Where an examiner of the Korean Intellectual Property Office decided to grant trademark registration on the ground that the trademark or service mark " " " which was registered internationally by the American Intellectual Property Office Gap filed an international application under the Protocol Relating to the Madrid Agreement on the International Registration of Marks with the U.S. Intellectual Property Office, falls under Article 6 (1) 7 of the Trademark Act, the case holding that the applied trademark or service mark falls under the above provision

In a case where an examiner of the Korean Intellectual Property Office decided to grant trademark registration on the grounds that the trademark or service mark “,” which was registered internationally by the International Bureau of the World Intellectual Property Organization (WIPO) by filing an international application under the Protocol on the Madrid Agreement on the International Registration of Marks with the U.S. Intellectual Property Office, falls under Article 6(1)7 of the Trademark Act, the case holding that in light of the fact that the applied trademark or service mark is a trademark consisting of four English languages as at the time of the filing date of the application for trademark registration, and that it can be understood as a “an appropriate science” even if it is a middle school student level in light of the Korean English propagation and education level at the time of the filing date of the application for trademark registration, the trademark or service mark falls under a trademark whose business it is impossible for consumers to objectively distinguish from the designated goods or service business, and that it is inappropriate for public interest to have a specific person monopoly, and that the applied trademark or service mark falls under the trademark under Article 6(1)7 of the Trademark Act, and thus, Article 6(1) of the Trademark Act.

Article 6 (1) 7 of the Trademark Act

Cluritech leberlers, Corertrad (Attorney Cho Jong-hee et al., Counsel for the defendant-appellant)

The Commissioner of the Korean Intellectual Property Office

March 11, 2016

1. The plaintiff's claim is dismissed.

2. The costs of lawsuit shall be borne by the Plaintiff.

The decision made by the Intellectual Property Tribunal on October 23, 2015 on the case 2014 Won6452 shall be revoked.

1. Basic facts

A. The applied trademark, service mark of this case

1) Composition:

(ii) the date of international registration (date of application for trademark registration)/international registration: (Omission of the date of international registration)/ (International Registration Number omitted).

3) Designated goods and service business

가) 상품류 구분 제1류의 Reagents for scientific or medical research use, namely, enzymes, nucleic acids, nucleotides, proteins, antibodies, buffer solutions, biological reagent or biochemicals and conjugates used in molecular biological laboratories; and kits comprised of reagents for scientific or medical research use, namely, buffer solutions, biological reagent or biochemicals and conjugates used in molecular biological laboratories; and chemical reagents (other than for medical or veterinary purposes); Unprocessed resins 주1)

(b) Maborory of Lborory in Category 42, as classified by service sector.

4) A holder of a registration: An Plaintiff;

B. Details of the instant trial decision

1) The instant pending trademark/service mark “” was registered internationally by the International Bureau of the World Intellectual Property Organization (WIPO) of (International Registration omitted) by the Plaintiff’s filing with the U.S. Intellectual Property Office an international application under the Protocol Concerning the Madrid Agreement Concerning the International Registration of Marks (hereinafter “Protocol”), and became one of the designated countries in the said international application (Evidence A 2) by the Korean Intellectual Property Office (Korean Intellectual Property Office, which was one of the designated countries in the said international application (Evidence A).

2) However, on February 12, 2014, the examiner of the Korean Intellectual Property Office, via the above International Bureau, notified the Plaintiff of the decision of refusal ex officio (Evidence A) to the effect that “the trademark or service mark claimed in the application of this case is merely the product quality and efficacy, and there is no distinctive character as a relief or publicity phrase. Moreover, some of the designated goods are not specified or are too broad. Accordingly, the trademark or service mark claimed in the application of this case is in violation of Article 6(1)3 and 7 and Article 10(1) of the Trademark Act.”

