입체상표의 식별력 및 기능성 판단기준

Abstract

In line with the increasing use of three-dimensional marks, there is growing demand for more clarity as to determining its registration requirements. In the instant case (known as the “Viagra case”), the Supreme Court of Korea for the first time acknowledged distinctiveness obtained through use, thereby setting the precedent as to the criteria for determining distinctiveness and functionality of three-dimensional marks. The gist of the Supreme Court’s ruling is as follows: Technical function of designated goods or its packaging (hereinafter “goods, etc.”), in principle, can only be protected by a patent right or a utility model right within the scope of a patent term or utility model term to the extent that patent requirements-prescribed under the Patent Act-and utility model registration requirements-prescribed under the Utility Model Act-are met; however, if protected by a trademark right on the grounds that the dimensional shape-essential to obtain technical result-has distinctiveness, it leads to permitting a permanent exclusive right even to the technical function indispensable to creating dimensional shapes through registration of renewal of trademark right duration. This, in turn, not only conflicts with the patent or utility model systems (hereinafter “patent system, etc.”) but undermines free competition by prohibiting the use of dimensional shape, even if there is a competitive need by a competitor to use such dimensional shape to perform a particular function, effect, and the like associated with the pertinent goods, etc. Accordingly, the Trademark Act (amended by Act No. 5355, Aug. 22, 1997) introduced dimensionally shaped trademarks as a type of trademark, and newly inserted Article 7(1)13-which provides that trademarks, etc. of dimensional shape essential to obtain technical result of goods, etc. seeking trademark registration shall not be registered notwithstanding fulfillment of the distinctiveness requirement under Article 6 of the same Act-to the effect of harmonizing with the patent system, etc., and ensuring free and efficient competition. In light of such legislative intent, whether dimensionally shaped trademarks of goods, etc. constitute the aforementioned provision should be determined by considering the totality of the following circumstances: (i) whether such goods, etc. are available in the relevant market or whether there exist a usable substitute form; (ii) whether the production cost is equivalent to, or smaller than, the initial cost even if producing the goods, etc. with a substitute form; and (iii) whether the technical result obtained from the dimensional shape transcends the inherent function of the goods, etc. This paper first examines the concept of three-dimensional marks, legislative intent and history, the criteria for determining trademarks, relevant Supreme Court precedents, foreign court positions, etc. It then focuses on analyzing the criteria for determining the distinctiveness and functionality of three-dimensional marks, as well as its application in practice.