In this case, the appellant is an internationally famous manufacturer and distributor of footwear and clothing. Since the appellant’s establishment in 1966, they have been using the trademark at issue as identification to every product they manufactured. Besides, early in 1987, the appellant has obtained registrations of the trademark at issue in the U.S., Canada, EU, Singapore, Hong Kong, Korea and Philippines, etc. According to the evidence submitted by the appellant, the trademark at issue has been recognized as a well-known trademark by relevant consumers of footwear and clothing goods. This fact was affirmed by the original judgment made by IP Court.
Article 23-1(11) of the Trademark Act prescribes that a trademark may not be registered if it is likely to mislead the public with respect to the nature, quality, or place of origin of the designated goods or services. Whether a trademark is likely to mislead the public with respect to the nature, quality, or place of origin of the designated goods or services should be judged based on the observation of the entire trademark including the appearance, concept or pronunciation, the impression given to the consumers, the association between the trademark and designated goods or services, the market share of the applicant’s goods or services in the market and the perception of relevant local consumers on the designated goods or services.
The legislative purpose of Article 23-1(11) is to prevent consumers from buying products because of being misled by a trademark with respect to the nature, quality or place of origin of the products. This is different from the legislative purpose of Article 23-1(13) and (12), which is to prevent a trademark from being confused with another.
As being a well-known trademark, even if the trademark at issue consists of a word “SWISS” with respect to the place of origin of the designated goods, now that consumers have recognized the trademark at issue as a sign identifying the source of the goods or services, the possibility to cause confusion about the place of origin of the goods to consumers merely by a word “SWISS” would be low.
Moreover, the trademark at issue consists of not only the word “SWISS”, but also a letter “K” and a device of shield with oblique lines. What the consumers recognize is the entire trademark but not merely the word “SWISS”. Consequently, it is unlikely to cause the public to misidentify or form a mistaken belief about that their goods are from Switzerland.
