[권리범위확인(상)] 상고[각공2016하,588]
지정서비스업을 스낵바업, 바(bar)서비스업 등으로 하는 등록서비스표 “ ”의 권리자 갑이 을 주식회사를 상대로 확인대상표장 “ ”가 등록서비스표의 권리범위에 속한다고 주장하면서 적극적 권리범위확인심판을 청구하였는데, 특허심판원이 심판청구를 인용하는 심결을 한 사안에서, 양 서비스표가 서로 유사하지 아니하여 확인대상표장이 등록서비스표의 권리범위에 속하지 않는다고 한 사례
지정서비스업을 스낵바업, 바(bar)서비스업 등으로 하는 등록서비스표 “ ”의 권리자 갑이 을 주식회사를 상대로 확인대상표장 “ ”가 등록서비스표의 권리범위에 속한다고 주장하면서 적극적 권리범위확인심판을 청구하였는데, 특허심판원이 심판청구를 인용하는 심결을 한 사안에서, 등록서비스표와 확인대상표장은 글자 수와 글씨체 및 글자 구성이 달라 전체적인 외관이 다르고, 등록서비스표는 ‘봉구네’로 호칭되어 ‘봉구비어’로 호칭되는 확인대상표장과 호칭이 다르며, 등록서비스표는 ‘봉구라는 이름을 가진 사람의 집 또는 거주지’의 의미로 인식되는 데 반해 확인대상표장은 ‘봉구의 맥주집’ 또는 ‘봉구라는 이름의 맥주집’이라는 의미로 인식되어 관념 또한 서로 다르므로, 등록서비스표와 확인대상표장은 외관, 호칭, 관념이 서로 달라 동일 또는 유사한 서비스업에 사용되더라도 일반 수요자들로 하여금 서비스업의 출처에 관하여 오인·혼동을 일으키게 할 염려가 없으니, 양 서비스표는 서로 유사하지 아니하여 확인대상표장이 등록서비스표의 권리범위에 속하지 않는다고 한 사례.
Articles 2(3) and 7(1)7 of the Trademark Act
[Defendant-Appellant] Plaintiff 1 and 2 others (Law Firm Rois et al., Counsel for defendant-appellant)
Defendant (Patent Firm Daehan et al., Counsel for the defendant-appellant)
July 7, 2016
1. The decision made by the Intellectual Property Tribunal on May 1, 2015 on the case No. 2014Dang2892 shall be revoked.
2. The costs of the lawsuit are assessed against the defendant.
The same shall apply to the order.
1. Basic facts
A. Registered service mark of this case
1) Date of application/registration date/registration number: October 22, 2012 / (registration number omitted) / September 24, 2013
2) Composition:
3) 지정서비스업: 서비스업 구분 제43류 간이식당업, 간이음식점업, 관광음식점업, 레스토랑업, 바(bar)서비스업, 뷔페식당업, 서양음식점업, 셀프서비스식당업, 스낵바업, 식당체인업, 식품소개업, 음식조리대행업, 음식준비조달업, 일반음식점업, 카페업, 카페테리아업, 패스트푸트식당업, 한식점업, 한식점경영업, 관광숙박업
(b) a challenged mark;
1) Composition:
2) 사용서비스업: 스낵바업, 바(bar)서비스업, 생맥주전문점 운영업
C. The procedural background
1) On November 17, 2014, the Defendant filed a claim against the Plaintiff for the confirmation of the scope of a right against the Plaintiff, asserting that “The challenged mark and the registered service mark of this case are sharing the “furnal” as the essential part of the Patent Tribunal, and their external appearance, name, and concept are similar. Therefore, the challenged mark falls under the scope of the right of the registered service mark of this case.”
2) On May 1, 2015, the Korean Intellectual Property Tribunal rendered the instant trial ruling accepting the Defendant’s request on the grounds that “The challenged mark is identical to the registered service mark of this case, but its title and concept are different from the registered service mark of this case, and as the use service of the challenged mark and the designated service business of the instant registered trademark are identical or similar, the challenged mark falls under the scope of the right of the registered service mark of this case.”
