Legislative intent of Article 7(1)12 of the Trademark Act and standard for determining whether there exists an unlawful purpose under the aforementioned provision
 The case holding that the judgment below erred by misapprehending legal principles, in case where Gap company Gap, the holder of right to prior use mark " ", filed a petition for a registration invalidation trial against Eul on the ground that the registered trademark/service mark " " constitutes Article 7 (1) 12 of the Trademark Act, etc., but the Korean Intellectual Property Tribunal dismissed Eul's dismissal thereof, the case holding that Eul's application for a registered trademark/service mark for unlawful purposes, such as aiding Eul's prior use mark and taking advantage of a high-quality image accumulated in the prior use mark or customer attraction resources of the prior use mark, or causing damage to Gap company, the user of the prior use mark "," was filed for a trademark/service mark for unjust purposes
 Article 7 (1) 12 of the Trademark Act /  Article 7 (1) 12 of the Trademark Act
 Supreme Court Decision 2010Hu2322 Decided July 14, 2011
Macco World (Attorneys Yellow Young-ju et al., Counsel for the plaintiff-appellant)
Patent Court Decision 2012Heo850 decided July 12, 2013
The part of the lower judgment against the Plaintiff is reversed, and that part of the case is remanded to the Patent Court.
The grounds of appeal are examined.
1. After compiling the adopted evidence, the court below acknowledged the facts as stated in its holding, and determined that the prior-use mark " "" used by the plaintiff was recognized as indicating a certain person's goods with respect to "human form" among foreign consumers, such as Korea, the United States, China, and Germany at the time of November 19, 2009, which is the filing date of "the registered trademark/service mark of this case (registration number omitted), but these marks are similar. However, in the designated service business of the registered trademark/service of this case, the court below determined to the purport that the defendant did not constitute an application under Article 17 (1) of the Trademark Act, since it did not constitute an unlawful purpose in the case of "communication course business, mass bath business, massage bath business, hair service business, hair service business, massage service business, sanitary facility leasing business, artificial standard business, bathing service business, steam bath business, steam bath business, steam pressure business, herbal business, herbal business, etc. (hereinafter "the designated service business of this case").
2. However, it is difficult to accept such a determination by the lower court for the following reasons.
A. For purposes of falling under Article 7(1)12 of the Trademark Act, an applicant for a trademark must use the trademark identical or similar to a trademark recognized as indicating the goods of a specific person by domestic or foreign consumers for unlawful purposes. The purport of the above provision is to prevent damage to the right holder of the trademark in the Republic of Korea by means of registration of the trademark which is recognized as indicating the goods of a specific person in the Republic of Korea by a third party, which is recognized as indicating the goods of a specific person, by registering the trademark and using it in the Republic of Korea, or by obstructing the business in the Republic of Korea of the right holder of the trademark, which is recognized as indicating the goods of a specific person, or not allowing registration of the trademark used for the purpose of obtaining unfair profits by using such imitate trademark. On the other hand, whether there is an unlawful purpose should be determined based on comprehensive consideration of the degree of recognition or creativity of the trademark of a specific person, degree of the same or similar nature of the trademark of the applicant for a specific person, the relationship between the applicant and the specific person, whether the applicant specifically prepares for business using the registered trademark, whether goods are identical or similar, or economic relationship with the goods, and circumstances of the registered trademark.
나. 원심이 적법하게 인정한 사실과 기록에 의하면, 소외 1과 소외 2 부부가 딸 소외 3의 이름을 따서 창작한 선사용표장은 1959년경부터 ‘인형’ 등의 상품에 사용되어 오기 시작하여 이 사건 등록상표서비스표의 출원 당시 국내와 미국, 중국, 독일 등 외국의 수요자들 사이에 주지·저명한 상표가 된 점, 이 사건 등록상표서비스표는 선사용표장의 한글 음역 ‘바비’에 여왕을 뜻하는 영어 단어 ‘queen’의 한글 음역 ‘퀸’을 덧붙인 것에 불과하여 서로 유사한 점, 선사용표장이 사용된 ‘바비 인형’은 최신 유행하는 의상과 헤어스타일, 메이크업 등으로 시대에 따라 변화하는 여성의 모습을 대변하는 패션인형의 특성을 가진 것으로서, ‘바비 인형’의 이러한 특성을 토대로 하여 국내외에서 ‘화장품, 화장도구, 미용용품’ 등에까지 선사용표장의 사업 영역이 확대되어 가고 있는 점, 이러한 상품들과 동일·유사하거나 경제적 견련관계가 있는 상품들과 서비스업들이 이 사건 등록상표서비스표의 지정상품들과 지정서비스업들에 다수 포함되어 있는 점, 피고가 이 사건 등록상표서비스표를 이용한 사업을 구체적으로 준비한 바는 없는 점 등을 알 수 있다.
Examining these points in light of the legal principles as seen earlier, the Defendant applied for the instant registered trademark service mark including the instant designated service business as part of the designated service business in order to use the instant designated service business for unlawful purposes, such as intending to obtain unfair profits by copying the prior use mark and taking advantage of a high-quality image or human resources for customer smoking with the prior use mark accumulated in the prior use mark, or to inflict damage on the Plaintiff, who is the user of the prior use mark.
Nevertheless, the court below held that the part concerning the designated service business of this case among the registered trademark service marks of this case is not recognized as having been filed by the defendant for the purpose of using it for an unlawful purpose, and thus does not fall under Article 7 (1) 12 of the Trademark Act. The court below erred by misapprehending the legal principles as to the "unfair purpose" of the above provision, which affected the conclusion of the judgment. The ground of appeal
3. Therefore, without examining the remaining grounds of appeal, the part against the plaintiff among the judgment below is reversed, and that part of the case is remanded to the court below for a new trial and determination. It is so decided as per Disposition by the assent of all participating Justices on the bench.
Justices Lee In-bok (Presiding Justice)
-  상표법 제7조 제1항 제12호 (위헌조문)
-  상표법 제7조 제1항 제12호 (위헌조문)