위치상표가 상표법상 상표의 한 가지로서 인정될 수 있는지 여부

The trademark in the trademark registration application of this case with “sports shirt, sports jacket, and pullover” as the designated goods is the type of mark where “the figure of the designated goods is drawn not with an unbroken line, but with a dotted line, etc. and a certain shape or form, etc. is affixed to a specific position inside.” The issue in this case appears to be whether the trademark in the application of this case acquired distinctiveness through use. However, as a premise for decision of the above issue, it should be determined beforehand whether the above dotted line part and etc. constitute ① merely an explanation as to the position where a certain shape or form is affixed in its inside, or ② the figure of the mark itself. The holdings of Supreme Court cases have been categorized into the aforementioned ① (the type 1 case) or ② (the type 2 cases). The issue in this case is where the trademark in the application of this case shall be placed among the inconsistent precedents. The type 1 case does not clearly reveal the legal grounds for its holding. Nonetheless, the purport of its holding seems to be acknowledging a “position mark” which has been already recognized in the trademark registration practice in the U.S. and Europe, etc. The Korean Trademark Act had defined the trademark as “symbol·character·figure or their combination”, and gradually expanded its protection and allowed trademark registration to: color trademark (amended Dec. 29, 1995); three dimensional trademark (amended Aug. 22, 1997); entire visually-recognizable trademarks (amended Jan. 3, 2007); and non-visual trademark (amended Dec. 2, 2011). The mark like the trademark in the application of this case where “the figure of the designated goods is drawn not with an unbroken line, but with a dotted line, etc. and a certain shape or form, etc. is affixed to a specific position inside” itself constitutes a visually-recognizable trademark. Thus, even if it is regarded as a position mark, it does not pose any problem since a position mark is already recognized as a trademark under the Korean Trademark Act. However, the trademark registration practice of the Korean Intellectual Property Office does not provide “a position mark application and registration system.” Thus, no procedural provision is available for the applicant to explain that “the part of dotted line, etc. is not specifying the outer line of the designated goods' figure and merely marking a specific position where a certain shape or form, etc. is affixed inside.” However, it will be against legal emotion to deny the application merely because a procedure in the registration practice is not available, where the applied trademark constitutes one type of trademarks. Further, specification of the designated goods' figure with the “dotted line, etc.” itself can be construed as the aforementioned “explanation.” One Supreme Court precedent already explicitly rendered a judgment based on such construction (the type 1 case). Recent lower court decisions in the infringement lawsuits, reconciliation recommendation rulings, compulsory mediation rulings, and the Korean Intellectual Property Tribunal's decisions, etc. have been premised on such construction. In those cases, the parties mostly did not file objections as to such holding or reconciliation(mediation) recommendation. It appears that the interested parties accept the method of explaining a position mark by specifying the designated goods' figure with a “dotted line, etc.” under the current situation. Thus, a position mark can be fully acknowledged as one type of trademarks under the Trademark Act. In the subject case of this article, the Supreme Court corrected inconsistent holdings among its precedents and acknowledged for the first time that a position mark is one type of trademark under the Korean Trademark Act through en banc decision based on the legal and empirical grounds. Further, it for the first time presented the definition of a position mark and established the reasonable standard of review in the determination of a trademark applied for registration as a position mark. Moreover, it practically contributed to providing legal reliefs to trademark applicants by solving the problems caused by the absence of a procedural provision.