Open Decision Ledger · IP, data & telecommunications
When a design shape counts as use of a trademark
Supreme Court, Dec. 16, 2021, 2019Hu10418 (judgment)
No holding summary · checked against points at issue. The official text publishes no summary of the holding for this decision. The quotation and factors in this record are copied verbatim from the points at issue; the evidence for each axis is taken from the points at issue, the order and the reasons.
Case name: 권리범위확인(상)
Official text on the National Law Information Center
Question
When a sign applied to goods could equally be a design, may it still be treated as use of a registered trademark, and did the Patent Court err in holding that Company B's three-line groove shape on wiring ducts was used only as a design?
Holding
Design and trademark are not exclusive, so a shape that could be a design is used as a trademark when it serves as a sign indicating the source of the goods. Whether that is so is decided by weighing the relation between the sign and the goods, the manner of use such as the position and size shown on the goods, the fame of the registered trademark, and the user's intention and circumstances of use, against whether the sign actually functions as an identifier of goods in the real market. On these facts the Court held that Company B's three-line groove shape was used as a trademark, because it was a shape that also served as an identifier of goods in the real market and Company B, knowing that Company A's registered three-dimensional trademark indicated the source of Company A's goods, used it in a manner not very different from the registered trademark's, so the premise that the sign was only decoration or exterior was a misapplication of the law.
Points at issue, verbatim
제반 사정에 비추어, 을 회사의 확인대상표장은 상표로서 사용되었다고 봄이 타당한데도, 을 회사의 확인대상표장이 등록상표의 권리범위에 속하지 않는다고 본 원심판단에 법리오해의 잘못이 있다고 한 사례
Unofficial English translation
In light of all the circumstances, it is reasonable to regard B Corporation's mark subject to confirmation as having been used as a trademark; nevertheless, the court below held that B Corporation's mark subject to confirmation does not fall within the scope of the rights of the registered trademark, which determination entails a misapprehension of legal principles.
Disposition
Reversed and remanded Stated in the decision
원심판결을 파기하고, 사건을 특허법원에 환송한다.
Unofficial English translation
The judgment of the court below is reversed, and the case is remanded to the Patent Court.
Form of the test
Circumstances weighed Stated in the decision
표장과 상품의 관계, 상품 등에 표시된 위치나 크기 등 당해 표장의 사용태양, 등록상표의 주지저명성 및 사용자의 의도와 사용경위 등을 종합하여 실제 거래계에서 그 표시된 표장이 상품의 식별표지로서 사용되고 있는지를 기준으로 판단하여야 한다
Unofficial English translation
It must be determined, taking into account in combination the relationship between the mark and the goods, the manner of use of the mark such as the position or size at which it is displayed on the goods, etc., the well-known status of the registered trademark, and the user's intention and the circumstances of use, whether the displayed mark is being used as an indication identifying the goods in actual trade.
Factors
- 디자인이 될 수 있는 형상이나 모양이 상표로서 사용된 것으로 볼 수 있는 경우
- 타인의 등록상표와 동일 또는 유사한 표장을 순전히 디자인적으로만 사용하여 상표의 사용으로 인식될 수 없는 경우, 상표권 침해로 볼 수 있는지 여부(소극)
- 지정상품을 배선함, 배전함, 전선관 등으로 하는 등록상표
- 제반 사정에 비추어, 을 회사의 확인대상표장은 상표로서 사용되었다고 봄이 타당한데도
Unofficial English translation
• Cases in which a shape or form capable of constituting a design may be regarded as having been used as a trademark
• Whether infringement of trademark rights may be found where a mark identical or similar to another's registered trademark is used purely for design purposes in such a manner that it cannot be recognized as use as a trademark (negative)
• A registered trademark whose designated goods are junction boxes, distribution boxes, conduits, etc.
• In light of all the circumstances, it is reasonable to regard B Corporation's mark subject to confirmation as having been used as a trademark; nevertheless,
Relation to precedent
Follows earlier decisions Stated in the decision
대법원 2000. 12. 22. 선고 2000후68 판결, 대법원 2003. 2. 14. 선고 2002후1324 판결(공2003상, 845)
Unofficial English translation
Supreme Court Decision 2000Hu68 decided December 22, 2000, Supreme Court Decision 2002Hu1324 decided February 14, 2003 (Gong 2003 Sang, 845)
Decisions referred to
[1] 대법원 2000. 12. 22. 선고 2000후68 판결, 대법원 2003. 2. 14. 선고 2002후1324 판결(공2003상, 845), 대법원 2003. 4. 11. 선고 2002도3445 판결(공2003상, 1218), 대법원 2013. 1. 24. 선고 2011다18802 판결(공2013상, 381), 대법원 2013. 2. 14. 선고 2011도13441 판결(공2013상, 523), 대법원 2013. 3. 28. 선고 2010다58261 판결(공2013상, 724)
Burden of proof
Not addressed Not in the decision
Open question and revisit condition
Whether Company B's three-line groove sign is identical or similar to Company A's registered three-dimensional trademark and falls within its registered scope, which the remand was ordered to decide?
