상표의 다수 사용에 의한 후발적인 식별력 상실의 문제－ 대법원 2015. 2. 12. 선고 2013후372 판결을 중심으로 －

Article 71 (Trial for Invalidation of Trademark Registration) (1)(5) of the Trademark Act states that “Where trademark registration or the registration of additional designated goods falls under any of the following subparagraphs, an interested party or examiner may request a trial for invalidation. In such cases, if there exist two or more designated goods for the registered trademark, a request for a trial may be made for each of the designated goods: Where a registered trademark falls under any subparagraph of Article 6(1) after the registration of the trademark (excluding cases falling under Article 6(2)).” And the transitional provision concerning Trial, etc. on Registered Trademark of ADDENDA <Act No. 6414, February 3, 2001> states that “The previous provisions shall apply to a trial, retrial, and litigation pertaining to an application for trademark registration, an application for the registration for renewal of the duration of trademark rights, or an application for the registration of additional designated goods filed before this Act enters into force.” Therefore, when being determined on distinctiveness at the time of a decision, a trademark have been distinctive, but in case its distinctiveness is lost later after the trademark is registered, we can consider application of Article 71(1) 5 of the Trademark Act. By the way, the parties of lawsuits have suggested to the courts most practically that a trademark did not enable consumers to recognize whose goods it indicates in connection with a person's business as the basis of what the trademark having had distinctiveness lost its distinctiveness later for a lot of use of trademarks being identical with or similar to the registered trademark after a trademark was registered. Especially, the courts have often determined on later loss of distinctiveness through a lot of use of trademarks based on a lot of registration of trademarks identical with or similar to the registered trademark. And the courts is determining on a lot of use of trademarks practically based on a lot of registration of trademarks identical with or similar to the registered trademark regardless of real use of the trademarks. Recent Supreme Court Decision 2013Hu372 Decided February 12, 2015 has determined on the interpretation of the transitional provision of Article 71(1) 5 of the Trademark Act and problems on later loss of distinctiveness of trademarks through a lot of use of trademarks about the above issues. Therefore, this paper suggests proper direction of the interpretation about the above issues by analyzing the subject decision concretely.