사용에 의하여 식별력을 취득한 상표에 관한 주요 쟁점 연구

Abstract

Trademark Act Art. 6 (2) provides "Even though it falls under any paragraph (1) 3 through 6, a trademark which is recognized remarkably among consumers whose goods it indicates in connection with his/her business as a result of using the trademark before the application for trademark registration under Article 9, may be registered with any goods using the trademark as designated goods". Regarding this provision, there are several important issues which deserve to be rigorously debated. This article aims to deal with the issues. The conclusions are as follows. 1. In the cases of Trademark Act Art. 6 (1) 1 and Art. 6 (1) 2, there are possibilities that the ordinary name or the customarily used mark will lose its character and become someone's trademark. But it is not correct to say that in the cases the ordinary name or the customarily used mark can be made distinctive by use under the same requirements as Art. 6 (2). In contrast to the cases above, the trademark of Art. 6 (1) 7 can be made distinctive by use under the same requirements as Art. 6 (2). 2. In order to be made distinctive by use, the use is not required to be exclusive in the strict meaning, but needs to be substantially exclusive. 3. The time of judgment whether a trademark was made distinctive is not the time of application, but of decision about whether to register. But the applicant must establish the fact that he or she has used the trademark before the application. 4. The regional coverage of consumers' recognition as requirement of Art.6 (2) is the whole country. 5. Trademark Act Art. 51 (1) concerning the limitation of trademark right can be applied about 'a trademark made distinctive by use' by Art. 6 (2). But the interpretation of Art. 51 (1) needs to be adjusted to guarantee the prohibitive power of the trademark made distinctive by use within the reasonable scope. 6. The trademarks that lacked distinctiveness at the time of registration can not be effective even if they have become distinctive after the registration.