3) Accordingly, the Plaintiff submitted a written opinion and amendment on April 10, 2014. However, on September 18, 2014, the examiner of the Korean Intellectual Property Office rendered a decision of refusal (Evidence A 4) on the ground that “Although the grounds for rejection under Article 10(1) of the Trademark Act relating to the designated goods by the above amendment were removed by the above amendment, the applied trademark and service mark in this case still have no distinctiveness by directly indicating the nature (quality and efficacy) of the goods, and it constitutes a trademark with no distinctiveness since it is recognized as a relief or advertising expression, and thus it constitutes a trademark with no distinctiveness, and thus, it shall not be registered pursuant to Article 6(1)3 and 7 of the Trademark Act.”

4) The Plaintiff filed a petition with the Intellectual Property Tribunal for an appeal against the foregoing decision of refusal, and the Intellectual Property Tribunal deliberated on it in the case of 2014 won and 6452, and on October 23, 2015, the Patent Tribunal dismissed the Plaintiff’s appeal on the ground that “the trademark or service mark of this case represents an advertisement bill or relief related to the designated goods or service, and thus it is impossible to identify the source of the designated goods or service.” Since such a mark wishes to be used by anyone, granting a specific person exclusive right is inappropriate for public interest. Therefore, the trademark or service mark of this case constitutes Article 6(1)7 of the Trademark Act, and thus, it is not possible to obtain trademark registration even if other reasons are not examined.”

2. Whether the trial decision of this case is unlawful

A. The plaintiff's assertion

For the following reasons, although the applied trademark and service mark of this case have no reason to refuse the registration, the decision of this case was unlawful because it judged that the decision of rejection on the trademark and service mark of this case was justifiable.

1) The applied trademark/service mark “” is not a relief or symbol used by anyone, but only the Plaintiff actually uses it. Therefore, in light of such transaction circumstances, the applied trademark/service mark of this case ought to be deemed to have distinctiveness in relation to its designated goods/service business. Accordingly, the applied trademark/service mark of this case is not a mark with no distinctive character under Article 6(1)7 of the Trademark Act.

2) Furthermore, since the trademark of this case and the service mark of this case are widely used not only in natural science but also in various fields, such as human science and social science, it is difficult to view that the general consumers directly control its meaning even if the applied trademark and service mark of this case are used for reagents, etc. among the designated goods. Accordingly, the applied trademark and service mark of this case do not fall under the technical mark under Article 6(1)3 of the Trademark Act.

3) Even if the applied trademark and service mark of this case are assumed to have no distinctiveness by itself, as a result, the Plaintiff continued to use the applied trademark and service mark of this case on its products, brochures, advertising leaflets, website, etc., the applied trademark and service mark of this case became recognized as indicating the Plaintiff’s source of goods between domestic consumers and traders. Accordingly, the applied trademark and service mark of this case can obtain trademark registration in accordance with the provision on the acquisition of distinctiveness by use under Article 6(2) of the Trademark Act.

B. Whether it falls under Article 6(1)7 of the Trademark Act

1) Criteria for determination

Article 6 (1) 7 of the Trademark Act provides that a trademark which does not enable consumers to recognize whose business it indicates goods, i.e., a trademark with no special distinction, shall not be registered. In this case, whether a trademark or service mark applied for falls under Article 6 (1) 7 of the Trademark Act shall be determined depending on whether general consumers can recognize its source in relation to the designated goods or the designated service business.

In addition, in cases where it is inappropriate to allow a specific person to monopoly a trademark or service mark applied for, rather than indicating its designated goods or source related to designated service business, due to the circumstance such as recognition as a common use in trade society or an advertisement door, the trademark registration should be refused in accordance with Article 6 (1) 7 of the Trademark Act.

Meanwhile, even if a trademark appears to have no special distinction in objectively examining the concept of the trademark itself or the relationship with the designated goods or the designated service business without considering its use condition, where the applicant’s use of the trademark leads to a consumer or trader’s recognition of the mark as indicating whose business the goods are related, barring any special circumstance, such mark shall not be deemed to constitute a trademark with no special distinction under Article 6(1)7 of the Trademark Act (Article 6(1)7 of the Trademark Act). In addition, the standard point at which the trademark is recognized as being considerably, as a matter of principle, is at the time of registration decision or decision of refusal, and where the registration is determined by an appeal against the decision of refusal, it shall be at the market price.

