[1] In a trial on a decision to refuse trademark registration, where the applicant did not give the applicant an opportunity to submit a written opinion in a trial on the grounds of the previous decision to refuse trademark registration and other new grounds for rejection, whether the trial decision is unlawful (affirmative)

[2] The case holding that the service mark " cannot be viewed as a service mark directly indicating the nature of the designated service business, such as hospital business, and it cannot be viewed as falling under Article 6 (1) 3 of the Trademark Act since it cannot be viewed as a service mark that directly expresses the character of the designated service business, such as hospital business

[1] According to Article 23(2) of the Trademark Act, when an examiner intends to decide to reject a trademark registration, he/she shall notify the applicant of the grounds for rejection and give him/her an opportunity to submit a written opinion by setting a time period. According to Article 81(1) and (3) of the same Act, where the grounds for rejection and other grounds for rejection are discovered in a trial against a decision of rejection, the above provision shall apply mutatis mutandis. Since these provisions are so-called compulsory provisions due to the public interest demand that the applicant should not be ensured to ensure the appropriateness of the trial and to maintain the credit of the trial system, if an examiner did not give the applicant an opportunity to submit a written opinion on the grounds of new grounds for rejection in a trial against the decision of rejection, the decision of rejection is unlawful.

[2] The case holding that since the applied service mark " cannot be viewed as a service mark that directly expresses the character of the designated service business, such as hospital business, and it cannot be viewed as a service mark that directly expresses the character of the designated service business such as hospital business, it cannot be viewed as falling under Article 6 (1) 3 of the Trademark Act

[1] Articles 23(2), 81(1) and (3) of the Trademark Act / [2] Article 6(1)3 of the Trademark Act

[1] Supreme Court Decision 92Hu1066 delivered on June 28, 1994 (Gong1994Ha, 2109) Supreme Court Decision 98Hu300 delivered on November 12, 199 (Gong199Ha, 2504)

Park Won-chul (Patent Attorney Lee Jae-sik, Counsel for the plaintiff-appellant)

The Commissioner of the Korean Intellectual Property Office

December 24, 2004

1. The decision made by the Intellectual Property Tribunal on June 28, 2004 on the case No. 2003 Won3970 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, Evidence No. 1-4

A. The pending service mark

(a) Application number: No. 23320 of 201;

(2) Date of application: November 28, 2001

(3) Marks:

(4) Designated service business: Article 6(2) [Attachment 2] [Attachment 2] of the former Enforcement Rule of the Trademark Act (amended by Ordinance of the Ministry of Commerce, Industry and Energy No. 146 of December 24, 2001) and Article 6(2) [Attachment 2] of the category of service business.

B. Reasons for the decision of refusal and the trial decision of this case

On September 15, 2003, the Korean Intellectual Property Office rendered a decision of refusal by applying Article 6 (1) 3 of the Trademark Act on the ground that the pending service mark had the purport of "a hospital which helps children easily indicate the quality, efficacy, etc. of the designated service business."

Accordingly, the plaintiff filed a petition for a trial seeking the revocation of the above decision of rejection. The Intellectual Property Trial and Appeal Board reviewed the petition as 2003 Won3970 and dismissed the plaintiff's petition for a trial on June 28, 2004.

C. Summary of the reasoning for the instant trial decision

The pending service mark of this case is combined with the word "e-mail" and the figure on the basis of yellow color. Since the character of this case is a designated service business of hospital chain business, hospital business, etc. and many of the registrations are registered on the Internet website, or the name of the phone number is recorded in the phone number, the part of this case's pending service mark can be viewed as a dental hospital's concept that gives a simple treatment without suffering of 'brus' by ordinary consumers or traders. Furthermore, since the part of this case' is a simple and ordinary mark as a single English and ordinary mark, it is without distinctiveness or it is widely used as the weak in the modern trading society, and it is difficult to see that the part of this case's pending service mark constitutes a unique appearance and thus, it is difficult to see that the designated service mark of this case is not designated as a service mark of this case, and it is difficult to see that the designated service mark of this case is designated as a service mark of this case, which is a general service mark of this case, and it is not designated as a service mark of this case.

