2000Hu3807 Affirmation of Scope of Right (Trademark)

by Supreme Court of Korea

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

Main Issues

1. Legislative intent of Article 51 Item 1 of the Trademark Act (hereinafter referred to as 'the TA'), criteria for determining whether a trademark falls within a trademark indicating one's own trade name in usually used ways, and whether such criteria may also apply to a service mark (affirmative)
2. A case where Mark (Ga), composed of "a picture of a house that is mirrored in water within a rectangle frame + ㈜평양옥류관," does not fall under a trademark indicating one's own trade name in a usually used way

Summary of Decision

1. Article 51 Item 1 of the TA provides that a registered trademark does not have any legal effect on a trademark indicating one's own name, designation, or trade name etc. (hereinafter referred to as 'trade name') in usually used ways. Because one's trade name expresses one's identity, so long as a trade name is used in connection with a product only to the extent required to indicate one's business in customary ways, the effect of registration of an identical or similar trademark does not reach such trade name. On the other hand, if a name, title, or trade name is used in such a way as to conclude that it was used solely in order to distinguish one's own goods from someone else's goods, legal rights of another person's registered trademark take effect on such mark. Using a mark that is composed of a conspicuous style, font or design which draws public attention may not be an indication of a trade name used in an ordinary way. However, whether a specific mark is indicated in usually used ways should be determined by a comprehensive review of all factors of the mark's mode of use, such as the mark's place, arrangement, size, relationship to other phrases, or use in combination with a figure. This principle equally applies to a service mark.
2. Considering the following facts that the registered service mark <Missing image> (pronounced Okryugwan) and Mark (Ga) <Missing image> (pronounced Pyungyang Okryugwan) are similar; the designated business of the registered service mark is similar to North Korean Rangmyun Restaurant business where Mark (Ga) is used; the font of Mark (Ga) is not unique so as to attract the public attention, but the word (주)평양 and the word 옥류관 is displayed in different sizes so as to make the word 옥류관 stand out; the ads of Pyungyang Okryugwan say "the famous <Missing image> Rangmyun finally opens at Daechong Station" and "<Missing image> is「Rangmyun specialized restaurant」"; 12 national franchise restaurants of Pyungyang Okryugwan have not used any mark other than Mark (Ga) to depict a North Korean Rangmyun Restaurant; the ads that have Mark (Ga) on them also have the phrase "Now check the trademark when you taste Rangmyun", and in the service business such as the restaurant business, a trade name is easily perceived as a service mark in the minds of the general public, Mark (Ga) does not constitute a trade name used in the ordinary way under Article 51 Item 1 of the TA.

Reference Provisions

1. Article 51 Item 1 of the Trademark Act
2. Article 51 Item 1 of the Trademark Act

Article 51 Item 1 of the Trademark Act (Scope of Ineffectiveness of Trademark Right)

No effect of the trademark right shall be extended to the trademark which falls under any of the following Subparagraphs:

1. A trademark indicating one's own name, title or trade name, portrait, signature, seal or well-known pseudonym, stage name, pen name and well-known abbreviation thereof, in usually used ways, except in case where the trademark is used for any unlawful competition after the establishment of the trademark right is registered.

2.~4. <omitted>

• Plaintiff, Appellant: Pyongyang Okryugwan, Inc. (Patent Attorney Jeon Bong-soo, Counsel for plaintiff-appellant)

• Defendant (Withdrawn):Kim Young-baek (Patent Attorney Lee Seung-gil, Counsel for defendant)

• Successor intervenor to Defendant, Appellee: Choi Young-soo (Patent Attorney Lee Seung-gil, Counsel for successor intervenor)

• Judgment of the court below: Patent Court Decision 2000Hu4008 delivered on November 17, 2000

Disposition

The appeal shall be dismissed. All costs of this appeal are assessed against the plaintiff-appellant.

Reasoning

Article 51 Item 1 of the TA provides that a registered trademark does not have any legal effect on a trademark indicating one's own name, title, or trade name etc. (hereinafter referred to as 'Trade Name') in usually used ways. Because one's Trade Name expresses one's identity, so long as a Trade Name is used in connection with a product only to the extent required to indicate one's business in customary ways, the effect of registration of an identical or similar trademark does not reach such Trade Name. On the other hand, if a Trade Name is used in such a way as to warrant a conclusion that it was used solely in order to distinguish one's own goods from someone else's goods, legal rights of another person's registered trademark take effect on such mark. A mark of the Trade Name that consists of a conspicuous style, font or design may be considered not to be a trademark indicating one's own trade name in usually used ways. But whether a specific mark is indicated in usually used ways should be determined by a comprehensive review of all factors of the mark's mode of use, such as the mark's place, arrangement, size, relationship to other phrases, or use in combination with a figure. This principle equally applies to a service mark.

The records show us: (i) Defendant's registered service mark (Registration No. : 15902) which consists of the word "<Missing image>" is similar to Plaintiff's Mark (Ga) which consists of the picture and the word "<Missing image>"; (ii) the designated service business of the registered service mark is similar to North Korean Rangmyun Restaurant business depicted by Mark (Ga); and (iii) although the font of Mark (Ga) is not unique so as to attract public attention, in Mark (Ga), the word (주)평양 and the word 옥류관 is displayed in different sizes so as to make the word 옥류관 stand out. Also, the ads of Pyungyang Okryugwan of Pyungyang Okryugwan say "the famous <Missing image> Rangmyun finally opens at Daechong Station" and "<Missing image> is 「Rangmyun specialized restaurant」", and 12 national franchise restaurants of Pyungyang Okryugwan have not used any mark other than Mark (Ga) to depict a North Korean Rangmyun Restaurant. In addition, the ads that have Mark (Ga) on them also have the phrase "Now check the trademark when you taste Rangmyun." Considering the above factors and the fact that in the service business such as the restaurant business, a trade name is easily perceived as a service mark in the minds of the general public, Mark (Ga) does not constitute a trade name used in the ordinary way under Article 51 Item 1 of the TA. We hold that the court below erred in concluding that Mark (Ga) does not constitute a Trade Name used in usually used ways under Artciel 51 Item 1 of the TA solely based on the combination of letters and figures or the uniqueness of the font. We agree, however, with the court below's decision that Mark (Ga) falls within the scope of the rights granted to the registered service mark in this case, and there is no reversible error as to an incomplete trial or insufficient reasons as alleged in the ground for appeal.

Therefore, the appeal shall be dismissed and all costs of this appeal are assessed against the losing party. This decision is delivered with the assent of all Justices who heard the appeal.

Source

• Supreme Court Decision 2000Hu3807 delivered on November 13, 2002, Supreme Court Library of Korea