[Ground of recognition] Unsatisfy, Gap evidence Nos. 1 and 2, the purport of the whole pleadings
2. Summary of parties' arguments and the issues of the instant case
A. Summary of the parties' assertion
1) Summary of the grounds for revoking the Plaintiff’s argument
The registered service mark of this case can be referred to as a whole as a three-dimensional mark, and since the trademark subject to confirmation is widely known domestically as a well-known trademark, it can be recognized as a “finite,” consumers. Therefore, there is no room for misconception and confusion as to its source differently from the registered service mark of this case. Accordingly, the trial decision of this case, which judged otherwise, is unlawful.
2) Summary of the defendant's assertion
The mark subject to confirmation is identical to the registered service mark of this case and the “song-gu” part, which is the essential part, and the designated service business is similar. Thus, it falls under the scope of the right of the registered service mark of this case.
B. Key issue of the instant case
Since there is no dispute between the parties as to the same between the designated service business of the registered service mark of this case and the service business of using the challenged mark, it is necessary to examine whether the challenged mark falls under the scope of the right of the registered service mark of this case based on the similarity of marks.
3. Whether the challenged mark falls under the scope of rights of the registered service mark of this case.
A. Legal principles necessary for judgment
The similarity of a trademark shall be determined based on whether there is a concern for ordinary consumers or traders to mislead or confuse the origin of the designated goods in the transaction of the designated goods by observing the external appearance, name, and concept objectively, comprehensively, and separately. Even if there is a similar part between the compared trademarks, if it is unlikely that the part alone can be separated or that the whole observation would cause confusion of the source clearly, it shall not be deemed a similar trademark (see, e.g., Supreme Court Decisions 2005Hu2908, Aug. 25, 2006; 2014Hu1587, Dec. 11, 2014). Such a legal doctrine equally applies to service marks pursuant to Article 2(3) of the Trademark Act.
B. Whether the mark is similar
1) Whether the registered service mark of this case is recognized as being separated from the “furnal” alone
The registered service mark " " "" is a character trademark consisting of the name of the person "Yeong-gu" and the name of "Ne-gu". Among the registered service mark of this case, "Ye-gu" is widely used in the name of a person (including evidence Nos. 13 through 16, evidence No. 25, and evidence No. 25; hereinafter the same shall apply) and "N" means the name "Mae-house where the person resides" or "a group to which the person belongs," which is used as "OOe-gu" after the name of the person. The registered service mark of this case consists of three short terms in Korean without being kept. There is no circumstance to deem that the registered service mark of this case can be abbreviationd into "Ye-gu" or that it is referred only to as "Ye-gu" among consumers of the designated service business. Therefore, the registered service mark of this case as a whole.
2) Whether the challenged mark is recognized as separate only from the “wing-gu”
In light of the following circumstances, it cannot be deemed that domestic consumers recognize the mark “” subject to confirmation as “furning” only as “furning tool” or separately, in light of the result of the recognition of the Nonparty’s source of service by the Nonparty and the Nonparty’s perception of the Nonparty’s source of service (hereinafter “the result of the instant appraisal”) and the overall purport of the pleading.
(1) The mark subject to confirmation is a trademark consisting of letters consisting of the name of a person who is “finite” and the name of a person who is “finite,” and a relatively short word is composed of letters with a unique Korean character in four terms without being written.
② Among the marks subject to confirmation, “non-mar” falls under products dealt with in the connection main store, which is used as the Korean transliter’s Korean transliter’s service business, and thus has no or very weak distinctiveness. In addition, as seen in the foregoing paragraph (a), the distinctiveness is weak in the name of a person widely used domestically.
