República de Corea

【Main Issues and Holdings】

[1] Legislative purport of Article 6(1)4 of the former Trademark Act that proscribes the registration of a trademark consisting solely of a conspicuous geographical name, the abbreviation thereof, or a map

Meaning of “conspicuous geographical name” and point of time in determining conspicuity

Method of determining whether a geographical name may be deemed as conspicuous, and whether this legal doctrine is likewise applicable to service marks (affirmative)

[2] In a case where Party A petitioned for adjudication on registration invalidation against Party B, the service mark holder of the registered service mark “ ,” on the ground that the registered service mark falls under a service mark consisting solely of a conspicuous geographical name as prescribed by Article 6(1)4 of the former Trademark Act, the case holding that: (a) there was room to regard “사리원 (Sariwon)” of the registered service mark as a conspicuous geographical name widely known to ordinary consumers as of the date when registration of the service mark in question was decided; (b) nevertheless, the lower court determined otherwise; and (c) in so doing, erred by misapprehending the legal doctrine

【Summary of Decision】

[1] Article 6(1)4 of the former Trademark Act (wholly amended by Act No. 14033, Feb. 29, 2016; see current Article 33(1)4) provides that trademark registration may not be obtained if said trademark consists solely of a conspicuous geographical name, the abbreviation thereof, or a map. Inasmuch as the distinctiveness of such trademark cannot be acknowledged due to its remarkability and well-knownness, the aforementioned Article purports to refrain from granting exclusive license to only a specific individual. Here, “conspicuous geographical name” means that said geographical name is widely known to ordinary consumers, and the point of time in determining conspicuity is when deciding whether a trademark ought to be registered. The matter of whether a geographical name is conspicuous should be reasonably determined, based on the point of time as seen above, in full view of the contents of textbooks, media reports, surveys, etc., as well as possible factors that may influence the awareness of ordinary consumers. This legal doctrine is likewise applicable to service marks.

[2] In a case where Party A brought a claim for registration invalidation adjudication against Party B, the service mark holder of the registered service mark “ ,” on the ground that “사리원 (Sariwon)” of the registered service mark was widely known nationwide as a city in North Korea, and thus, fell under a service mark consisting solely of a conspicuous geographical name as prescribed by Article 6(1)4 of the former Trademark Act (wholly amended by Act No. 14033, Feb. 29, 2016), the Court held that: (a) in view of the fact that Sariwon was widely known as a historic place from the Joseon Dynasty, not to mention the fact that it remains known since the Japanese colonial period as one of the cities representing North Korea; (b) as of June 26, 1996, when the registration of said service mark was decided, there was room to regard “사리원 (Sariwon)” of the registered service mark as a conspicuous geographical name widely known to ordinary consumers; (c) nevertheless, the lower court determined otherwise; and (d) in so doing, erred by misapprehending the legal doctrine.

【Reference Provision】[1] Article 6(1)4 (see current Article 33(1)4) of the former Trademark Act (Wholly amended by Act No. 14033, Feb. 29, 2016) / [2] Article 6(1)4 (see current Article 33(1)4) of the former Trademark Act (Wholly amended by Act No. 14033, Feb. 29, 2016)

Article 33 of the current Trademark Act (Requirements for Trademark Registration)

(1) Trademark registration may be obtained, excluding the following trademarks:

4. A trademark consisting solely of a conspicuous geographical name, the abbreviation thereof, or a map[.]

【Reference Cases】[1] Supreme Court Decisions 2004Hu240 decided Apr. 28, 2004; 2011Hu1142 decided Apr. 13, 2012 (Gong2012Sang, 811); 2011Hu958 decided Dec. 13, 2012 (Gong2013Sang, 193)

【Plaintiff-Appellant】Plaintiff (Lee & Ko, Attorneys Shin Young-cheol et al., Counsel for the plaintiff-appellant)

【Defendant-Appellee】Defendant (Attorneys Park Seong-su et al., Counsel for the defendant-appellee)

【Judgment of the court below】Patent Court Decision 2016Heo8841 decided May 12, 2017

【Disposition】The lower judgment is reversed, and the case is remanded to the Patent Court.

【Reasoning】The grounds of appeal are examined (to the extent of supplement in case of supplemental appellate briefs not timely filed).

