earticle

영어

In case, the trademark having no distinctiveness at the time of decision whether to register and finally acquired a degree of distinctiveness(secondary meaning) required by Article 6, paragraph 2, after registration by using in the course of litigation, how such a registered trademark should be treated legally?The position of the Supreme Court is uncertain. Mainstream of Cases are in the position that such a registered trademark should be invalidated by trial. However, this position needs to be reviewed in a new perspectives, and by the Supreme Court case law in the opposite position. This paper is to review and claim the possibility of a correction of defects of the trademark registration even though it has a reason of invalidation at the time of decision to resister. First, invalidating the registered trademark and refiling it again cause too much discomfort to the trademark owner and is against in a economic perspective. As well as there is no merits to claim invalidation trial in fact because it still can be protected by the Unfair Competition Prevention Law. Furthermore, it meets the counter-interpretation of Article 5 paragraph 1 of Article 71 of the Trademark Act, providing that the loss of distinctiveness after registrations is to be the reason of invalidation. First of all, considering the nature of the animated feature of distinctiveness, sticking to the strict registration framework is contrary to the reality of commerce and mislead consumers into confusion that can lead to serious distortions and unfair competition causing result contrary to the purpose of the trademark law. This argument also can be supported by changing the perspective regarding the time of judgment to find and by adopting the concept of time acquiring secondary meaning. The time of judgment whether a trademark acquired secondary meaning needs not to be kept by the time of its registration, but could be by the time of trial decision or by the time of final judgement of a court according to the step of litigations. What's more important is the fact that the applicant must establish the time of acquiring secondary meaning of the mark concerned.