착오등록 후 사용에 의해 식별력을 취득한 상표의 법률적 쟁점에 관한 검토 - 대법원 2014.3.20선고 2011후3698 판결을 중심으로 -

A trademark that was not inherently distinctive has become distinctive through the use that has been made of the trademark. A trademark is considered distinctive when it is recognized by a sufficiently large part of the relevant public as a trademark of one single trader. In regard to criteria point for determination of distinctiveness through use, article 6 (2) of the Trademark Act requires the mark to be recognized as distinguishing whose business is associated with certain goods among consumers as a result of its use before the application for registration. Since an inherently non-distinctive trademark exceptionally permitted to be registered and protected in view of the elements of the prior use principle as a complement of the registered system, requirements of acquired distinctiveness through use have to be applied rigidly. So from that point, the determination of whether the mark has acquired distinctiveness by use is based on the time of the application for registration. Courts, however, take a view that the determination of acquired distinctiveness must be based on the time of determining registrability rather than on the time of application. But it is appropriate to be construed that as meaning that acquired distinctiveness must have existed at the time of filing but must still be present at the time of decision on registerability. Either way, the examination carried out at the time of the application or registration must not be a minimal one. It must be a stringent and full examination in order to prevent trademarks from being improperly registered. Trademark Act does not preclude a mark from being declared invalid by the Invalidation Trial of a trademark registration if it is intrinsically devoid of distinctive character and the owner of that mark has failed to show that it has acquired a distinctive character following the use that has been made of it before the filing date or the time of decision to register. Nonetheless, the Supreme Court ruled as if the invalid defects have been eliminated in the case of decision 2011Hoo3698. According to this position of the Supreme Court, even if a trademark has the invalid reason of the lack of distinctiveness, determination of the similarity of trademarks in a Trial to Confirm the Scope of trademark rights should be determined based on the distinctiveness acquired by the use of the trademark registered by mistake. However, as long as Trademark Act has no explicit provisions to take into account distinctiveness acquired after registration, it is necessary to examine whether an inherently non-distinctive trademark had acquired distinctive character by its use at the time of filing or registration at least even before Trial to Confirm the Scope of trademark rights. In this context, distinctiveness alleged to have been acquired during the period between Registration and Trial decision is not relevant. Trademarks that acquired distinctiveness by its use having an invalid reason should not be subjected to higher protection than other inherently distinctive trademarks. Therefore, the Supreme Court decision needs to be reviewed and consequently it is up to legislative measures to solve this type of problem by prescribing clear provision in Trademark Act in the light of examples of EU Trade Marks Directive or British Trademark Act.