1. Registered service mark and key issue of the instant case

The decision to register the instant registered service mark “ ” (registration number omitted), of which the designated service is a restaurant specializing in Korean cold noodles (Naengmyeon), was made on June 26, 1996.

The key issue of the instant case is whether the service mark in question may not obtain trademark registration on the ground that “사리원 (Sariwon)” of the registered service mark constitutes a conspicuous geographical name.

2. Article 6(1)4 of the former Trademark Act (wholly amended by Act No. 14033, Feb. 29, 2016; see current Article 33(1)4) provides that trademark registration may not be obtained if said trademark consists solely of a conspicuous geographical name, the abbreviation thereof, or a map. Inasmuch as the distinctiveness of such trademark cannot be acknowledged due to its remarkability and well-knownness, the aforementioned Article purports to refrain from granting exclusive license to only a specific individual. Here, “conspicuous geographical name” means that said geographical name is widely known to ordinary consumers (see, e.g., Supreme Court Decision 2004Hu240, Apr. 28, 2004), and the point of time in determining conspicuity is when deciding whether a trademark ought to be registered (see, e.g., Supreme Court Decision 2011Hu1142, Apr. 13, 2012). The matter of whether a geographical name is conspicuous should be reasonably determined, based on the point of time as seen above, in full view of the contents of textbooks, media reports, surveys, etc., as well as possible factors that may influence the awareness of ordinary consumers. This legal doctrine is likewise applicable to service marks.

3. The following facts are revealed through the reasoning of the lower judgment and the record.

A. Sariwon is the name of a city located in Hwanghae, one of the provinces in North Korea.

B. During the Joseon Dynasty, Sariwon – along with Jochiwon, Itaewon, Janghowon, and Twaegaewon – was known as a transportation hub where public accommodations (院) were established nearby. Since the Japanese colonial period, Sariwon was known as a railway hub that passed through the Gyeongui Line and the Hwanghae Line. Sariwon was elevated to si (city) status in 1947, and later became the provincial capital of North Hwanghae Province when Hwanghae-do divided into North Hwanghae Province and South Hwanghae Province in 1954. Around 1996, when the decision to register the instant registered service mark was made, North Korea’s administrative region was divided into nine provinces, one special city, and two municipalities. At the time, Sariwon was the provincial capital of North Hwanghae Province and remains as such to this day.

C. Korean social studies textbooks and atlases that were published from the 1960s to 2010 for elementary, middle, and high schools also described or indicated Sariwon as the provincial capital of North Hwanghae Province and as one of North Korea’s major transportation hubs.

D. Online portal site searches revealed that newspaper articles related to Sariwon had been mostly published from the 1920s to the early 1940s, but, thereafter, in articles pertaining to the weather and North Korea (such as economic cooperation between the two Koreas), Sariwon is being mentioned as one of the cities representing North Korea.

E. Meanwhile, around July 1996, when the service mark in question was registered, registration of the trademark “ ” was denied on the ground that it only consisted of a conspicuous geographical name.

4. As can be seen, in view of the fact that Sariwon was widely known as a historic place from the Joseon Dynasty, not to mention the fact that it remains known since the Japanese colonial period as one of the cities representing North Korea, there is room to regard “사리원 (Sariwon)” of the registered service mark as a conspicuous geographical name widely known to ordinary consumers around June 26, 1996, when the registration of the instant registered service mark was decided.

The lower court determined that, at the time of the decision to register the service mark (June 26, 1996), Sariwon did not fall under a conspicuous geographical name that was widely known to ordinary consumers nationwide, citing the consumer awareness survey carried out in 2016 as the basis for its reasoning. However, given that said survey was conducted 20 years after the date of the decision to register the instant registered service mark, deeming that it reflected the awareness level of ordinary consumers at the time when the registration decision was made is difficult.

Therefore, the lower court erred by misapprehending the legal principle on conspicuous geographical names, thereby adversely affecting the conclusion of the judgment. The allegation contained in the grounds of appeal on this point is with merit.

5. The lower judgment is reversed as the Plaintiff’s appeal has merit, and the case is remanded to the lower court for further proceedings consistent with this Opinion. It is so decided as per Disposition by the assent of all participating Justices on the bench.

Justices      Kim Chang-suk (Presiding Justice)

Jo Hee-de

Kim Jae-hyung (Justice in charge)

Min You-sook