블록 장난감 형상으로 이루어진 입체상표의 식별력판단에 대한 고찰 - 대법원 2014. 10. 15. 선고 2012후3800 판결을 중심으로 -

Article 6(1) 3 of the Trademark Act states that “trademark registration may be granted, except a trademark falling under the following subparagraph: any trademark consisting solely of a mark indicating in a common way the shape(including the shape of the package) of the goods”. And Article 6(2) of the Act states that “Even though a three-dimensional mark falls under Article 6(1) 3 of the Act, if whose goods it indicates in connection with a person’s business is remarkably recognized among consumers as a result of using the trademark before the application for trademark registration, the mark may be registered, with goods using such trademark designated“. In general, a three-dimensional mark has not been often registered based on non-distinctiveness and determining distinctiveness of the mark was very difficult practically because definite legal principles of determination on distinctiveness of a three-dimensional mark were not previously established in Korea. But Supreme Court of Korea’s recent decision(Supreme Court Decision 2012Hu3800 Decided October 15, 2014; hereinafter “the subject decision”) concerns important legal principles related to determining distinctiveness of a three-dimensional mark composed of the shape of a toy block. The subject decision held that in this case on the shape of a toy block, Article 6(1) 3 of the Trademark Act applies where a three-dimensional mark is regarded to indicate the general shape of a toy block in question and the registration of a three-dimensional mark which has acquired distinctiveness through use, prescribed under Article 6(2) of the Act, is not acceptible when the shape of the goods has not been actually used as indicating source of the goods. In several countries including Japan, US and EU, definite legal principles of determination on distinctiveness of a three-dimensional mark have been already established based on many decisions of courts. In case of studying main trends of legal principles of determination on distinctiveness in Japan, US and EU, we find that courts have decided that most of three-dimensional marks didn’t have intrinsic distinctiveness but have finally decided on trademark registration based on whether having acquired distinctiveness through use or not. In conclusion, I think that the above legal principles of determination on distinctiveness of a three-dimensional mark and acquired distinctiveness through use in the subject decision is proper in several aspects and it will be reasonable that the above legal principles are considered in determining distinctiveness of a three-dimensional mark in courts of Korea from now on.