“APPLIED MEDICAL” 상표의 거절에 대하여 [특허심판원 2017.9.5. 심결 2016원3517, 특허법원 2018.3.30. 선고 2017허7531 거절결정(상)]

A Case Study Regarding Trademark Appeal Board Case No. 2016WON3517 against Examiner’s Rejection for “APPLIED MEDICAL” for “medical and surgical devices” in Class 10

The Korean Trademark Office rejected “APPLIED MEDICAL” for “medical and surgical devices” in Class 10 under the grounds that the mark is descriptive in connection with the designated goods under Article 6 Section 1 Paragraph 3 of Korean Trademark Act and that the mark is lack of distinctiveness under Article 6 Section 1 Paragraph 7 of Korean Trademark Act. The Patent Court affirmed the Trademark Office’s decision. “APPLIED MEDICAL” is not required to describe any characteristics of the goods “medical and surgical devices.” “APPLIED” or “MEDICAL” can be required to describe any characteristics of the goods. “APPLIED MEDICAL” is suggestive but not descriptive in connection with the goods. The PTO and Patent Court dismissed the applicant’s arguments that the subject mark was registered in many countries for the same goods, reasoning that the examination for registrability of a mark should be carried out by their own standards and criteria.