등록무효사유를 가지는 상표의 사용에 의한 식별력 취득 -대법원 2011후3698 전원합의체 판결 평석-

In the above-referenced case, the Korean Supreme Court ruled en banc that the determination as to whether or not a mark has gained distinctiveness should be made as of the time when the mark is examined in a trial for confirmation of its scope (a “Scope Confirmation Trial”), as opposed to as of the time of the mark’s examination for registration. In reaching its decision, the Court took into consideration that the existence and the strength of the distinctiveness of a mark—which is a factor in determining the similarity in marks—are relative to other marks. Accordingly, despite that the subject mark had causes for invalidation, the Court validated the trademark by assessing the mark’s distinctiveness as of the time of the Scope Confirmation Trial. The distinctiveness of a mark is only one of many factors considered in determining the similarity in marks; and, as such, there is no legal basis to validate a mark that is otherwise clearly subject to invalidation on grounds of the mark’s distinctiveness gained over time. However, by validating a trademark as of the time of a Scope Confirmation Trial despite that such mark was clearly subject to invalidation, the Court appears to have gone beyond the long-held principle in the Korean trademark system which recognizes the first-to-file rule and confines the scope of the trademark protection to what is described in the trademark application. The Court’s decision, therefore, deserves an in-depth discussion.