In a case where an examiner of the Korean Intellectual Property Office decided to refuse trademark registration on the ground that “A”’s applied trademark “B” was “a trademark consisting of a simple and ordinary indication, and thus constitutes Article 33(1)6 of the Trademark Act, the case holding that it is difficult to view the applied trademark as a whole in light of all the circumstances, such as the form and characteristic of a white internal figure part, which is a part of the entire trademark applied for trademark registration, to constitute “a case where the applied trademark becomes solely composed of a simple and ordinary mark”

Article 33 (1) 6 of the Trademark Act is a case where the Korean Intellectual Property Office examiner decided to refuse trademark registration on the ground that “A”’s applied trademark “(s) is a trademark with simple and ordinary indication.”

출원상표 전체에서 높은 비중을 차지하는 부분인 흰색의 내부 도형 부분은 그 선의 두께를 달리하고 오른쪽 중간에서부터 그 폭이 점차 감소하면서 끝부분이 뾰족하게 종결되는 형상으로 형성되어 있어, 형태적인 특징으로 인하여 여러 가지 말풍선 형태와 차이가 있는 점, 내부 도형의 형상은 말풍선, 쉼표 또는 물방울의 형상 등으로 다양하게 인식될 여지가 있어 단순한 원 형태의 사소한 변형이라고 보기 어렵고, 거래 사회에서 출원상표와 같이 말풍선, 쉼표 또는 물방울 등으로 인식되는 내부 형상과 파란색 원 모양의 외부 형상을 결합하는 것이 흔하다고 할 수 없으므로, 위 표장은 구성 자체가 거래상 자타상품의 식별력이 있는 점, 출원상표가 우리나라에서뿐만 아니라 전 세계 여러 국가에서 갑 회사의 제품이나 서비스를 나타내는 표장으로 사용되고 있는 구체적인 거래의 실정, 독점적응성의 측면에서도 출원상표에 대한 등록거절사유가 있다고 할 수 없는 점 등에 비추어, 출원상표가 전체적으로 ‘간단하고 흔히 있는 표장만으로 된 경우’에 해당한다고 보기 어렵다고 한 사례이다.

Article 33 (1) 6 of the Trademark Act

Amazon Tzechog, Inc. (Attorney Park Jong-min, Counsel for the plaintiff-appellant)

The Commissioner of the Korean Intellectual Property Office

January 15, 2020

1. The decision made by the Intellectual Property Tribunal on July 12, 2019 on the case No. 2018 Won1138 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 (Evidence A No. 2)

1) Application number / filing date / priority date: (Application Number omitted)/ February 27, 2017/ August 29, 2016

2) Composition:

3) Designated goods: as stated in attached Form 1.

B. Details of the instant trial decision

1) On October 19, 2017, the Korean Intellectual Property Office examiner notified the Plaintiff of the submission of the opinion to the effect that “The trademark constitutes a trademark with simple and ordinary indication, and thus cannot be registered under Article 33(1)6 of the Trademark Act” (Evidence A 3).

2) The Plaintiff submitted a written opinion on December 19, 2017. However, on February 11, 2018, the examiner of the Korean Intellectual Property Office rendered a decision to reject the application on the ground that “The trademark of this case is recognized to have changed from the original shape to the extent that it differs from the original part of the part at the bottom of the mark and the upper part of the part at the end of the mark, and the color of the color was added, but it is merely a certain degree of painting in a way that excluding the upper part of the upper part of the line, which constitutes the original part, and thus, it is directly controlled by the ordinary consumers or traders by simply drawing the original part or the source (Article 33(1)6 of the Trademark Act)” (Article 33(1)6 of the Trademark Act).

3) The Plaintiff filed an appeal against the foregoing decision of refusal with the Intellectual Property Tribunal (Korea Intellectual Property Tribunal No. 2018 Won1138), but the Korean Intellectual Property Tribunal rendered a trial ruling dismissing the Plaintiff’s appeal (hereinafter “instant trial ruling”) on the ground the same as the foregoing (see, e.g., Supreme Court Decision 2018Da1138, Jul. 12, 2019) (Evidence A).

