[판례평석] 특허법원 2016.9.30. 선고 2016허1949 판결 특허무효심판 심결에 대한 취소소송

최덕규(Dukkyu Choi) 세창출판사 2016 창작과 권리 Vol.- No.85

When we determine inventive step of an invention, cited prior arts should be correct, which means that the prior arts should have the identical technical field with that of the subject invention. This is a difference between inventive step and novelty. In determining novelty, the cited prior arts encompass all kinds of technology because the novelty is determined by identity of both inventions. The subject invention relates to a coated yarn in which multi filament polyester is coated with PVC. The coated yarn is for fabric for blinder or floor fabric. The fabric has a drawback of fuzzing when installed. To solve the fuzzing problem, the subject invention was developed to use the multifilaments with low melting point and high shrinkage. D1 discloses a monofilament coated with PVC for guitar cord or tennis racket cord. D2 discloses a composite yarn (sea and island yarn). Neither D1 nor D2 has a drawback of fuzzing. How can the subject invention be invalidated as lack of inventive step in view of D1 over D2?

광고 메시지의 식별력―“we’re on it”은 식별력이 없다

최덕규(Dukkyu Choi) 세창출판사 2020 창작과 권리 Vol.- No.100

Registration of the word mark ‘we’re on it’ was refused. In this context, the CFI provided information on the assessment of the distinctiveness of an advertising message and a slogan. Even a promotional advertising message may be protected as a trade mark―but several interpretations of the slogan are not sufficient for distinctiveness. It is true that even an advertising message or slogan used as an indication of quality or as an invitation to purchase the goods or services covered by the marks may be expressly protected as a trade mark. Even a laudatory meaning of a word mark does not in principle preclude the advertising message from being protected as a trade mark. A prerequisite for this is that such a slogan is not just an ordinary advertising message, but must have a certain originality or resonance which requires at least an interpretation by the relevant public, the CJEU has already clarified several times. Nor can it be required for the minimum degree of distinctiveness required that the advertising slogan be “fanciful” and contain a surprise effect, the Court added. However, if a plaintiff claims that a trade mark applied for has distinctive character, contrary to the assessment made by the EUIPO, he must demonstrate by means of concrete and substantiated information that the trade mark applied for either has inherent distinctiveness or has acquired it through use. In the present case around the advertising message ‘we’re on it’, the CJEU refused trademark protection. The phrase “we’re on it” meaning “we’ll take care of it” was a banal message, the Court held, a promise formulated in such general terms that it could be used by any supplier or service provider to encourage the purchase of goods or services. That advertising message did not contain any additional distinctive element beyond its obvious promotional meaning. The mark applied for is a promise made in general terms and a common advertising message which applies without distinction to all the goods and services concerned. The Court therefore held that the mark was not capable of identifying the commercial origin of those goods and services and upheld the Board of Appeal’s identical decision.

[특별기고] 대한민국 특허(상표)제도의 문제점(Ⅶ)

최덕규(Dukkyu Choi) 세창출판사 2012 창작과 권리 Vol.- No.69

Similarity of a mark shall be carried out when a mark is examined for registration or when an infringement of a mark is proceeded. In most cases, similarity of a mark includes similarity of the goods or services. Similarity of a mark is determined based on three methods, pronunciation, appearance and connotation. If similarity in one such aspect is not full decisive of likelihood of confusion, the issue may be determined by considering the other aspects and their cumulative effect. Dissection or analysis of a mark is not recommended in principle when determining similarity or distinctiveness. Interpretation or translation of a mark is not always welcomed especially when determining distinctiveness. When similarity issue arises during prosecution, an agreement of coexistence from the senior mark owner would be preferably adopted for confirming non-similarity.

