[판례평석] 특허법원 2016.6.17. 선고 2015허7803 상표등록무효심판 심결에 대하여

A Case Study Regarding Patent Court Case No. 2015HUR7803 for Invalidation of “독도참치(stylized)” for Class 43

A Korean letter mark “독도참치” (Dokdo Chamchi: “Dokdo” means ‘Dokdo island’ and “Chamchi” means ‘tuna’) is a suggestive mark in connection with tuna restaurants if it delivers a good image from the geographical island name. Like a mark “SPOON” for use on cigarettes, the mark “독도참치” is an arbitrary mark if Dokdo does not have any relationship with tuna restaurants. The island Dokdo is not a geographical area which is well known as the origin of tuna to Korean people. As a result, the mark “독도 참치” shall be deemed as at least suggestive or arbitrary. Due to lack of understanding of the mark “독도참치”, “미송(MISONG) 독도 참치 & device”, “골드(GOLD) 독도참치”, “독도참치 & device”, “원본 부(WonBonBu) 독도참치”, “진우리(Jinwoori) 독도참치 & device”, and “KJW OK 독도참치” have been registered, while the subject mark “독도참치” was deemed as non-distinctive and failed from registration. As a suggestive or an arbitrary is inherently distinctive, it is not necessary to discuss about the secondary meaning. In other words, the subject mark “독도참치” cannot be registered under the ground that it has obtained secondary meaning through a quantitative use, based on Korean Trademark Law Article 6 Section 2. In addition, Article 6 Section 1 (iv) provides one of non-registrable marks as a mark consisting of a geographical name only. If a geographical name does not deliver any meaning in connection with the goods or services, there is no ground not to be registered as trademark. The better, the sooner the provision is removed.