earticle

영어

Descriptive trademarks cannot be registerable in general. However, according to Korea Trademark Law (KTL) article 6.2, they can be registered when they have acquired distinctiveness by use. On the other hand, the KTL article 51.1 stipulates that the scope of descriptive trademarks does not include descriptive marks. In 1987 the Korea Supreme Court (KSC) in 86 hu 4 decided that the scope of registered descriptive trademarks do not include descriptive marks and thus, the allegedly infringing mark does not constitute infringement. However, the KSC in 88 hu 974, 981, 998 in 1992 and many other cases decided that once descriptive trademarks have been registered by being recognized as having distinctiveness, they obtain exclusive rights and the scope of them includes marks stipulated at KTL article 51.1. The problem in these decisions is that they do not explain the reason why the scope of a registered descriptive trademark right includes marks stipulated at KTL article 51.1. These contradictive KTL articles (article 6.2 and article 51.1) and the KSC decisions make it uncertain whether the scope of a descriptive trademark right includes marks stipulated at KTL article 51.1. Even if whether the scope of the right of a registered descriptive trademark includes marks designated at KTL article 51.1 is a critical factor in solving cases related to descriptive trademarks, it is not clear yet. This article examines the relationship between the scope of a descriptive trademark right and KTL article 51.1 from the economic perspective. It enlightens the relationship between a right-holder of a registered descriptive trademark, competitors and consumers. Especially, because the right-holder has decided to submit to the risk of consumer confusion in order to enjoy the advantages in using a descriptive trademark that is not distinctive inherently, it is fair to regard competitors’ use of the descriptive trademark as a fair use even if it may cause consumer confusion. In conclusion, because competitors’ use of a descriptive trademark as its first meaning has more advantages than disadvantages.