The Korean Supreme Court has ruled that an old common noun, previously used as the name of a beverage, can be registered as a trademark.

Case Background

The Supreme Court upheld the Patent Court’s decision in favor of the registrant who sought to use the mark “Yangtangguk” for their restaurants and tea shops. “Yangtangguk” is an old Korean term for coffee that originated towards the end of the Joseon Dynasty (1392-1910). The plaintiff argued that the mark was indistinctive under the Trademark Act.

However, the Supreme Court dismissed this argument, stating that the historical usage of the term does not imply that contemporary consumers would associate it with the nature of the goods at the time of registration. Furthermore, it was deemed not unfair for one entity to monopolize the trademark since its use does not contradict public interest.

Summary of the Decision

The Supreme Court emphasized that the registrability of a mark should be determined objectively based on general consumer perception. This evaluation should consider the concept of the trademark, its relationship with the designated goods, and the actual market conditions.

The Court also noted that even if a trademark appears to imply or emphasize the quality, raw materials, efficacy, or use of the designated goods, it does not necessarily mean that general consumers will recognize it solely for those attributes. Thus, such marks can be registered.

Moreover, the Court acknowledged that the distinctiveness of a trademark is relative and varies depending on several factors, including the concept of the trademark, its relationship with the goods, market nature, transaction status, transaction method, the goods’ nature, and the degree of trademark use.

Significance

The Trademark Act prohibits the registration of marks that indicate production area, quality, raw materials, efficacy, use, quantity, shape, price, production method, processing method, usage method, or timing of goods. For example, the Supreme Court previously denied registration for the marks “Caffe Latte” for coffee, “Copyer” for copy machines, and “Foundation” for cosmetics.

In this case, the plaintiff filed an invalidation action against the “Yangtangguk” mark, arguing that since it referred to ‘coffee’ in the late 19th and early 20th centuries in Korea, it could not be distinctive for restaurants and tea shops. However, the Patent Court recognized its distinctiveness, noting that in 2015, when the “Yangtangguk” mark was registered, general consumers were unaware that “Yangtangguk” was an old term for ‘coffee’. The Supreme Court upheld this decision.

Although many modern consumers do not recognize the historical meaning of “Yangtangguk,” it remains used in historical texts and other materials. This case thus raises ongoing debates about whether commonly used nouns from the past can be monopolized as trademarks in the present day.