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Korean Court Case Report – 2012 – ADIDAS mark
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관리자
15-12-28 15:27
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The Korean Supreme Court ("KSC") held by full bench, on December 20, 2012, to the effect that the mark below ("subject mark") shall be registered as a trademark in the Korean Intellectual Property Office (Case No. 2010 HU 2339). The subject mark was filed for the designated goods of sports shirts, etc. by ADIDAS AG ("ADIDAS") which is a worldwide famous company in the sports clothes and articles.
By the decision above of the KSC, the KSC canceled a decision held on July 14, 2010(Case No. 2010 HEO 364) of the original court, the Korean Patent Court ("KPC").
By the decision above of the KSC, the KSC canceled a decision held on July 14, 2010(Case No. 2010 HEO 364) of the original court, the Korean Patent Court ("KPC").
The followings are the major grounds of the KPC's decision which rejected the registration of the subject mark and those of the KSC's decision which accepted the registration of the subject mark.
ⓐ The subject mark is a device mark which is composed of a shape of a sports shirts expressed by dotted lines and three thick lines from the flank to the waist. The shape of a sports shirts expressed by dotted lines has no distinctiveness as a trademark because it indicate a general shape of the designated goods.
ⓑ In addition, the three thick lines from the flank to the waist has no distinctiveness as a trademark because they can not be a independent distinctive device but recognized as a pattern decorating a goods.
ⓒ Therefore, the subject mark falls under a descriptive mark and it cannot be registered.
B. The decision of the KSC
(A) The grounds the KSC accepted the registration of the subject mark
ⓐ The subject mark is the one composed of a shape of shirts expressed by dotted lines with the attachment of three thick lines from the flank to the waist. In this mark, the part of a shape and the part of the three thick lines are separated to each other.
ⓑ Furthermore, in the location form he flank to the waist of a goods, a shape or a pattern as shown in the subject mark can be attached, since the designated goods of the subject mark, sports shirts, etc. belong to shirtwaist.
ⓒ In view of overall composition of the subject mark, the kind of lines used in its parts and the sort and characteristics of the designated goods, regarding the part showing the shape of the designated goods, it can be easily recognized that the intention of ADIDAS is to explain the location to attach the three thick lines
ⓓ Hence, the subject mark is a location trademark which discriminates its goods from other person's goods by attaching the three thick lines from the flank to the waist on the designated goods. The part expressed by dotted lines is not a device which composes the subject mark. Therefore, the subject mark can be registrable.
(B) The judgement of a location trademark by the KSC
ⓐ A location trademark was accepted first and newly in Korea
Under the definition provision of trademark of the Korean Trademark Act, a mark, which is comprised of certain shape and pattern by sign, letter, device and combination thereof, discriminating its goods from other person's goods by attaching to a specific location of the designated goods can be accepted a kind of trademarks. This kind of mark is called 'location mark'. Location mark needs a part that indicates the shape of the designated goods to explain a specific location of the designated goods to which certain shape and pattern is attached.
ⓑ Registration of a location trademark by acquisition of distinctiveness by use before application
Location mark can be registered by acquisition of distinctiveness by use before application, in case the mark has known as an indication of a specific person's goods to most of the traders and consumers of the goods by using of attachment to a specific location of the designated goods, though certain shape and pattern itself has no distinctiveness.
* The above contents are protected by relevant Korean copyright law. Any part of the contents may not be reproduced or used commercially without prior written permission by the copyright holder. Thank you. *
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