Supreme Court Rules "Old Coffee Name 'Yangtangguk' Can Be Trademarked"

The Supreme Court has ruled that the old name for coffee, 'Yangtang-guk,' can be registered and used as a trademark.

It is not necessarily the case that a trademark composed of a name of a product that was once used in the past cannot be used as a trademark. The party claiming the invalidity of the trademark must prove that the general public generally recognizes the trademark as referring to the product at the time of the trademark registration application or that it is unfair to monopolize the trademark for public interest. The court found it difficult to see that ordinary citizens recognize 'Yangtang-guk' as an old name referring to coffee.

Supreme Court, Seocho-dong, Seoul.

According to the legal community on the 6th, the Supreme Court's First Division (Presiding Justice No Tae-ak) upheld the lower court's ruling in favor of the plaintiff in the appeal case where Mr. Hong filed a lawsuit against Company A to cancel the decision of the Patent Trial and Appeal Board.

The court stated the reason for dismissing the appeal, saying, "There is no error in the lower court's judgment regarding the legal principles on the requirements for trademark registration under the Trademark Act, nor was there a failure to conduct necessary hearings, nor did it violate the limits of free evaluation of evidence contrary to logic and experience, which would affect the judgment."

Mr. Hong registered the trademark 'Yangtang-guk' in June 2015, intending to operate cafes under that name. Yangtang-guk was an old name referring to coffee in the 1910s, along with terms like 'Gabi-cha' or 'Gabae-cha.'

In May 2022, Company A filed a petition with the Patent Trial and Appeal Board to invalidate the registration of the Yangtang-guk trademark, arguing that since Yangtang-guk directly expresses coffee itself, it is not appropriate for a specific person to monopolize its use for public interest reasons.

The Trademark Act stipulates that trademarks generally indicating the origin, quality, raw materials, or efficacy of a product cannot be used. This means that common nouns like 'cold medicine' or 'coffee' cannot be used as exclusive trademarks.

The issue in this case was whether the general consumers perceive the term Yangtang-guk as a common noun directly expressing coffee itself.

The Patent Trial and Appeal Board accepted Company A's petition and invalidated Mr. Hong's trademark registration.

Mr. Hong appealed to the Patent Court, which ruled in his favor.

The court stated, "It is difficult to see that the term 'Yangtang-guk' constituting the registered trademark was recognized among general consumers or traders as an old name referring to coffee at the time of the registration decision. Even if such recognition were acknowledged, there is no circumstance to consider that the perception of the term 'Yangtang-guk' among general consumers or traders at the time of the registration decision reached a level that would intuitively indicate the nature of the coffee product. Therefore, the registered trademark cannot be considered a technical indication or a mark lacking exclusivity."

Furthermore, the court concluded, "Therefore, the registered trademark cannot be said to have any grounds for invalidity under the Trademark Act in any respect. The decision to invalidate the trademark registration is ultimately unlawful and must be canceled."

Company A appealed, but the Supreme Court's judgment was the same.

First, the court stated, "The point in time for judging whether a trademark meets the distinctiveness requirement under the Trademark Act is, in principle, the time when the registration decision is made. Therefore, the mere fact that a trademark consists of a product name that was once used in the past does not immediately mean that general consumers recognize the trademark as indicating the nature of the product at the time of the registration decision or that it is unfair to monopolize the trademark for public interest. The party requesting invalidation of the trademark registration bears the burden of asserting and proving specific facts corresponding to the grounds for invalidity under the Trademark Act."

The court continued, "The lower court judged that based on the submitted evidence, it is difficult to prove that the term 'Yangtang-guk' constituting the registered trademark was recognized by general consumers as an old name for coffee or that it was perceived to directly indicate the nature of the designated service related to coffee as of June 9, 2015, the date of the registration decision. Without such proof, it cannot be considered unfair to monopolize the mark for public interest. There is no error in this judgment."

A Supreme Court official stated, "This is the first ruling clarifying that the mere fact that a trademark consists of a product name once used does not immediately constitute grounds for invalidating the trademark registration."

This content was produced with the assistance of AI translation services.