[2] Criteria for determining whether a trademark constitutes "a trademark consisting solely of a mark indicating the quality, efficacy, use, etc. of goods in a common way" under Article 6 (1) 3 of the Trademark Act, and the meaning of "a trademark likely to mislead the quality of goods" under Article 7 (1) 11 of the Trademark Act and its criteria for determining the "a trademark likely to mislead the quality of goods"

[3] In a case where Gap corporation, which is a trademark holder of the registered trademark or service mark " "", "", and "" filed a claim against Eul corporation for injunction against infringement of trademark rights and other damages, the case holding that since it is obvious that the above trademark or service mark constitutes a technical mark under Article 6 (1) 3 of the Trademark Act or a quality misleading mark under the former part of Article 7 (1) 11 of the Trademark Act and its registration becomes null and void, the prohibition of infringement of Gap corporation based on the above trademark right, etc., the claim for injunction against destruction of infringed products, and the claim for damages are not allowed since

[2] Whether a trademark constitutes "a trademark consisting solely of a mark indicating the quality, efficacy, use, etc. of goods in a common way" under Article 6 (1) 3 of the Trademark Act shall be objectively determined by taking into account the concept possessed by the trademark, the relationship with the designated goods, the circumstances of the transaction society, etc. In addition, "a trademark likely to mislead consumers as to the quality of goods" under the former part of Article 7 (1) 11 of the Trademark Act means a trademark whose composition itself means a trademark that has the nature different from that of the designated goods, and is likely to mislead consumers as to that of the designated goods, and whether there is concern about causing them to mislead consumers as to the quality of goods shall be determined by the transaction norms on the basis of ordinary consumers. Such legal principles apply likewise to service marks under Article 2 (3) of the Trademark Act.

[3] In a case where Gap corporation which is a trademark holder of the registered trademark or service mark " " "", "", and "" sought injunction against infringement of trademark rights and damages against Eul corporation, the case holding that since the above trademark or service mark is directly sensed to general consumers or traders "high-class timber, good wood," etc. among the designated goods or service business, if used in the sales agency or sales intermediary business of such goods, it constitutes a technical mark under Article 6 (1) 3 of the Trademark Act consisting solely of a mark indicating the quality, efficacy, and use of the designated goods or designated service business in a common way, and it constitutes a technical mark under Article 6 (1) 3 of the Trademark Act consisting of a mark indicating the quality, effect, and use of the designated goods or designated service business in a common way, or if used in the sales agency or sales intermediary business of such goods, it is obvious that the designated goods are "timber," or that the designated service business is a quality mark under Article 7 (1) 11 of the Trademark Act that is likely to mislead consumers as a sales agent business of such goods and its sales intermediary business.

1. The Trademark Act provides that the registration of a trademark may be invalidated through the procedure for invalidation of trademark registration separately prepared in a case where the registered trademark falls under a certain reason. As long as registered, even if there are grounds for invalidation of registration, the trademark does not become a hostile invalidation unless a trial decision that the trademark be invalidated by such a trial becomes final and conclusive.

However, although a trademark registration has been made due to an error in its failure to satisfy all the provisions of the Trademark Act concerning trademark registration, or after the trademark registration has been registered, the trademark registration is only formally maintained, and it is also in violation of the purpose of the Trademark Act, which aims to maintain the public interest related to the use of the trademark, thereby contributing to industrial development and protect the interests of consumers, as well as to contribute to the maintenance of the business reputation of the trademark users by protecting the trademark. In addition, trademark rights shall be exercised in compliance with the concept of justice and fairness in compliance with the actual value of the trademark, as long as it is one of the private property rights, and thus, it is evident that the trademark registration will be invalidated and even if there is no legally protected value to be legally protected, allowing a person who uses the trademark to file a claim for prohibition of infringement or compensation for damages against the person who uses the trademark, while giving undue benefits to the trademark and causing unreasonable damages or losses to the person who uses the trademark, thereby violating equity between the parties.

In light of these points, even if a trial decision on invalidation of a registered trademark becomes final and conclusive, if it is evident that the trademark registration will be invalidated by a trial for invalidation, a claim for prohibition of infringement or compensation for damages based on the trademark right shall not be allowed as it constitutes an abuse of rights unless there are special circumstances. In a case where there is a defense that the trademark right holder's claim constitutes an abuse of rights, the court in charge of a lawsuit for infringement of the trademark right may deliberate and decide on the nullity of the trademark registration under the premise to consider the legitimacy thereof. This legal principle applies likewise to service mark rights.