③ In addition to the meaning of “Manish,” “Manish” is commonly used in the meaning of “Manish beer” or “Manish beer.” In addition, rather than being used in itself, the term “Manishishish,” “Manishish,” “Manishish beer,” “ Monish beer,” “Monish beerish,” “Monish beerish,” “Manish,” “Manish,” “Manish,” “Manish,” “Manish,” and “Manish,” etc. are used as a fishing gear indicating “Manish’s name,” with multiple names attached thereto (i.e., “Manish,” “Manish,” “Manish,” “Manish,” “Manish,” “Manish,” and “Manish,” and (ii) the purport of the entire pleadings). In the case of a mark subject to confirmation, the two words “Ynish” and “Bnishish” have a limited independent meaning
④ With respect to the service business identical or similar to the service business of the challenged mark at the time of the instant trial decision, the service marks, such as “(Evidence 12-3 of A),” “(Evidence 12-4 of A),” “(Evidence 12-5 of A),” “(Evidence 12-6 of A),” “(Evidence 12-7 of A),” and “(Evidence 12-7 of A),” were already registered by different holders of rights, and were used as the trade names, “B,” “B, B, C, C, C, C, F, and C, B, 10-3 of A, “Y,” and “Y,” “Y, K, K, K,K,” (Evidence 4-1 of evidence 4 of A).
⑤ The Plaintiff operated the so-called “scambling in small stores,” which can enjoy beer simply in small stores, using the trademark subject to confirmation as one’s own service mark. The Plaintiff used the trademark subject to confirmation around December 201, 201, prior to the application for the instant registered service mark, and used the mark subject to confirmation while opening and operating a store with approximately 700 member stores across the country from the end of April 2015 (Therefore, the Defendant’s assertion that “if the registered service mark of this case was properly applied for and registered, and as a result, the registered service mark identical or similar to the registered service mark was used in the service business identical or similar to that of the designated service, without justifiable grounds, to the extent that the registered service mark was widely known to the general public in the Republic of Korea is without merit).”
6) On May 19, 2015, the mark subject to confirmation was awarded “the subject of verification” (No. 8-2 and No. 26 of the evidence No. 8-2 of the evidence No. 8-2 of the same Act) organized by the business entity around Korea (No. 8-1 of the evidence No. 8-1 of the same Act), respectively. The Plaintiff continuously publicize the subject of verification as a business mark through television, radio, Internet portal, newspaper, monthly advertising, e-mail advertising, Evina’s e-mail (TVn), e-mail (TF) online advertising, a book, participation in a start-up exhibition, and the production and distribution of souvenirs. In addition, through the NAV and the following, multiple media search marks, videos, etc. are subject to verification, video-related articles, etc.
7) As of April 2016, the appraisal results of the instant case conducted on the adult male and female 50 years of age between 20 and 59 years of age in Seoul, Busan, Daegu, Gwangju, and Daejeon as of April 2016, which had not yet been long since the date of the instant trial decision, are as follows: 75.2% of the entire target persons, is aware of the challenged mark; 81.6% of the total target persons, is investigated to the effect that they are "finite" (1.4%) and "Yong-gu" (7.4%) and "Yonggueine" (7.4%) are 14.6% of the total target persons.
8. The Plaintiff uses the challenged mark and actually carries on business using the instant registered service mark, and there is no circumstance to deem that consumers in the designated (used) service business are mistaken for or confused as to whom the instant registered service mark or the challenged mark is a business mark.
3) Preparation for the instant registered service mark and the challenged mark
The registered service mark “” and the challenged mark “ “” are different from the number of characters, letters, and letters. The registered service mark of this case differs from the mark subject to confirmation, which is referred to as “finite” and referred to as “finite.” The registered service mark of this case can be recognized as the meaning of “finite or residence of a person with the name of finite.” On the other hand, the challenged mark is recognized as the meaning of “finite or residence of a person with the name of finite” and thus, its concept is different.
(c) Integration of preparedness results;
In full view of the results in the above preparation, the registered service mark of this case and the challenged mark are different from their appearance, name, and concept, and even if they are used in the same or similar service business, there is no concern for ordinary consumers to mislead or confuse the source of service business. Thus, both service marks are not similar. Accordingly, the challenged mark does not fall within the scope of the right of the registered service mark of this case.
4. Conclusion
Thus, the decision of this case is unlawful differently from this conclusion, and the plaintiff's claim seeking the revocation of the decision of this case is reasonable, and it is so decided as per Disposition by admitting it.
Judges Kim Jong-soo (Presiding Judge)
Note 1) See the first pleading protocol dated October 22, 2015.