“섬 초” 상표의 무효에 대하여

A Case Study Regarding Trademark Appeal Board Case No. 2018DANG639, and Patent Court Case No. 2018HUR5020 on Becoming Generic Name of “섬 초”(it means “vegetables from islands”) for Vegetables for Class 31

A registered trademark “섬 초”(it means “vegetables from islands”) was registered on March 29, 1996 for vegetables including spinach for class 31. The trademark has been used on spinach for more than 20 years in Korea. A petitioner filed an invalidation against the registered mark under the ground that the trademark has become a generic name for spinach. If a trademark has become a generic name for the product, the mark should be cancelled rather than invalidated. However, Korean Trademark Law provides that an invalidation instead of cancellation shall be filed in case a trademark has become a generic name. This provision was introduced in Korean Trademark Law in 2001. This is a wrong provision because they do not understand differences between invalidation and cancellation. This is a very serious matter in the Korean trademark system. The Korean Trademark Office decided that the trademark has become a generic name for spinach at the time of filing the invalidation. However, the Korean Patent Court reversed the Trademark Office Decision, reasoning that becoming a generic name should be determined at the time of registration of the mark but not at the time of filing the invalidation. The Court is totally wrong.