“FAKE DUCK” 도형상표의 성질표시

FAKE DUCK: Figurative mark descriptive – Word mark not

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.