2) An objective distinctive part

First of all, considering the following circumstances, the applied trademark or service mark of this case constitutes a trademark which is objectively recognizable to consumers as to whom the goods or service business is related in relation to the designated goods or service business, and it is not appropriate for the public interest to place the trademark or service mark monopoly on a specific person.

A) The pending trademark/service mark “” is a mark consisting of four English languages, and in light of the Korean English propagation and educational level at the time of the filing date of the application for trademark registration (hereinafter “international registration date omitted), it seems that the trademark/service mark in this case is sufficiently understood as meaning “which is a good (use) science,” even if it is a middle school student level.

B) However, “the time medicine for scientific or medical research,” which is designated as the designated goods and service business of the applied trademark or service mark of this case, is limited to those having close connection with experiments and research activities in the field of science or medical science, namely, nuclear acid, New Creclurine, proteine, stoxid, antibiotics, buffer amount, biological reagents or biological chemical agents and combinations, namely, buffer amount for scientific or medical research, namely, chemical reagents (except for medical or veterinary medicine), unprocessed synthetic resin, and molecular biological experimental research service business. In addition, the trademark or service mark of this case does not include any separate distinctive composition irrelevant to quality or efficacy of the designated goods or service business as above.

C) Therefore, a general consumer or a trader dealing with the applied trademark or service mark of this case in relation to the designated goods and service business of the applied trademark or service mark of this case is highly likely to be perceived as a relief or publicity phrase that “it is a good (useful science) science.” Furthermore, such relief or publicity phrase is obvious that anyone in the pertinent industry would wish to use it in the advertisement of the goods or service business, and therefore, it is not desirable from the perspective of public interest.

D) Meanwhile, according to the statement in Gap evidence No. 5, if the Internet portal "Guggle (htp:/www.gole.co.co.)," such as the trademark and service mark of this case, is searched by the Internet portal "Guggle", it is recognized that there are many materials related to the plaintiff's website or the plaintiff as a result of the search. However, such circumstance alone cannot be readily concluded that only the plaintiff uses the expression "Tman's Seaman's Office" as alleged by the plaintiff. In other words, even based on the result of the search in the above Google, the contents that seem unrelated to the plaintiff are searched together, and according to each statement or image of evidence No. 5-7, it can be confirmed that the expression "God City" itself is being used in various contexts related to the nature of science, etc.

3) The distinctive part by use

Furthermore, for the following reasons, it is difficult to view that the pending trademark or service mark of this case has been remarkably perceived as the source of the goods or service business.

A) First, according to each description or image of Gap evidence No. 8-12 (each number omitted; hereinafter the same shall apply), it is recognized that the plaintiff from around 2013, sold reagents, chemical products, etc. produced by the plaintiff from the Republic of Korea to the Oramerck Korea Co., Ltd. (hereinafter referred to as "Cred Korea"), and indicated the terms "Trush Gaz" in the packaging paper, advertising paper, shopping bags, California, etc. of the product.

B) On the other hand, according to Gap evidence No. 9, on the packaging paper of the plaintiff's products sold in Korea, the mark indicating the plaintiff's trade name, such as "" and "", is marked on the upper part of the product packing paper, and at the bottom of the mark, the words such as the trademark and service mark of this case, such as the plaintiff's website address, are indicated on the lower part of the product packing paper.

C) However, under the circumstance that the mark indicating the origin of the product, such as the product name and the mark of the manufacturer, is separately specified on the upper part of the packaging of the product, where the phrase “ ,” such as “ ,” is indicated on the bottom of the lower part of the product, the consumer or the trader’s standpoint, rather than the possibility of accepting the part “ ,” as a separate source indication, is likely to recognize the part “ ,” such as “ ,” “ ,” and “ ,” as the product origin. This is more so in view of the fact that the consumer or the trader of the Plaintiff’s product is mainly engaged in experiments and research in the field of science or medicine.

