기술적 단어와 영문자 1자로 일체결합된 표장의 분리인식 및 식별력 유무에 대한 고찰(대법원 2011. 2. 24. 선고 2010후3264 판결)

이철승(Lee, Chel-Seung) 세창출판사 2012 창작과 권리 Vol.- No.66

The tendency is increasing steadily that tries to register a trademark by applying with a combination of more than two non-distinctive marks to deliver the good image about the quality of goods. Among them where the mark is comprised of single English letter and another word which merely describes the quality of the goods, we are confronted with some problems, when deciding whether it creates another new distinctiveness as a whole or it is still a non-distinctive mark even through a combination of these elements. Accordingly, as examining the intent of this decision, we hope it is used in examination and decision hereafter. Where it is decided that the emblem is perceived intuitively as the quality of the mark, it can be a problem in deciding whether it, in a common way, comes under a descriptive word indicating the quality of the goods or not. Accordingly, we will examine whether we needs application of this decision or not. Also we will verify whether it is a decisive part of the non-distinctiveness when dismissing a claim in defensive confirmation trial for the scope of a trademark right and whether it needs to decide the similarity to this trademark, and whether a contention between contradictions by the holder of the registration is valid.

2단 병기상표 중 일단만의 사용을 둘러싼 제 문제

이철승(Lee Chel Seung) 세창출판사 2014 창작과 권리 Vol.- No.77

In actual trade, it is wide spread to use after applying some alterations in the registered trademark depending on the product's nature, sales market, and changes in time. But the Supreme Court has considered the English letters and their pronunciation in Korean letters, in the mark written English-Korean alphabet letters, as an important part respectively. And in case used by only some part of the registered trademark, the Supreme Court did not judge it identical use of the trademark. Finally, it is applied flexibly in interpreting the boundaries acknowledged in using registered trademark. The Supreme Court, that is, declared the decision that it uses to protect trademark owner's freedom or general customer's trust in recognizing the identity of the mark. Supreme Court en banc Decision 2012Hu2463, Sep. 26, 2013 (hereinafter referred to as "corresponding decision") judged that using a trademark composed of either English alphabet letters or Korean ones in the registered trademark corresponds to using mark which is likely to be identical with the registered trademark in terms of trade norms, in case that the registered mark is a combination of English letters and their pronunciation in Korean letters, even though it does not create a new concept from the combination besides the concept recognized from the meaning of the English word itself and it is used after omitting either the English alphabet letters or their Korean pronunciation, as long as it is likely to be called it identically to the general consumers or trader in general. This corresponding decision interpreted the boundaries acknowledged as trademark use flexibly. Accordingly, it contributes greatly to the protection of trademark owner's freedom or general customer's trust regarding recognition of the mark identity. However, another tasks are caused by this corresponding decision, and they are as in the following. First, the problem about a fairness comes up between sole mark and mark written in both languages. According to the purpose of corresponding decision, i) the trademark owner who gets registration about mark combined in both English and Korean language can use either English portion or Korean one. In this case, he/she can avoid canceling registered trademark because it is applicable to the use of registered trademark. On the other hand, ii) the trademark owner who gets registration about mark combined in either English or Korean language should use it as he/she gets a respective registration, for he/she can avoid canceling trademark in that case. Therefore, in comparison to a case ii), a case i) has wider range of use unfairly. It is likely to be unreasonable because it is against the fairness, considering a trademark owner who got a registration already like the case ii). Also, Considering that case ii) is included in the use of registered trademark, it is contradictory to the precedent that an English mark is identical to a Korean mark having an identical name. However, i) it would be more cost-effective to apply a mark using both English and Korean language than to apply a mark using either English or Korean respectively. Compared to the application of English letters only, scope of a right is likely to lessen because the name is limited due to Korean letters. So it is unlikely appropriate to approach by fairness matter, for it is the matter on which method an applicant chooses. Also, ii) in cancellation trial due to non-use, the registered trademark can be judged as having identity with mark using actually. On the other hand, both marks can be judged as identity in identical decision, so that both decisions can cause problems. However, in identical decision, it can be judged as similarity or identity in name, in case that a mark with English letters alone is registered prior and a mark with similar or identical Korean letters alone is applied later. It was caused from that each law is different from its intent. Second, considering the limit