Supreme Court Decision 90Ma851 Decided April 30, 1991; Supreme Court Decision 94Do3052 Decided May 9, 1995; and Supreme Court Decision 95Do702 Decided July 28, 1995, which held that the court cannot deny the scope of rights of the registered trademark in a trademark infringement lawsuit, etc. before a trial decision invalidating trademark registration becomes final and conclusive, shall be modified to the extent that it is inconsistent with this Opinion.

2. In accordance with the above legal principles, since it is apparent that the registration of the Plaintiff’s trademark and the Plaintiff’s service mark will be invalidated at the time of the original adjudication, the Plaintiff’s prohibition of infringement of this case, disposal of infringing products, and claim for damages based on each trademark right and service mark right shall be examined in light of relevant legal principles and records

Whether a trademark constitutes "a trademark consisting solely of a mark indicating the quality, efficacy, use, etc. of goods in a common way" under Article 6 (1) 3 of the Trademark Act shall be objectively determined by taking into account the concept of the trademark, the relationship with the designated goods, the circumstances of the trade society, etc. (see, e.g., Supreme Court Decisions 2007Hu1824, Sept. 20, 2007; 201Hu333, Apr. 28, 201). Further, "a trademark likely to mislead consumers as to the quality of goods" under the former part of Article 7 (1) 11 of the Trademark Act means a trademark that has a nature different from the nature of the designated goods itself, and is likely to mislead consumers as to the quality of goods, and whether a trademark is likely to mislead consumers shall be determined based on the trade norms (see, e.g., Supreme Court Decisions 200Hu1824, Oct. 20, 2007; 205Hu3657, Jul. 26, 207

According to the reasoning of the judgment below, Plaintiff 1’s trademark (registration No. 1 omitted) and Plaintiff’s service mark (registration No. 2 omitted) are as indicated in “ ,” and Plaintiff 3’s trademark (registration No. 3 omitted) are as indicated in “ ,” and Plaintiff 4’s trademark at the time of original adjudication as indicated in “ ,” and Plaintiff 4’s trademark are as indicated in “ ,” respectively, and Plaintiff 1’s trademark is as follows: “non-metallic metal marking, non-metallic metal surface finishing materials for construction, non-metallic materials for construction, non-metallic metal double learning, non-metallic metal materials for construction, non-metallic materials for construction, non-metallic materials for construction, non-metallic metal take hand, non-metallic metal mold for construction, non-metallic metal windows for construction use, non-metallic metal plates for construction use, building mold sales brokerage, building mold sales, building mold sales, building mold sales, building mold sales, building mold sales, sales brokerage, building mold sales, building mold sales, building mold sales, construction work agent business.”

However, “HI” or “HI” among “HI WOD” or “Hawd” constituting the Plaintiff’s trademark or service mark is an English language or its Korean commercialization with the meaning of “high level, upper level, etc.” and “WOD” or “WOD” means the English language or its Korean commercialization with the meaning of “ tree, wood, etc.” Meanwhile, the diagrams attached to the Plaintiff’s trademark 1 and 3 trademarks and the Plaintiff’s service mark are merely the incidental or auxiliary parts of said trademark or service mark, and thus, they cannot be deemed to have any new distinctive character to offset and absorb the meaning of said text parts. Accordingly, it is evident that the Plaintiff’s trademark or service mark constitutes an abuse of rights, such as “high level, high level, wood, etc.” among the designated goods or service business, and thus, if the Plaintiff’s trademark or the Plaintiff’s service mark constitutes an abuse of rights as to the goods or service mark that would be used as a sale agent or intermediary of said goods, the Plaintiff’s trademark or service mark constitutes an abuse of rights under the Plaintiff’s trademark law 1’s or service business.

The judgment of the court below to the same purport is just, and there is no error in the misapprehension of legal principles as to technical marks and quality misleading marks, as otherwise alleged in the grounds of appeal, by the court in charge of the lawsuit for infringement of trademark rights or service mark rights, as to the invalidity of trademark rights or service mark registration.

3. Therefore, the appeal is dismissed, and the costs of appeal are assessed against the losing party. It is so decided as per Disposition by the assent of all participating Justices on the bench.

Justices Yang Chang-soo (Presiding Justice)