Violation of the Trademark Act | Supreme Court Judgment Holding That a Trademark Consisting Solely of a Map Violates the Trademark Act

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.

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.

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.