발명의 진보성 판단에 대하여: 특허심판원 2019. 6. 27. 심결 2017원4569

최덕규(Dukkyu Choi) 세창출판사 2019 창작과 권리 Vol.- No.97

The standard of nonbviousness is applied in three steps-(1) a survey of the scope and content of the prior art, (2) an examination of the differences between the invention and the prior art, and (3) a determination of the level of ordinary skill in the art. In the light of that three-stage process, one can decide whether the differences revealed in the second stage are nonobvious. The first step is to survey the scope and content of the prior art, defining which prior art is both applicable and relevant. The relevant, applicable, prior art must be that which is either pertinent to the invention or analogous to that which is clearly pertinent. Step two, an examination of the differences between the invention and the prior art, requires reconstructing the prior art. Reconstructing the prior art always is done from the perspective of hindsight. Reconstruction involves the application of a hypothetical standard-what the reasonable person skilled in the art would have known-as of an objective time in the past. The third step involves not only assessing the level of skill but applying it to the invention itself. This inquiry is neither mechanical nor structural but functional, applying to the invention as a whole. The prior art must be used to determine whether the invention’s new and useful function, not necessarily its construction, is nonobvious. In the subject decision of the Patent Appeal Board, the Board analyzed the claimed invention of claim 1 into five elements. The Board states that the five elements are disclosed in prior art reference 1 or 2, and concludes that the claimed invention is lack of inventive step over references 1 and 2. The Board never discussed about the technical features or synergistic results of the claimed invention compared to the cited references. The Written Opinion of WIPO states that the claimed invention has inventive step over reference 2. However, the Board never discussed about the Written Opinion. The counterpart applications were accepted for patent in U.S.A., Japan, China and EPO. Also, the Board never discussed about the counterpart patents.

“FAKE DUCK” 도형상표의 성질표시

최덕규(Dukkyu Choi) 세창출판사 2021 창작과 권리 Vol.- No.102

유럽 제1심 법원(CFI)은 “FAKE DUCK”이 의류의 합성섬유 충진재를 의미하는 “모조 오리털(false duck feathers)”을 의미하는 것으로 패션 제품에 대해 기술용어(descriptive)라고 판단하였다. 유럽특허청은 이미 문자상표 “FAKE DUCK”에 대해 상표등록을 인정하였다(본지 제101호 참조). 그러나 유럽 법원은 아래 “FAKE DUCK” 도형상표(“본원상표”)에 대해 등록을 거절하였다. FAKE DUCK is descriptive of fashion; in the meaning of “false duck feathers” it describes synthetic fillings in clothing, the CFI ruled. Registration of the figurative mark FAKE DUCK was therefore refused – although the identical word mark is protected as a Union trademark. Itinerant Show Room Srl is the owner of the Union word mark FAKEDUCK for goods in the fashion and leather goods sector. However, when Itinerant Show Room 2018 additionally applied for the adjacent figurative trademark FAKE DUCK at the European Trademark Office (EUIPO), the desired trademark registration was rejected: the figurative trademark FAKE DUCK is descriptive for fashion and leather goods. On this basis, the trademark registration was refused – by the EUIPO as well as by the Board of Appeal. The applicant claimed that it was itself the proprietor of an earlier EU word mark FAKEDUCK for the same goods. And if the earlier word mark FAKEDUCK is distinctive, the same must apply to the figurative mark FAKEDUCK applied for. However, that argument was also rejected. It is true that, when examining an application for registration of a Union trade mark, EUIPO must take account of decisions already taken on similar applications, the CFI explained. However, an applicant for a sign as a trademark cannot rely on a possible illegality in favour of others for his own benefit in order to obtain an identical decision; each trade mark registration must be considered as an individual case, the CFI ruled.