The Patent Court's judgment after the remand of 16 December 2021 will show how similarity and the scope of rights are decided once the asserted sign is treated as used as a trademark. Any amendment to Article 108(1)(i) or Article 121 of the Trademark Act, or a later Supreme Court decision revising the criteria for trademark use of a shape that could be a design, would require this entry to be read again.
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Lower-court contrast & scope of application
Lower-court reading vs. Supreme Court holding
Lower-court context: The Patent Court, in its judgment of 22 February 2019 (2018Heo6603), started from the premise that the three-line groove shape shown on wiring ducts was perceived only as the decoration or exterior of the goods and had no source-indicating function. On that premise it did not go on to examine whether the signs were identical or similar, and held that Company B's asserted sign was not used as a trademark, so it fell outside the scope of Company A's registered three-dimensional trademark for wiring boxes, switch boxes, conduits and similar goods.
Supreme Court standard: The Supreme Court held that design and trademark are not exclusive, and that the three-line groove was a shape that could be a design while also being used in the real market as an identifier distinguishing other goods, so it could not be said to be used purely as a design. On the evidence it found that the registered trademark could be regarded as having become known to the purchasers of wiring ducts as a source indicator of Company A's goods around 2017, that Company B competes with Company A in that industry and used a sign whose size and position were not very different from the registered trademark's, apparently to ride on its customer pull, and that Company B obtaining a design registration after the trial request did not alter that view. The court below had misapplied the law on use of a trademark and had failed to conduct the examination needed, so the judgment was reversed and the case sent back to the Patent Court on the unanimous opinion of the Justices.
Distinguishing conditions
- A sign applied to a registered trademark's goods that is used purely as a design or decoration and cannot be recognised as use of a trademark.
- A case in which the registered sign was not known to the purchasers of the goods as a source indicator at the time of the asserted use, since the Court relied on such knowledge being able to be found as of around 2017.
- A case in which the manner of use, such as the position and size of the sign on the goods, differs substantially from the manner in which the registered trademark is used.
Record verification notes
This decision settles only that the asserted sign was used as a trademark. It does not decide whether Company B's three-line groove sign is identical or similar to Company A's registered three-dimensional trademark and falls within its scope, because the Patent Court never reached that question. Before relying on it elsewhere, check the evidence on fame among the principal purchasers of wiring ducts, the content, period and scale of advertising, the registered design records including the 13 designs then in force, and Company B's position as a competitor, and keep in mind that the provisions applied were Article 108(1)(i) and Article 121 of the Trademark Act.
From the official text
Points at issue
[1] 디자인이 될 수 있는 형상이나 모양이 상표로서 사용된 것으로 볼 수 있는 경우 / 타인의 등록상표와 동일 또는 유사한 표장을 순전히 디자인적으로만 사용하여 상표의 사용으로 인식될 수 없는 경우, 상표권 침해로 볼 수 있는지 여부(소극) 및 이때 표장이 상표로서 사용되었는지 판단하는 기준 [2] 지정상품을 배선함, 배전함, 전선관 등으로 하는 등록상표 “”의 등록상표권자인 갑 주식회사가 을 주식회사를 상대로 을 회사의 확인대상표장인 배선덕트 상품에 표시한 세 줄의 홈 형상인 “”의 실선 부분이 권리범위에 속한다고 주장하며 적극적 권리범위 확인심판을 구한 사안에서, 제반 사정에 비추어, 을 회사의 확인대상표장은 상표로서 사용되었다고 봄이 타당한데도, 을 회사의 확인대상표장이 등록상표의 권리범위에 속하지 않는다고 본 원심판단에 법리오해의 잘못이 있다고 한 사례
Unofficial English translation
[1] Cases in which a shape or form capable of constituting a design may be regarded as having been used as a trademark / Whether infringement of trademark rights may be found where a mark identical or similar to another's registered trademark is used purely for design purposes in such a manner that it cannot be recognized as use as a trademark (negative), and the criteria for determining whether the mark was used as a trademark in such cases [2] In a case where A Corporation, the holder of the exclusive right to the registered trademark "" whose designated goods are junction boxes, distribution boxes, conduits, etc., filed against B Corporation a suit seeking an affirmative trial to confirm the scope of rights, claiming that the solid-line portion of the three-groove shape "" displayed on the wiring duct goods, which is B Corporation's mark subject to confirmation, falls within the scope of the rights, an instance where it was held that the determination of the court below that B Corporation's mark subject to confirmation does not fall within the scope of the rights of the registered trademark entails a misapprehension of legal principles, even though, in light of all the circumstances, it is reasonable to regard B Corporation's mark subject to confirmation as having been used as a trademark
Summary of the holding
The official text publishes no summary of the holding for this decision. The quotation and factors in this record are copied verbatim from the points at issue; the evidence for each axis is taken from the points at issue, the order and the reasons.
Order
원심판결을 파기하고, 사건을 특허법원에 환송한다.
Unofficial English translation
The judgment of the court below is reversed, and the case is remanded to the Patent Court.
Provisions referred to
[1] 상표법 제108조 제1항 제1호 [2] 상표법 제108조 제1항 제1호, 제121조
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