[Ground of recognition] Unsatisfy, entry of Gap evidence 1 to 4, purport of whole pleadings

2. Summary of the parties' arguments;

A. Summary of the plaintiff's assertion

The trademark applied in this case does not fall under Article 33 (1) 6 of the Trademark Act for the following reasons, and the trial decision of this case, which different conclusions, should be revoked as unlawful.

1) The trademark of this case cannot be deemed as a simple mark, which is systematically combined with a fluorial figure in the original color of a yellow color.

2) Since the shape of the trademark applied in this case’s trademark is considerably different from the shape of the terminal line which is generally used in its specific form, such as the pattern of the terminal line, it cannot be deemed as a shaking mark.

3) Other diagrams combined with the original figure were registered with the recognition of distinctive character. Since the trademark of this case was registered with the recognition of its distinctive character in multiple foreign countries, in light of such registration precedents, the applied trademark of this case cannot be deemed as simple and ordinary marks.

B. Summary of the defendant's assertion

For the following reasons, the trademark applied for trademark of this case is subject to rejection of registration because it falls under Article 33 (1) 6 of the Trademark Act, and the decision of this case is legitimate.

1) The trademark applied in this case is a trademark consisting solely of a simple and ordinary mark that has shown a color of a freshing after a little design is drawn in a shaking and a simple form of a source.

2) Even if the instant patent is recognized as the figure of the horse-line, as claimed by the Plaintiff, it is often used in today’s mobile SNS and Internet blogs, etc., and the degree of the design of the instant applied trademark is more recognized than that of the ordinary horse-line figure or it is difficult to view that the degree of the design of the instant applied trademark has reached the degree of special attention.

3. Whether the trademark of this case constitutes Article 33(1)6 of the Trademark Act

A. Criteria for determination

Article 33(1)6 of the Trademark Act provides that “a trademark consisting solely of a simple and ordinary mark” cannot be registered when “a trademark consisting solely of a simple and ordinary mark” is “a trademark” or “a trademark consisting solely of a simple and ordinary mark” (Supreme Court Decision 84Hu93 Decided January 29, 1985). Whether a trademark cannot be registered because it falls under the grounds for refusal of registration under Article 33(1)6 of the Trademark Act should be determined specifically by taking into account the actual circumstances of the transaction, even if the exclusive use of the mark is permitted, and such circumstances as the degree of the trademark cannot be registered when it is “a trademark consisting solely of a simple and ordinary mark” (see Supreme Court Decision 2003Hu2942, Nov. 26, 2004). In addition, in the case of a trademark consisting of figures or letters used frequently, it does not constitute “a trademark consisting of two or more general consumers or traders with the burden of rejection,” and it does not constitute “three-six or more special reasons for refusal.”

B. Specific determination

In light of the following circumstances, it is difficult to deem that the trademark of this case constitutes a trademark consisting solely of a simple and ordinary mark in light of the following circumstances, which can be recognized by comprehensively taking into account the descriptions and images of Gap evidence Nos. 4, 14, 24, and 2 through 5 of Eul’s evidence:

1) 이 사건 출원상표는 “ ”와 같은 외관으로서 ① “ ”와 같이 일정한 폭의 선이 하단 중앙부에서 왼쪽 시계방향으로 원 형태로 그려지다가 오른쪽 중간 부분에서부터 그 폭이 점차 감소하여 뾰족한 끝부분이 하단 중앙부의 출발 지점에 이어지도록 형성된 내부의 흰색 도형 부분, ② “ ”와 같이 내부 도형을 둘러싼 외곽 부분이 원 형상의 모양을 하고 있는 부분 및 ③ 파란색 색채가 유기적으로 결합한 표장이다.