유럽에서의 상표침해 판단―“KENWELL”과 “KENWOOD”는 유사하다

최덕규(Dukkyu Choi) 세창출판사 2020 창작과 권리 Vol.- No.100

In 2014 the applicant, Wonder Line, SL (Spain), filed an application for registration of an EU trade mark for KENWELL. The opposition was based, inter alia, on the EU word mark KENWOOD, which was registered on 18 December 2002. The opponent, De Longhi Benelux SA (Luxembourg), claimed that that mark was well known throughout the European Union for kitchen appliances and mixers. It was in respect of those same goods that the contested mark KENWELL was claimed, inter alia, in Classes 7, 9 and 11 of the Nice Agreement. By decision of 11 February 2019 (‘the contested decision’), the Second Board of Appeal of EUIPO dismissed the appeal. The applicant for the trade mark KENWELL brought an action against that decision before the European Court of First Instance (CFI). The Board of Appeal had found that there was an average degree of similarity both visually and phonetically. And since the signs are not perceived as vocabulary, the conceptual comparison is not possible or not relevant for the assessment of the likelihood of confusion. Moreover, the goods covered by the marks in question are ‘partly identical, partly similar and partly slightly similar’―and that assessment was not challenged by the parties. The applicant argued that the double consonants ‘LL’ in the mark applied for and ‘OO’ in the earlier mark made it impossible to confuse those marks visually, as did the signs -WELL and -Wood, which are understood as words by the English-speaking public in the EU and thus also imply a conceptual difference. The two syllables ‘KEN’ and ‘WOOD’ of the earlier mark and ‘KEN’ and ‘WELL’ of the mark applied for are also pronounced, so that the two marks, taken together, are not phonetically similar. The Court of First Instance examined very carefully the sequence of signs of the two marks, as is usual in such proceedings concerning likelihood of confusion between word marks. Each of these marks contains seven letters, and they also share the same first four letters “K”, “E”, “N” and “W”, which are arranged in the same order, the CFI held. Moreover, the last three letters in both marks are followed by double letters. There is therefore at least a medium degree of visual similarity, the CFI held. The same applies to the phonetic similarity, which also shows at least a medium degree of similarity. “KEN-WOOD” versus “KEN-WELL”: the first syllable is phonetically identical, the second syllable begins with the same consonant “W”, and the two marks also have the same phonetic length. Finally, the Court of First Instance also examined the conceptual similarity. “It is true that ‘WOOD’ and ‘WELL’ are part of the vocabulary of the English language and that the element ‘KEN’, which is common to both marks, could also mean ‘range of knowledge or perception’ according to the Collins dictionary, the Court of First Instance stated. However, the Court found that, for the English-speaking public, the word elements ‘KENWOOD’ and ‘KENWELL’, which are unusual in their structure, are not well-known expressions in English. The Board of Appeal was right to find that the marks at issue had no meaning overall and that no conclusion could be drawn from their conceptual comparison, the CFI held.

특허심판원 2014.10.30. 심결 2013원4371 국제상표등록출원 제1118176호 거절결정불복심판 심결에 대하여

최덕규(Dukkyu Choi) 세창출판사 2018 창작과 권리 Vol.- No.90

The Korean Trademark Office rejected “ROCKY MOUNTAIN CHOCOLATE FACTORY” for “retail store services in the field of chocolates and other confections” in Class 35, reasoning that the mark is lack of distinctiveness under the provision of Article 6 Section 1 Paragraph 7 of Korean Trademark Act. In my opinion, “CHOCOLATE”, “FACTORY” or “CHOCOLATE FACTORY” is not distinctive in connection with the designated services due to the descriptiveness thereof, however, “ROCKY MOUNTAIN” has nothing to do with the services. “ROCKY MOUNTAIN” is an arbitrary in connection with the services. Accordingly, the mark is inherently distinctive for registration as trademark. Even worse, the Trademark Trial Board had discussed about the secondary meaning of the mark by use, which is not necessary because the mark is an arbitrary but not a descriptive.

