[2] Whether the use of a trademark consisting solely of the English letters or the Korean sound text portion among the registered trademarks that combine the English letters with the English characters simply translitating them constitutes the use of a trademark that can be seen as identical to the registered trademark in light of trade norms (affirmative with qualification)

[2] In a registered trademark consisting of English and its simply translitent Korean characters, the combination does not create a new concept due to the combination, in addition to the concept perceived from the meaning of the English language itself, and even if the English language part and its translitent part are used without omission, the use of a trademark consisting solely of the English language part or Korean sound part among the registered trademark constitutes a use of a trademark that can be seen as identical to the registered trademark in light of trade norms, and it cannot be deemed that the registered trademark, which is the ground for revocation, has not been used.

1. Article 73(1)3 and (4) of the Trademark Act provides that trademark registration may be revoked by imposing an obligation to use a registered trademark to designated goods on a trademark holder or a user and imposing sanctions on the trademark holder or user if the trademark is not used for a certain period of time (see Supreme Court en banc Decision 201Hu354, Jun. 30, 201). In light of the purport of the system of cancellation of trademark registration due to non-use, the term “use of a registered trademark” refers to the use of a trademark identical to the registered trademark, but does not include the use of a similar trademark, and “the same trademark” includes not only the registered trademark itself, but also a trademark of any type that can be seen as identical to the registered trademark in light of trade norms (see, e.g., Supreme Court en banc Decision 93Hu1834, Apr. 25, 1995; Supreme Court Decision 201Hu5656, May 6, 2014).

However, since it is a transactional reality that the registered trademark is somewhat modified due to the characteristics of goods, the market in which goods are sold, and the changing times, it is often possible to register a trademark combining English and its Korean translitor, and then use the trademark without omitting any part of its Korean translitor.

In addition, considering the current level of English distribution in Korea, there may be cases where a new concept is not created due to the combination of the Korean language text, in addition to the concept that is perceived from the meaning of the English language itself as well as the concept that expresses the name or origin of the English name in the above registered trademark.

In such a case, even if an owner of a trademark right or a user uses an English or a trademark of which part of the Korean sound is omitted in the above registered trademark, general consumers or traders are recognized as using the same trademark as the above registered trademark and thus their trust is formed. Therefore, if the identity between the trademarks is denied, it would result in impairing the trust of general consumers or traders.

Furthermore, with the amendment of the Trademark Act by Act No. 535 of Aug. 22, 1997, it is necessary to protect general consumers’ trust in relation to the freedom of use of a trademark or the recognition of identity of the trademark by interpreting the scope recognized as the use of the registered trademark somewhat flexibly and flexibly, in consideration of the fact that there is no special exception that only one trademark is used on a package of registered trademarks but could be exempted from the revocation of registration due to non-use of all the registered trademarks.

In light of the aforementioned legal principles and the circumstances as seen earlier, in a registered trademark consisting of English and its simply translitent Korean characters, there is no new concept due to the combination, in addition to the concept perceived from the meaning of the English language language itself, and even if a part among the English and its translitent part is used without omission, the use of a trademark consisting solely of the English and its translitent part among the registered trademarks constitutes the use of a trademark that can be seen as identical to the registered trademark in light of trade norms, and cannot be deemed as having not used the registered trademark, which is the grounds for revocation.

Unlike this, Supreme Court Decisions 92Hu698 delivered on December 22, 1992; 92Hu711 delivered on December 22, 1992; 2001Hu2542 delivered on September 27, 2002; 2003Hu1437 delivered on August 20, 204; 2003Hu1673 delivered on August 20, 2004; and 300Hu1673 delivered on August 20, 204, which held to the effect that, in a case where the trademark is used without omitting any of the English or its Korean sound descriptions, the trademark is not used in a form that can be seen as identical to the registered trademark under the transaction norms, shall be modified to the extent that they are inconsistent with this Opinion.

A person shall be appointed.

2. We examine the above legal principles and records.

As above, the instant registered trademark (registration number omitted) with the designated goods as rubberbl, consists of the “CONINENAL” and the “connex” with the word “connex” with the word “connex” with the two parts, as seen above, on the right side. The trademark that the Plaintiff uses in rubberbl” (hereinafter “actually used trademark”) is in the form indicated only on the upper part of the instant registered trademark, as follows.

However, considering the current English propagation level in Korea, the parts of the upper part of the instant registered trademark and the bottom part of the Korean language negative part are both conceptsed as “displacement” to ordinary consumers or traders, and do not create a new concept due to the combination. In addition, “CONININENAL” in the part of the instant registered trademark is deemed to be the same as “con placen linen linen” without the combination of “con placen linen linenn linenn linenn linenn linenn linenn linenn linenn linen” in the part of the instant registered trademark. Thus, the actual use trademark solely composed of the upper part of the instant registered trademark causes the same name and concept as the instant registered trademark itself to ordinary consumers or traders. Accordingly, it is reasonable to deem that the actual use of the trademark constitutes a trademark use that can be seen as the same as the instant registered trademark in light of trade norms.

Nevertheless, the lower court determined that the use of the trademark in actual use only on the upper part of the registered trademark of this case constitutes the use of a trademark similar to the registered trademark of this case, separate from the use of the trademark of this case, and cannot be deemed as the use of a trademark in the form that can be seen as identical to the registered trademark of this case under the transaction norms. In so doing, the lower court erred by misapprehending the legal doctrine on determining the identity of the trademark in a trial on cancellation of trademark registration due to non-use, thereby failing to exhaust all necessary deliberations

3. Therefore, the lower judgment is reversed, and the case is remanded to the lower court for further proceedings consistent with this Opinion. It is so decided as per Disposition by the assent of all participating Justices on the bench.

Justices Yang Chang-tae (Presiding Justice)