기술표장 판단에 관한 심판 및소송의 문제점 -특허법원 사건 2015허3771 판결을 중심으로-

Review on Descriptive Mark at Appeal before Patent Appeal Board and Patent Court-In re Patent Court Case No. 2015HUR3771-

The appeals at the Korean Patent Appeal Board (KPAB) and the Korean Patent Court (KPC) have a serious problem in determining registrability between descriptive and suggestive. In Patent Court Case No. 2015HUR3771, a mark “5 HOUR ENERGY” was decided as descriptive in connection with ‘health supplementary foods, dietary foods etc’ in class 5. The mark was registered in many English speaking countries because they decided the mark as suggestive rather than descriptive. Nonetheless, the mark was decided as descriptive in non-English speaking country, Korea. In order to decide whether a mark is descriptive or suggestive, we should decide whether the mark (the term) is or will be needed for a competitor to use the term to describe the characteristics of goods or not. In other words, if the term is necessary to deliver information on the goods, it should be decided as descriptive. If so, is the mark “5 HOUR ENERGY” necessary for a competitor to use the term to describe the characteristics of goods? The Korean Trademark Office and the Korean Patent Court answered ‘YES’. How stupid!