feb. 29, 2016; see current Article 34(1)11); Article 34(1)11 of the Trademark Act / [3] Article 6(1)7 of the former Trademark Act (wholly amended by Act No. 14033, Feb. 29, 2016; see current Article 33(1)7); Article 7(1)10 of the former Trademark Act (see current Article 34(1)11 and 34(1)14(1)1 of the former Trademark Act)

[1] Supreme Court Decision 2008Hu4721 Decided July 29, 2010 (Gong2010Ha, 1763), Supreme Court Decision 2012Hu2951 Decided December 27, 2012 (Gong2013Sang, 271) / [2] Supreme Court Decision 97Hu3975, 3982 Decided February 26, 199 (Gong199Sang, 666), Supreme Court Decision 2013Hu1207 Decided October 15, 2015 (Gong2015Ha, 169)

[Defendant-Appellant] Defendant 1 and 3 others (Attorney Seo Young-young, Counsel for defendant-appellant)

Road Development Co., Ltd. (Law Firm Yang Hun-Ga et al., Counsel for the defendant-appellant)

Patent Court Decision 2019Heo2837 Decided October 2, 2019

The appeal is dismissed. The costs of appeal are assessed against the plaintiff.

The grounds of appeal are examined.

1. Whether the registered trademark of this case is a non-distinctive trademark (Ground of appeal No. 1)

Article 6(1)7 of the former Trademark Act (wholly amended by Act No. 14033, Feb. 29, 2016; hereinafter the same) provides for one of the cases where a trademark cannot be registered (Article 6(1)7 “a trademark, other than those referred to in subparagraphs 1 through 6, by which consumers cannot distinguish the identification of goods related to a person’s business” (Article 33(1)7 of the current Trademark Act provides for the same purport only as the expression in Article 33(1)7). This means that even if a trademark does not fall under subparagraphs 1 through 6 of the same Article, it is impossible to distinguish the source between its goods and another person’s goods. Whether a trademark has no distinctiveness is objectively determined by taking into account the concept bearing the trademark, the relationship with the designated goods, and the actual circumstances of a trade society, etc. Where it is difficult to recognize distinctiveness of goods under the social norms, or where it is deemed that a trademark has no distinctiveness of such specific person, such as where it is inappropriate (see, e.g., Supreme Court Decision 2007Hu217.

The lower court determined that the instant registered trademark does not fall under Article 6(1)7 of the former Trademark Act, on the grounds that the text portion of the instant registered trademark (hereinafter referred to as the “registered trademark”) is definite as raw materials related to the designated goods, while there is no distinctive character, on the other hand, since the figure portion of the instant registered trademark is recognized as distinctive character. For that reason, it is difficult to view that the patent of this case is ordinarily used as an expression method in relation to the designated goods, and it is difficult to see that the design of packaging the goods in the instant category functions as an identification mark of source in light of the relationship with the designated goods and the circumstances of the trading society, and there is no ground to view that it is inappropriate for public interest to see that the aforementioned design is exclusive for a specific person.

Examining the reasoning of the lower judgment in light of the foregoing legal doctrine and the record, the lower court did not err by misapprehending the legal doctrine regarding Article 6(1)7 of the former Trademark Act, or by exceeding the bounds of the principle of free evaluation of evidence against logical and empirical rules.

2. Whether the pre-use trademark is a well-known trademark (ground of appeal No. 3)

Whether a trademark is a so-called well-known trademark under Article 7(1)10 of the former Trademark Act (see, e.g., Supreme Court Decisions 97Hu3975, 3982, Feb. 26, 199; 2013Hu1207, Oct. 15, 2015) shall be determined on the basis of whether the trademark was objectively widely known under the transaction circumstances or social norms, taking into account the use and supply of the trademark, the period, method, mode, and scope of business activities, etc. (see, e.g., Supreme Court Decisions 97Hu3975, 3982, Feb. 26, 199; 2013Hu120

The lower court determined that there was no ground for invalidation of the registration under Article 7(1)10 of the former Trademark Act on the ground that the pre-use trademark (the pre-use trademark) was not so-called well-known trademark known to the general public as well as the consumers of the trademark of this case on the basis of the filing date of the trademark of this case, on the ground that it is difficult to

Examining the reasoning of the lower judgment in light of the aforementioned legal doctrine and the record, the lower court did not err by misapprehending the legal doctrine regarding “goods or business of another person recognized remarkably among consumers” under Article 7(1)10 of the former Trademark Act, or by exceeding the bounds of the principle of free evaluation of evidence against logical and empirical rules, or by failing to exhaust all necessary deliberations

3. Whether the registered trademark of this case is likely to mislead consumers (ground of appeal Nos. 2 and 4)

The lower court determined that the instant registered trademark did not constitute grounds for invalidation of registration under Article 7(1)11 of the former Trademark Act on the ground that the instant registered trademark was not identical or similar to the pre-use trademark. Examining the reasoning of the lower judgment in light of relevant legal principles and records, the lower court did not err by misapprehending the legal doctrine on similarity of trademarks and the principle of free evaluation of evidence against logical and empirical rules, or by failing to exhaust all necessary deliberations, contrary to what is alleged in the grounds of appeal.

4. Conclusion

The Plaintiff’s appeal is dismissed as it is without merit, and the costs of appeal are assessed against the losing party. It is so decided as per Disposition by the assent of all participating Justices.

Justices Lee Dong-won (Presiding Justice)