CONTENTS
- 1. Violation of the Trademark Act, a Case Concerning Whether the Applied-for Trademark Was Subject to a Ground for Refusal of Registration
- - Violation of the Trademark Act, the Lower Court's Determination
- 2. Violation of the Trademark Act, the Supreme Court's Determination
- - Violation of the Trademark Act, Representative Grounds for Refusal
- 3. Violation of the Trademark Act, What Is Daeryun's Strategy?
1. Violation of the Trademark Act, a Case Concerning Whether the Applied-for Trademark Was Subject to a Ground for Refusal of Registration
This case concerned a refusal of registration under the Trademark Act and a claim seeking revocation of the trial decision.
The plaintiff filed an application to register a ‘trademark consisting solely of a map’ but received a decision refusing registration.
The plaintiff then filed a trial with the Intellectual Property Trial and Appeal Board challenging the decision of refusal (a request contesting an administrative action before an agency prior to court litigation, comparable to seeking administrative review), and after that trial request was dismissed, the plaintiff sought revocation of the trial decision.
The key issues were whether the applied-for trademark in this case fell under a ‘trademark consisting solely of a map’ as provided in Article 33 of the Trademark Act and whether it had acquired distinctiveness.
Violation of the Trademark Act, the Lower Court's Determination
Under Article 33(1)3 of the Trademark Act, a trademark consisting solely of a map cannot be registered, and even if it is not an accurate map or a form equivalent thereto, it falls under a map as referred to in the said provision if it has a form by which ordinary consumers can recognize it as a map under common social notions.
However, where, as a result of using the trademark before filing the trademark application, the trademark has come to be distinguishable among consumers as indicating the source of a particular person's goods, registration may be granted limited to the goods on which the trademark was used.
The lower court determined that the applied-for trademark in this case was recognized by ordinary consumers as a map of the Republic of Korea under common social notions and therefore fell under a trademark consisting solely of a map under Article 33(1)4 of the Trademark Act.
The lower court also determined that it was difficult to recognize that the trademark had, independently and separately from the actually used trademarks, acquired distinctiveness through use among consumers, and therefore did not fall under Article 33(2) of the Trademark Act.
2. Violation of the Trademark Act, the Supreme Court's Determination
The plaintiff in the action over the violation of the Trademark Act sought revocation of the trial decision, but the Supreme Court accepted the lower court's ruling and dismissed the final appeal.
The Supreme Court stated that whether a case falls under ‘a case where, as a result of using the trademark, the trademark has come to be distinguishable among consumers as indicating the source of a particular person's goods’ as provided in Article 33(2) of the Trademark Act must be determined by comprehensively considering the period, frequency, and continuity of use of the trademark; the volume of production and sales and the market share of the goods bearing the trademark; the method, frequency, content, period, and amount of advertising and promotion; the superiority of the quality of the goods; the reputation and credibility of the trademark user; and the degree and manner of competing use of the trademark.
The Supreme Court set forth the foregoing legal principles and accepted the lower court's ruling.
Violation of the Trademark Act, Representative Grounds for Refusal
There are representative grounds on which trademark registration is refused as a violation of the Trademark Act.
The first is a common name of the goods that consumers recognize. The Korean Intellectual Property Office does not grant trademark registration for common names that must be left available for anyone to use, customary expressions ordinarily used in the industry, and the like, on the ground that it is inappropriate to grant a monopoly over them to a particular person.
The second is a simple name or form. This applies where the mark consists of a single Korean character without any special meaning or of no more than two letters of the alphabet. However, if the mark itself is the shape of a distinctive logo or is a trademark combined with another logo, it may be registered.
The third is that words indicating quality and nature, place of origin, efficacy, and the like, as well as geographical names or abbreviations, cannot be used, and names that are similar to those of state agencies and public goods or that are already well known are likewise not permitted.
Lastly, registration is refused even where an identical or similar trademark filed earlier has already been registered.
3. Violation of the Trademark Act, What Is Daeryun's Strategy?
When examining a case involving a violation of the Trademark Act, it is important to confirm whether the part that is identical or recognized as identical to the applied-for trademark can be perceived separately while maintaining its independence on its own.
This is because, if it can be perceived separately, then even where it has been used together with another mark, the record of such use may be used as material for determining whether the applied-for trademark has acquired distinctiveness through use.
Unlike an ordinary civil action, an action involving a violation of the Trademark Act deals with the particular legal subject matter of trademarks, and therefore specialized legal knowledge may be required.
The Daeryun Law Firm LLP 🔗Intellectual Property Group, led by attorneys with experience at the courts, the prosecution service, the police, and the Fair Trade Commission and as patent attorneys, assists with responding to various civil, criminal, and administrative legal disputes related to trademark law.