특허법원 2015.6.26. 선고 2015허17 거절결정(상) 판결에 대하여

최덕규(Dukkyu Choi) 세창출판사 2018 창작과 권리 Vol.- No.91

The Korean Patent Court rejected “ROCKY MOUNTAIN CHOCOLATE FACTORY” for “retail store services in the field of chocolates and other confections” in Class 35, reasoning that the mark is lack of distinctiveness under the provision of Article 6 Section 1 Paragraph 7 of Korean Trademark Act. In my opinion, “CHOCOLATE”, “FACTORY” or “CHOCOLATE FACTORY” is not distinctive in connection with the designated services due to the descriptiveness thereof, however, “ROCKY MOUNTAIN” has nothing to do with the services. “ROCKY MOUNTAIN” is an arbitrary in connection with the services. Accordingly, the mark is inherently distinctive for registration as trademark. Even worse, the Patent Court had discussed about the secondary meaning of the mark by use, which is not necessary because the mark is an arbitrary but not a descriptive.

상표 “REVANESSE”의 권리범위확인심판의 환송사건에 대한 특허법원의 판결에 대하여―특허법원 2019허63961)

최덕규(Dukkyu Choi) 세창출판사 2020 창작과 권리 Vol.- No.101

A Canadian company, Prollenium, is the owner of a Korean trademark registration for ‘REVANESSE’ in class 03 (cosmetic gel in prefilled syringes for use in cosmetic treatment procedures) . Later, a Korean company, BR Pharm, had used ‘Reviness ’ on the same products. According to the Korean practice and regulations, Prollenium filed a trial for declaratory judgement on infringement of ‘Reviness ’ over ‘REVANESSE’. The Trademark Office dismissed the trial, reasoning that the BR Pharm’s trademark ‘Reviness ’ is not similar to the Prollenium’s registered trademark ‘REVANESSE’. Prollenium filed an appeal against the PTO’s decision before the Patent Court. The Court reversed the decision. The Court decided that the trademark ‘Reviness’ is similar to the registered trademark ‘REVANESSE’. BR Pharm filed a petition with the Korean Supreme Court. BR Pharm alleged that the trial should have been dismissed because they had obtained a registration for ‘Reviness’ (‘리바이네스’ is a Korean transliteration of ‘Reviness ’). The Supreme Court accepted BR Pharm’s allegations. However, the junior trademark of ‘Reviness’ was filed after the trial was filed. In other words, the junior mark had not existed at the time of filing the trial of declaratory judgement over the senior mark. This is one of the worst decisions delivered by the Supreme Court. Further, the Patent Court reversed the PTO decision that the junior trademark of ‘Reviness’ is invalidated over the senior mark ’REVANESSE’. The Patent Court overruled the Supreme Court decision.

상표 ‘REVANESSE’의 권리범위확인심판청구의 기각에 대하여 : 특허심판원 2016당1614, 특허법원 2018허1264 및 대법원 2018후11698

최덕규(Dukkyu Choi) 세창출판사 2020 창작과 권리 Vol.- No.99

A Canadian company, Prollenium, is the owner of a Korean trademark registration for “REVANESSE” in class 03 (cosmetic gel in prefilled syringes for use in cosmetic treatment procedures) . Later, a Korean company, BR Pharm, had used ‘Reviness ’ on the same products. According to the Korean practice and regulations, Prollenium filed a trial for declaratory judgement on infringement of ‘Reviness ’ over ‘REVANESSE’. The Trademark Office dismissed the trial, reasoning that the BR Pharm’s trademark ‘Reviness’ is not similar to the Prollenium’s registered trademark ‘REVANESSE’. Prollenium filed an appeal against the PTO’s decision before the Patent Court. The Court reversed the decision. The Court decided that the trademark ‘Reviness ’ is similar to the registered trademark ‘REVANESSE’. BR Pharm filed a petition with the Korean Supreme Court. BR Pharm alleged that the trial should have been dismissed because they had obtained a registration for ‘Reviness리바이네스’ (‘리바이네스’ is a Korean transliteration of ‘Reviness ’). The Supreme Court accepted BR Pharm’s allegations. However, the junior trademark of ‘Reviness리바이네스’ was filed after the trial was filed. In other words, the junior mark had not existed at the time of filing the trial of declaratory judgement over the senior mark. This is one of the worst decisions delivered by the Supreme Court.