D) According to each description or image of Gap evidence 10-1 to 8, as seen below, the plaintiff added the phrase of the trademark application or service mark of this case, such as "Mup-Oe", "LOZAgrose", "TaKa Ex Tmq", "VECTR", "TMARRR-Seq", "SMARR-Smq", "Clymartis", "Guides-PPPP/C9 Symix", together with a trade name indication, such as the product name and the product name, and the product name or the product's quality or quality, and added the product's product's content to the extent that it is easily distinguishable from the product's content or the product's content. However, the above part is not a combination of the product's description of the product's product's product's quality or quality, but a combination of the product's product's product's origin or content.

A person shall be appointed.

마) 특히 다카라코리아의 홈페이지(갑 7호증) 중 ‘회사 소개’ 부분에는 “ ”와 같이 이 사건 출원상표·서비스표가 원고 회사의 ‘slogan(구호)’임이 명시되어 있다. 또한 원고의 홈페이지(갑 6호증의3)에도 ‘Good Science’의 구체적인 의미에 관하여 “Good science may be understated. It might not be flashy. But it makes a difference. It opens up new possibilities. It informs. It inspires. It creates. [중략] We strive every day to be good partners, because good science needs great support.”라고 설명되어 있다. 즉 원고는 ‘Good Science’를 지원한다는 회사의 이미지를 수요자나 거래자에게 알리고, 이를 특별히 강조하기 위하여 이 사건 출원상표·서비스표를 구호 내지 선전 문구로 사용하고 있는 것으로 보인다.

F) Even if a general consumer or a trader receives the expression “Tromanship” as a mark of the source of goods or service business, which is not the Plaintiff’s relief or publicity phrase, the Plaintiff in this case failed to submit data that can objectively verify the period, frequency, and continuity of the use in Korea of the applied trademark or service mark, business sales and market share using it, the frequency, contents, period, and amount of advertising and publicity. Therefore, it cannot be deemed that the applied trademark or service mark in this case is considerably recognizable as the source of designated goods or service business among domestic consumers or traders at the time of the decision of refusal or the decision of the instant case.

3. Conclusion

Thus, the applied trademark and service mark of this case fall under Article 6 (1) 7 of the Trademark Act and cannot obtain trademark registration without any need to further examine the remainder of the issues. Thus, the trial decision of this case, which concluded as above, is legitimate, and the plaintiff's claim for revocation is without merit.

Judges Lee Jong-dae (Presiding Judge)

Note 1) The lower part of the international application was originally corrected by the Plaintiff’s written opinion and amendment on April 10, 2014, as follows. The international application is finally corrected by the Plaintiff’s written opinion and amendment on April 10, 2014.

2) According to Article 86-14(1) of the Trademark Act, an international application that is registered internationally under the Protocol and designates the Republic of Korea as a designated State shall be deemed an application for trademark registration under the Trademark Act, and according to Article 3(4) of the Protocol, the date of international registration under Article 3(4) of the Protocol shall be deemed the date of application for trademark registration under the Trademark Act. Accordingly, the date of application for trademark registration of the applied trademark or service mark

3) In this case, while the Plaintiff asserts the application of Article 6(2) of the Trademark Act, Article 6(2) of the Trademark Act only covers Article 6(1)3 through 6 of the Trademark Act, and Article 6(2) of the said Act excludes Article 6(1)7 of the said Act. This is because, in the case of other non-distinctive marks as provided by Article 6(1)7 of the Trademark Act, if a trademark acquires distinctiveness through the use of a non-distinctive mark, it would no longer constitute another non-distinctive mark and can obtain trademark registration. Therefore, in relation to Article 6(2) of the Plaintiff’s trademark right, the Plaintiff’s assertion to acquire distinctiveness under Article 6(2) of the Trademark Act is understood as the assertion that the trademark or service mark of this case acquired distinctiveness by the use of the applied trademark or service mark of this case so that it would no longer fall under Article