2. Whether the trial decision of this case is legitimate

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

Of the text portion of the pending service mark, the instant pending service mark cannot be deemed as being 'e' which means as soon as possible in its territorial language. Since the figure portion has distinctive character in light of its figure, the instant pending service mark does not fall under Article 6 (1) 3 of the Trademark Act, but does not constitute an opportunity to present opinions even if it recognizes a new ground for rejection at the trial stage, the instant trial decision should be revoked as unlawful.

(b) Markets:

(1) Therefore, we first examine the part concerning the grounds for rejection of the original decision of this case.

As seen earlier, the reason for rejection of the original decision is that the term "e-mail hospital", which is a part of the pending service mark of this case, means a hospital which enables the convenience of e-child, etc. Thus, the pending service mark of this case constitutes a service mark that directly indicates the nature of its designated service business, and falls under Article 6 (1) 3 of the Trademark Act. Considering this point, the pending service mark of this case is composed of a combination of the figure and the word "e-fe-fe-fe-fe-fe-fe-fe-fe-fe-fe-fe-fe-fe-fe-fe-fe-ge-ge-ge-ge-ge-ge-ge-ge-ge-ge-ge-ge-ge-ge-ge-ge-ge-ge-ge-ge-ge-ge-gor-gor-gor-gor-gor-gor-gine's's's's body's.

The defendant is the most important factor in the trademark, and it is widely used in the related industry, such as that the service mark of this case and the service mark of this case are identical with the service mark of this case, and the service mark of this case are registered in the Internet website of this case and the telephone number information site of this case, and the service mark of this case is widely used in many related industries. Thus, it is argued that the service mark of this case is directly used in the meaning of the (or (or (or (or) hospital with simple treatment without suffering) hospital and (or (or (or (or) hospital with no pain) hospital with simple treatment without suffering. Thus, according to 1 and 2 of the evidence Nos. 1 and 6 through 8 of this case, it can be seen that there are many examples using the above service mark as the trade name of dental clinic, but all of the above cases are used in the same sense as ‘the service mark of this case' and ‘the whole meaning of ‘the service mark of this case' of this case.

Therefore, the pending service mark of this case cannot be viewed as a service mark directly indicating the nature of the designated service business, and it cannot be viewed as falling under Article 6 (1) 3 of the Trademark Act. Accordingly, the part concerning the grounds for rejection of the original decision of this case among the original decision of this case is illegal.

(2) We examine the part other than the grounds for rejection of the original decision among the instant trial decision.

According to Article 23(2) of the Trademark Act, when an examiner intends to decide to reject a trademark registration, he/she shall notify the applicant of the grounds for rejection and give him/her an opportunity to submit a written opinion within a designated period. According to Article 81(1) and (3) of the same Act, where he/she discovers the grounds for rejection and other grounds for rejection in a trial against a decision to reject a trademark registration, the above provision shall apply mutatis mutandis. Since these provisions are so-called compulsory provisions due to the public interest demand to ensure the appropriateness of the trial and not secure the credibility of the trial system, in a trial against the decision to reject a trademark registration, if the examiner did not give the applicant an opportunity to submit a written opinion on the ground of other new grounds for rejection (see Supreme Court Decision 98Hu300, Nov. 12, 199).

As seen earlier, in addition to the grounds for rejection of the original decision, “e” portion of the text portion of the pending service mark becomes a simple and ordinary mark, and thus, it cannot be seen as having no distinctive character or symbolizing the Internet. The figure portion constitutes a mark directly indicating the quality of hospital business, etc. and the characteristics of the service, which is its designated service business, and thus, its registration should be refused pursuant to Article 6(1)3 of the Trademark Act, on the ground that there is no special distinctiveness. However, according to Article 6(2) of the former Trademark Act, the Korean Intellectual Property Office should have determined that prior to the original decision of rejection, the applicant, “the hospital that would facilitate the filing of the pending service mark,” and that the applicant, regardless of its nature, such as quality and efficacy, etc. of the designated service mark, and thus, it should have been recognized that the trademark of this case cannot be registered as a new service mark prior to the rejection decision of this case, or that the above decision of rejection cannot be submitted with an opportunity to present opinions, which is different from the grounds for rejection decision of this case.

3. Conclusion

Therefore, the decision of this case should be revoked illegally, so it is so decided as per Disposition.

Judges Lee Jae-hwan (Presiding Judge)