2000Hu3418 Nullification of Trade Mark Registration

by Supreme Court of Korea

Justices Bae Ki-won (Presiding Justice), Suh Sung (Justice in charge), Lee Yong-woo, Park Jae-yoon

Main Issues

1. Criteria for determining the distinctiveness of a trademark for designated goods containing creative work, such as books
2. A case holding that the registered trademark "Linux" cannot be regarded as non-distinctive or deceptive to consumers, when used on books or other designated goods

Summary of Decision

1. A trademark having books or goods containing creative work as designated goods is a trademark consisting of a mark indicating the quality and use of the designated goods in a customary way, as defined in Article 6 Paragraph 1 Item 3 of the Trademark Act (hereinafter referred to as the Act), only if the trademark goes beyond merely suggesting or accentuating the designated goods' content to make the consumer perceive that the mark indicates the content of the designated goods in a customary way.
2. If the registered trademark "Linux", which is widely known as the generic name or a customarily used mark for a computer operating system, is used in books, pamphlets, study materials, recorded tapes (not for music) or recorded compact discs (not music CDs) as its designated goods, it may indicate that the contents of the goods relate to the computer program. But in light of the fact that when purchasing goods, ordinary users of the designated goods tend to focus on the contents of the creative work contained in the designated goods or the title thereof, rather than the trademark itself, the mere fact that contents concerning computer operating system can be included in the designated goods is not sufficient to establish that ordinary users recognize the registered trademark as a mark indicating the contents of the designated goods in a customay way. Therefore, the registered trademark cannot be deemed to be a trademark defined in Article 6 Paragraph 1 Item 3 of the Act. Further, as the registered trademark does not fall within the class of trademarks consisting solely of a mark indicating the use or quality of the designated goods in a customary way, we do not find that the registered trademark may misrepresent the quality of the product, and as a result, fall within a trademark likely to mislead or deceive consumers as to the quality of the goods, as defined in Article 7 Paragraph 1 Item 11 of the Act.

Reference Provisions

1. Article 6 Paragraph 1 Item 3 of the Trademark Act
2. Article 6 Paragraph 1 Item 3 and Article 7 Paragraph 1 Item 11 of the Trademark Act

Article 6 Paragraph 1 Item 3 of the Trademark Act (Requirements for Trademark Registration)

(1) Any trademark may be registered, except cases falling under any of the following items:

1., 2. <omitted>

3. A trademark consisting solely of a mark indicating in a common way the origin, quality, raw materials, efficacy, use, quantity, shape (including shapes of wrappers), price, producing method, processing method, using method or time of the goods

4.~7. <omitted>

Article 7 Paragraph 1 Item 11 of the Trademark Act (Unregistrable Trademark)

(1) Notwithstanding Article 6, a trademark falling under any of the followings shall be unregistrable

1.~10. <omitted>

11. Trademarks which are liable to mislead or deceive the consumers as to the quality of the goods

12.~14. <omitted>

• Plaintiff, Appellant: Kwon Yong-tae

• Defendant, Appellee: Youngjin.com, Inc. and 23 others

• Judgment of the court below: Patent Court Decision 2000Heo1801 delivered on October 13, 2000

Disposition

The part of the judgment of the court below against plaintiff shall be reversed and the corresponding part of this case shall be remanded to Patent Court.

Reasoning

1. The court below ruled that the registered trademark in this case is in breach of Article 6 Paragraph 1 Item 3 of the Act or Article 7 Paragraph 1 Item 11 of the Act and therefore void, for the following reasons: at the time of decision to grant registration, the term "Linux" was widely known to computer users as a generic name or a customarily used mark for a certain computer operating system. Therefore, if it were used on designated goods such as books, pamphlets, study materials, recorded tapes (not for music) or recorded compact discs (not for music CDs), the contents of which relate to the "Linux" program, the registered trademark would be a trademark consisting solely of a mark indicating the use in a customary way. However, if the contents of the designated goods bear no relation to the "Linux" program, the registered trademark would mislead general consumers to believe that the contents relate to the "Linux" program. Accordingly, the court below found the registered trademark for the above designated goods void.

2. However, a trademark having goods containing creative work as designated goods is a trademark consisting of a mark indicating the quality and use of the designated goods in a customary way, as defined in Article 6 Paragraph 1 Item 3 of the Act, only if the trademark goes beyond merely suggesting or accentuating the designated goods' content to make the consumer perceive that the mark indicates the content of the designated goods in a customary way.

In this case, the registered trademark "Linux" which is widely known as the generic name or a customarily used mark for a computer operating system used on its designated goods may indicate that the contents of the goods relate to the computer program. But in light of the fact that when purchasing goods, ordinary users of the designated goods tend to focus on the contents of the creative work contained in the designated good or the title thereof, rather than the trademark itself, the mere fact that the contents concerning the computer operating system can be included in the designated goods is not sufficient to establish that ordinary users recognize the registered trademark as a mark indicating the contents of the designated goods in a common way. Therefore, the registered trademark cannot be deemed to be a trademark as defined in Article 6 Paragraph 1 Item 3 of the Act. Further, as the registered trademark does not fall within the class of trademarks consisting solely of a mark indicating the use or quality of the designated goods in a common way, we do not find that the registered trademark may misrepresent the quality of the product, and as a result, fall within a trademark likely to mislead or deceive consumers as to the quality of the goods, as defined in Article 7 Paragraph 1 Item 11 of the Act.

The court below's decision that the registered trademark falls under Article 6 Paragraph 1 Item 3 or Article 7 Paragraph 1 Item 11 of the Act, was an reversible error caused by an incomplete investigation in examining the distinctiveness of the registered trademark of the designated goods against the rules of evidence, which affected the conclusion of the judgment. Therefore, the ground for appeal pointing out this issue is justified.

3. Therefore, the part of the judgment of the court below against plaintiff shall be reversed and the corresponding part of this case shall be remanded to the court below. It is so decided as per Disposition.

Source

• Supreme Court Decision 2000Hu3418 delivered on December 10, 2002, Supreme Court Library of Korea