상표법상 사용에 의한 식별력 판단기준

Abstract

Article 6 (1) of the Korean Trademark Act enumerates the exhaustive lists of non-distinctive trademarks, prescribing as follows: "(1) A trademark registration may be granted, except a trademark falling under any of the following subparagraphs: 1. A trademark consisting solely of a mark indicating, in a common way, the ordinary name of the goods; 2. A trademark used customarily on the goods; 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 packages), price, producing method, processing method, using method or time of the goods; 4. A trademark consisting solely of a conspicuous geographical name, the abbreviation thereof or a map; 5. A trademark consisting solely of a mark indicating in a common way a common surname or name; 6. A trademark consisting solely of a simple and ordinary mark; 7. A trademark, other than those as referred to in subparagraphs 1 through 6, which does not enable consumers to recognize whose goods it indicates in connection with a person's business." Article 6 (2) of the Korean Trademark Act stipulates the standard for which non-distinctive marks under Article 6 (1) 3 to 6 of the Act acquire distinctiveness by their use. Whether Article 6 (2) of the Act is applicable to Article 6 (1) 7 of the Act was resolved by the Korean court decision, which held that the non-distinctive marks under Article 6 (1) 7 of the Act can acquire distinctiveness by their use. This Article proposes that the new legislation reflect the court decision in the near future. The criteria to determine acquired distinctiveness under Article 6 (2) of the Act revised in June 11, 2014 became less stringent than before. Prior to its revision of 2014, it used to prescribe that " (2) Even though it falls under any of 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 (referring to the goods designated under Articles 10 (1) and 47 (2) 3 and those designated additionally; hereinafter the same shall apply)." On the other hand, Article 6 (2) of the revised Korean Trademark Act of 2014 states that: "(2) Even though it falls under any of paragraph (1) 3 through 6, a trademark which is recognized 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 only goods having used the trademark as designated goods" However, the more lenient standard for acquired distinctiveness under the revised Act of 2014 do not set forth the clear-cut, lowest limit. Hence, this Article proposes that the lowest limit of the standard for acquired distinctiveness based on survey outcome.