화상디자인의 특징에 대한 창작성과 유사판단에 대한 연구

이철승(Lee, Chel-Seung) 세창출판사 2015 창작과 권리 Vol.- No.79

Graphical design was not the object of protection for the design right at the time when the Design Protection Act was established. However, it became an object of protection by implement of Design Examination Guidelines 3(1)(iii) that was amended on July 1, 2003 as IT technology develops. I, on the basis of hands-on examination, have studied the following problem caused in examining the quality of examination on graphical design. First, how dotted line is dealt in deciding the creativity and novelty in graphical design. Second, whether the use and function of graphical design are entered in detail. Third, whether it is included in the scope of protection for registered design by putting explanation about the use and function of graphical design on description column for the design. Lastly, whether the guideline of similarity determination about graphical design is redefined. I propose that the following contents be reflected in the guidelines for design examination ; 1) only the shape of the solid line part in order to obtain a registration in graphical design should be used as materials to decide its creativity. And the part of dotted line should be used as reference to grasp position, size, and scope of solid line part. 2) In graphical design, the function and use of the part to obtain a design registration should be entered on description column specifically. If not, it should be decided that it has no specification of design. 3) Part relating the function and use of graphical design should be proposed in the example of ｢Enforcement Regulation *2｣. 4) Way to decide similarity of graphical design should be based on the common knowledge of the field the design belongs to. Also, it is proposed to be decided upon consideration of the following elements ; (i) articles that become object of graphic design, (ii) function and use of the graphical design to obtain a design registration as a partial design, (iii) position, size, scope of the graphical design to obtain a design registration as a partial design among the relevant articles, (iv) pattern, shape, color or these combination of the graphical design to obtain a design registration as a partial design. Therefore, this study proposes insufficient elements found in current examination guideline to be rearranged, focusing problems caused in hands-on examining experience. Also, it proposes the quality of examination for graphical designs to be upgraded through this procedure.

하자 있는 상표등록이 소송제도에 미치는 영향분석 - 대법원 2011후3698·2014다52193 판결을 중심으로 -

이철승(Lee Chel Seung) 세창출판사 2016 창작과 권리 Vol.- No.83

(1) This case is concerning the position mark which consists of a solid line and a broken line. Even when a position mark lacks the distinctiveness in its consistent image or shape, as long as the position mark attachment to a specific location of the designated product was successful in enabling traders and consumers to recognize the product as that of a specific trademark owner, it may be registered as a trademark since distinctiveness was acquired through the aforementioned use of the position mark. Meanwhile, whether the mark has the distinctiveness, in the case of registration invalidation of the relevant trademark, is decided on the basis of the registration decision time. The time when its registration invalidation by irregularity of the distinctiveness in this trademark is decided, would be August 2, 1984, the time of registration decision. (2) The examiner, in the step of application, decided that this mark was non-distinctive since it indicates the shape of the designated goods. However, the appellate tribunal decided that it was not. On this wise, there’s a controversy about whether it has distinctiveness in the step of application. Meanwhile, when looking into other case of the registration which has applied to our country at the point of its registration decision of this mark, it is very difficult to determine if this mark has distinctiveness. Because it is not likely that a footwear-related trade is unique only in our country. Therefore, in this respect, the precedents of other countries should also be considered. We, that is, cannot obviously deny the distinctiveness of this registered trademark. (3) In the past, the Supreme Court had a negative opinion in judging grounds of invalidation in an infringement suit. However, the Supreme Court Decision 2010Da103000 stated that the grounds of invalidation could be decided in an infringement suit. Also in an infringement suit of this case, such as precedent sentenced by Supreme Court on October 18, 2012, it is decided that there is the ground of invalidation to the registered trademark. And in an infringement suit of this case, it is decided that the ground of invalidation is obvious in invalidation trial. Thus, it was decided that holder’s claim for injunction against infringement based on trademark rights is considered as an abuse of rights. (4) Meanwhile, in case that there is an obvious grounds of invalidation in invalidation trial because it lacks distinctiveness in the trademark rights in an appeal for cancellation of the trial decision for declaratory judgement on the scope of a right, it is doubted whether the relevant case can be dismissed. Even if there are proved an obvious ground of invalidation in an appeal for cancellation of the trial decision for declaratory judgement on the scope of a right, the Supreme Court proceeds with the appeal, and then it judges whether it belongs to the scope of a right. Accordingly, it judged that the mark of confirmation subject belongs to the scope of a right of this registered trademark. (5) The trademark infringement suit can draw a valid conclusion by judging the grounds for invalidation. However, since the grounds for invalidation of trademark rights cannot be judged in an appeal for cancellation of confirmation trial for the scope of a right, it may be different from the result of infringement suit. Meanwhile, the user who has not trademark rights can simply escape from responsibility of trademark right infringement, when it is claimed or proved that the effectiveness of the registered trademark is null and void, according to the intent of Article 51, the Trademarks Law. I have analysed the merits and demerits which a current trial for the scope of rights and an infringement suit have.