2) 이 사건 출원상표는 “ ”와 같이 내부 도형이 그 선의 두께를 달리하고 오른쪽 중간에서부터 그 폭이 점차 감소하면서 끝부분이 뾰족하게 종결되는 형상으로 형성되어 있다. 일반 수요자나 거래자는 이 사건 출원상표 전체에서 높은 비중을 차지하는 부분인 흰색의 내부 도형 부분을 인식하게 될 것으로 보이는데, 내부에 형성된 도형은 그 형태적인 특징으로 인하여 [별지 2]의 표에 기재된 여러 가지 말풍선 형태(갑 제21호증, 을 제2 내지 5호증)와 차이가 있다.

3) The trademark of this case is likely to be recognized various shapes such as “”, depending on the person’s perception of the form and shape, and the degree of drilling, etc., depending on the person’s perception of the shape and shape, it is difficult to view that the trademark of this case is a minor transformation in a simple original form, and it is composed to make it possible to feel a new image by being surrounded by a yellow line with a certain width, and it cannot be said that the combination of the internal form and external form of the color, such as the trademark of this case, such as the trademark of this case, and the external form of the horse, shelter, or water shooting, etc., which are recognized as a terminal line and the external form of the color of the original shape, cannot be said to be proven in a trade society. Thus, the above mark itself has the distinctiveness of a trade-related one’s own other product.

4) The applied trademark of this case is a log 1) the Plaintiff’s "Alex A" product or an artificial intelligence platform, which is the Plaintiff’s "Alex A," and it appears that the Plaintiff’s above product was used as a mark indicating the Plaintiff’s product or service in Korea as well as in various countries around the world (Evidence Nos. 6 through 20) since the Plaintiff’s launch around November 2014, and search the image of the applied trademark of this case from the Internet search site (www.google.co.D.), the case holding that the Plaintiff’s trademark of this case can not be found to be identical or confused with the Plaintiff’s image of the applied trademark of this case, and that the Plaintiff’s trademark of this case is identical or similar to the Plaintiff’s trademark of this case’s "Alex A," and the trademark of this case’s inner color and the trademark of this case’s inner shape similar to the Plaintiff’s trademark of this case’s trademark of this case, even if it was registered or similar to the Plaintiff’s trademark of this case’s general image.

5) The Defendant asserts to the effect that the inner diagrams of the applied trademark of this case, such as “B” (Evidence 6), can be easily made with the inner diagrams of the two straight lines, or similar to the basic shape of the color fluorse pattern, such as “B” (Evidence 7), or that it is difficult to deem that the trademark of this case is recognized beyond the meaning of ordinary consumers or traders with the color fluorse pattern, or to have led special attention, as it can be easily changed. However, the applied trademark of this case has a big difference from the shape of the horse fluorse pattern or the color fluorse pattern pattern, due to the above form features, and it is difficult to regard the applied trademark of this case as being combined with the external shape, and thus, it is difficult to regard that the trademark of this case is either similar or easily changed to the above shape.

(c) arranging the results of the review;

As seen earlier, it is difficult to see that the trademark applied in this case’s trademark as a whole falls under “a simple and ordinary trademark,” and thus, it cannot be deemed as falling under Article 33(1)6 of the Trademark Act.

4. Conclusion

Therefore, the trial decision of this case, which has different conclusion, is unlawful, and the plaintiff's claim seeking its revocation is reasonable, and it is decided as per Disposition by admitting it.

[Attachment 1] Designated Goods of the applied trademark of this case: omitted

[Attachment 2] Various types of horse lines: omitted

Judges Lee Jae-hee (Presiding Judge)

Note 1) The term “audio-type artificial intelligence (AI) visa sent by the Plaintiff in 2014 is used for the term (“A”, “A”, “A”, “Sker type device (Evidence 14), and “Cloudio-based voice services” (Evidence 15) developed by the Plaintiff.

Note 2) Supreme Court Decision 2002Hu291 Delivered on May 27, 2003