[1] The case affirming the judgment of the court below holding that a registered service mark consisting of "Nadoo" is a service mark consisting solely of a mark indicating a common way of providing a service in connection with the designated service business, such as an attorney-at-law, and there is a ground for invalidation of registration under Article 6 (1) 3 of the Trademark Act

[2] The meaning of "service mark" under Article 7 (1) 4 of the Trademark Act, which is likely to disturb the public order or good customs

[3] The case holding that an application for registration of a service mark by a person not qualified as such with respect to a service business requiring a specific qualification for providing a service does not constitute a case where the application for and registration of the service mark is not likely to disrupt the public order or good customs under Article 7 (1) 4 of the Trademark Act

[1] The case affirming the judgment of the court below which held that a registered service mark composed of "Nadoo" is a service mark consisting solely of a mark indicating a common way of providing a service in connection with the designated service business, such as an attorney-at-law, and there is a ground for invalidation of registration under Article 6 (1) 3 of the Trademark Act

[2] The term "service mark" under Article 7 (1) 4 of the Trademark Act refers to a case where the composition of the service mark itself or its service mark is used for a designated service business, and its meaning or contents to ordinary consumers are contrary to the public order and good customs, which is the normal moral sense of ordinary people, or where the act of registering and using the service mark without permission, as if it were used for registration in order to take advantage of the reputation of the trademark, service mark, trade name, etc. of a famous person's trademark or service mark, which is contrary to good customs, such as fair goods distribution order or international trust and morality.

[3] The case holding that an application for registration of a service mark by a person not qualified as such with respect to a service business requiring a specific qualification for the provision of a service does not constitute a case where it might be prejudicial to public order or good customs under Article 7 (1) 4 of the Trademark Act

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

[2] Supreme Court Decision 97Hu3623 delivered on December 24, 1999 (Gong2000Sang, 309) Supreme Court Decision 97Hu860, 877, 884 delivered on April 21, 200 (Gong200Sang, 1293)

Plaintiff (Law Firm Name, Attorneys Kim Jong-chul et al., Counsel for the plaintiff-appellant)

A. B.B. network (Gu trade name: Nao.a., Ltd.) (Attorneys Kim Yong-jin, Counsel for the defendant-appellant)

Patent Court Decision 2003Heo4221 delivered on December 12, 2003

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

1. As to the grounds of appeal Nos. 1, 2, and 3

The court below determined that the service business of the above service business is a service business consultant who is a designated service business of the plaintiff's registered service mark of this case (registration number omitted), legal research business, certified judicial scrivener, patent attorney, copyright management business, intellectual property rights licensing business, intellectual property consultation business, patent use consultation business, and administrative business, which meets the demand of specific professional areas by utilizing professional knowledge and experience in specific professional areas and which does not limit the work of the above service business to representation or agency for specific professional areas, but it does not include a method that helps the client to directly perform specific services by providing advice so that it can be done by himself/herself, and even if the service business is not a registered service mark of this case, it does not appear that it can be defined as a service mark of this case as a service business operator's own or a service business operator's own knowledge and experience so that it can be defined as a service business operator's own knowledge and experience, and it does not appear that it can be defined as a service mark of this case as a service business operator's own or a service business operator's own knowledge and experience.

In light of the records, the fact-finding and decision of the court below are all justified, and there is no error of law such as misapprehension of legal principles as to Article 6 (1) 3 of the Trademark Act or violation of the rules of evidence or omission of judgment.

2. As to the grounds of appeal Nos. 4 and 5

According to the records, in the written reply submitted by the defendant on October 9, 2003 to the court below, "Nanaro" is a technical mark, and therefore it cannot be registered as a service mark. "Nanaro" does not assert that "Nanaro" has distinctiveness for a legal service, or that "Nanaro" is not a technical mark with respect to a service business which does not require a specific qualification among the designated service of this case. Thus, the court below is just in holding that there exists a ground for invalidation of the registration of all the designated service of this case under Article 6 (1) 3 of the Trademark Act as seen above, and there is no violation of the principle of no speech or the principle of pleading as asserted in the grounds for appeal, and there is no violation of the scope of the trial decision revocation lawsuit.

3. Regarding ground of appeal No. 6

The registered service mark of this case was filed on June 19, 200, and the registered service mark of this case is subject to the above amended Trademark Act (hereinafter referred to as the "former Trademark Act") pursuant to Paragraph 4 of the Addenda of the amended Trademark Act (hereinafter referred to as the "Amended Trademark Act") as of February 3, 2001. The former Trademark Act does not include "where it does not conform to the definition of the mark under Article 2 Paragraph 1 Item 1 through 4 of the amended Trademark Act" under Article 2 Paragraph 1 Item 4 of the amended Trademark Act. Thus, the court below erred in holding that the above grounds for invalidation of the registration of the designated service mark of this case are grounds for invalidation of registration under Paragraph 1 Item 4 of Article 23 Paragraph 1 of the amended Trademark Act by applying the amended Trademark Act to "the designated service mark of this case, the certified labor affairs consultant, the administrative affairs consultant, and the certified judicial scrivener business." However, the above grounds for invalidation of registration are not affected as to the above designated service business.

4. As to ground of appeal No. 7

A. The court below held to the purport of Article 7 (1) 4 of the Trademark Act, unlike the purport of the Trademark Act, that even though the Plaintiff, only qualified as a patent attorney, had an intention to establish an exclusive license or a non-exclusive license from the time of application for the registered service mark of this case to a person eligible to provide such a service, if the use of the service mark through the provision of the original service is prohibited by the Act, applies for a service mark for the purpose of establishing an exclusive license or a non-exclusive license, and allow a person eligible to provide such service after registration, to hold the service mark only for the purpose of establishing an exclusive license or a non-exclusive license, it would cause inconvenience to the provision of the service by encouraging the use of a non-qualified service provider by preventing the legitimate service provider from using a proper identification mark, and thus, such service mark application constitutes abuse of the principle of registration, and thus, the registered service mark of this case constitutes abuse of rights.

B. The term "service mark" under Article 7 (1) 4 of the Trademark Act refers to a case where the composition of a service mark itself or its service mark is used for a designated service business, and its meaning or contents to ordinary consumers are contrary to the public order and good customs, which is the ordinary moral sense of ordinary people, or where the act of using a service mark which imitates another person's mark intentionally without permission, as if it is used for a registered service mark to take advantage of the reputation of the trademark, service mark, trade name, etc., goes against good customs, such as fair goods distribution order or international trust and morality (see Supreme Court Decisions 97Hu3623, Dec. 24, 199; 200Hu1362, May 14, 2004; hereinafter referred to as "the Plaintiff's service licensee, certified public labor affairs consultant, public labor affairs consultant, or certified judicial scrivener, etc., is not a case where the Plaintiff's registration of an exclusive license or non-exclusive license to use the service mark in the form of public order or non-exclusive license to use.

Nevertheless, the court below's decision otherwise contains an error of law by misunderstanding the legal principles as to Article 7 (1) 4 of the Trademark Act, but as seen earlier, there is a ground for invalidation of registration under Article 6 (1) 3 of the Trademark Act as to the above designated service business. Such error of law by the court below does not affect the conclusion of the judgment.

5. Therefore, the appeal is dismissed, and the costs of appeal are assessed against the losing party. It is so decided as per Disposition.

Justices Yang Sung-tae (Presiding Justice)