An industry-academic cooperation foundation for the Seoul National University (Patent & Law Firm Auyang, Patent Attorney Lee Chang-hoon)

The Commissioner of the Korean Intellectual Property Office

August 21, 2014

1. The decision made by the Intellectual Property Tribunal on February 10, 2014 on the case No. 2013 won 4612 shall be revoked.

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

The same shall apply to the order.

1. Basic facts

A. The applied trademark of this case

(1) Date/application number of the application: December 22, 2011

2) Composition:

3) Designated goods: as indicated in the attached sheet (hereinafter “each of the designated goods in this case”).

4) Applicant: The plaintiff

B. Grounds for the trial decision

1) The examiner of the Korean Intellectual Property Office decided to refuse the registration of the applied trademark of this case on the ground that “The trademark of this case is composed of “Seoul” as a conspicuous geographical name and “university” as a type of school, and it cannot be identified as a trademark indicating goods related to a person’s business, and thus, it cannot be registered under Article 6(1)4 and 7 of the Trademark Act.”

2) On February 10, 2014, the Plaintiff filed a petition with the Intellectual Property Tribunal for a trial seeking the revocation of the foregoing decision of refusal, and the Intellectual Property Tribunal tried the above case of adjudication to dismiss the Plaintiff’s request for adjudication on February 10, 2014.

[Ground of recognition] The fact that there is no dispute, entry of Gap's 1 through 5, purport of whole pleading

2. The parties' assertion

A. Summary of the grounds for revoking the trial decision of the plaintiff's assertion

Even if the trademark of this case is a combination of a conspicuous geographical name, “Seoul” and “university”, the trademark of this case, which is a common name, had a new concept for domestic consumers by long-term use, and as such, it is deemed that not only the “education business” but also all goods or service business related to the Plaintiff’s business were widely known to domestic consumers in terms of indicating the source of all goods or service business related to the Plaintiff’s business. Thus, the trademark of this case applied for registration is not subject to Article 6(1)4 and 7 of the Trademark Act, and its registration should be granted, but the decision of this case different from this conclusion should be revoked.

B. Defendant’s assertion

The trademark applied in this case is a combination of conspicuous geographical names, "Seoul" and "university", which are general names, and thus, does not create a new concept or form a new distinctive character. Thus, the trademark applied in this case cannot be registered as it falls under Article 6 (1) 4 and 7 of the Trademark Act, and the decision of this case is legitimate.

3. Whether the trademark of this case falls under Article 6 (1) 4 and 7 of the Trademark Act

A. Legal principles necessary for judgment

1) Article 6(1)4 of the Trademark Act

Article 6(1)4 of the Trademark Act provides that a trademark consisting solely of a conspicuous geographical name, the abbreviation thereof, or a map may not be registered. The purport of Article 6(1)4 is to refrain from granting exclusive right to use only to a specific individual because the distinctiveness of such trademark cannot be recognized due to its apparentness and well-knownness. In light of the foregoing, Article 6(1)4 of the Trademark Act does not apply only to a trademark consisting solely of a conspicuous geographical name, the abbreviation thereof, or a map, and even in cases where a trademark consisting of a trademark consisting of a conspicuous geographical name, etc. with no distinctive character, even if such combination does not result in a new concept beyond the original conspicuous geographical name or technical meaning, or form a new distinctive character, the mere fact that the trademark consisting of a trademark consisting of a geographical name, etc. and a technical mark, etc. (see, e.g., Supreme Court Decisions 200Hu181, Apr. 26, 2002; 201Hu3181, Dec. 19, 2013

2) Article 6(1)7 of the Trademark Act

Article 6(1) of the Trademark Act provides, “A trademark other than those as referred to in subparagraphs 1 through 6, in which case a trademark cannot be registered.” This means that even if a trademark does not fall under any of subparagraphs 1 through 6 of the same Article, the source between the goods of the trademark and the goods of another person cannot be registered. Whether a trademark has no distinctiveness is objectively determined taking into account the concept of the trademark, the relationship with the designated goods, and the circumstances of the trade society, etc. In a case where it is difficult to recognize the distinctiveness of the goods of another person under the social norms or where it is deemed inappropriate for a specific person to monopoly the trademark for public interest, such trademark has no distinctiveness, and even if a trademark without distinctiveness is combined with a trademark, if the new concept is derived or a new distinctive character is not formed by the combination, it shall be deemed that there is no distinctiveness (see, e.g., Supreme Court Decisions 2010Hu32266, Mar. 10, 2011; 2017Hu29127, Feb. 17, 2012.

B. Specific determination

There is room to regard the pending trademark “” as a trademark simply combined with “Seoul” and “university”, a conspicuous geographical name.

However, comprehensively taking account of the overall purport of the Trademark Act No. 6 through No. 20 and No. 25 (including the number of each university), Seoul University’s name and title “Seoul University’s University” was used for approximately 68 years since its establishment as Seoul National University’s name; ② Seoul University’s graduate for about 200,000 and at least 10,00 master’s degree were each located in the Seoul University’s name; ③ University’s establishment of the Seoul University’s name and 206 University’s name and 106 University’s name and 200 Seoul University’s name and 1.7 University’s name and 25 University’s name and 3 University’s name and 4 University’s name and 1.5 University’s name and 200 University’s name and 3 University’s name and 4 University’s name and 1.5 University’s name and 200 Seoul University’s name and 3 University’s name and 200 Seoul University’s name and 3 University’s name and 15 University.

C. Defendant’s assertion and judgment

1) The defendant's assertion

The Defendant asserts to the effect that the registration of the applied trademark of this case shall not be permitted, since the Seoul National University acquired, widely known, or identified distinctive character (hereinafter “distinctive character through use”) as to the “ professor Business, etc.” under Article 6(2) of the Trademark Act, since the trademark of this case did not obtain the distinctiveness by use as to each of the designated goods of this case.

2) Determination

As seen in the above B., as long as the trademark of this case was derived from the new concept of "Seoul University" through the combination of "Seoul" and "university", it does not fall under Article 6 (1) 4 and 7 of the Trademark Act, it is not necessary to examine whether the trademark of this case has acquired the distinctiveness of each of the designated goods of this case individually.

In other words, although a mark which is not eligible for trademark registration because it falls under any of the subparagraphs of Article 6(1) of the Trademark Act, if it still falls under any of the subparagraphs of Article 6(1) of the Trademark Act with respect to other designated goods that are not the above designated goods, it shall be determined whether to allow trademark registration by examining whether the above "other designated goods" has acquired distinctiveness by use. However, in the course of the process of acquiring distinctiveness by use in relation to education business, etc. and the process of recognizing the user as the trademark applied for in this case, as the trademark of this case, the grounds (the simple combination of non-distinctive marks that do not produce a new concept) deeming non-distinctiveness have led to the extinction of the trademark, and thus, it is no longer necessary to consider whether the distinctiveness by use has been acquired by each designated goods if it does not fall under Article 6(1)4 and 7 of the Trademark Act.

Therefore, even if trademark registration is granted without examining whether the designated goods of this case obtained distinctiveness through use, it does not go against the purport of Article 6(1) and (2) of the Trademark Act. Thus, the prior defendant's assertion on different premise is without merit.

D. Sub-committee

Therefore, since the trademark applied in this case does not fall under Article 6 (1) 4 and 7 of the Trademark Act, the registration of this case shall not be refused.

4. Conclusion

If so, the trial decision of this case different conclusion is unlawful, so the plaintiff's claim of this case seeking its revocation is justified and it is so decided as per Disposition.

[Attachment]

Judges Shin Young-hoon (Presiding Judge)