[등록무효(상)][공2017상,799]
[1] Legislative intent of Article 7 (1) 8 of the former Trademark Act and the starting date of the period prescribed by the above provision (i.e., the date when the previous trademark right holder, etc. becomes unable to use the previous trademark exclusively due to the extinguishment of the trademark right) / Where a trial decision on revocation of trademark registration becomes final and conclusive and a trial decision on revocation of trademark registration becomes final and conclusive later, the "date on which the trademark
[2] In a case where Gap filed a petition for a trial on invalidation of the registered trademark " " "" and " "" on January 29, 2009 and a trial decision on revocation of the registration became final and conclusive on August 1, 2009, and on August 1, 2009, the registered trademark " " was filed on June 1, 2009; however, Gap filed a petition for a trial on invalidation of the registered trademark against Eul corporation which is a trademark right holder of the registered trademark on the ground that the registered trademark falls under Article 7 (1) 8 of the former Trademark Act, the case holding that the registered trademark 2 and 3 at the time of filing for the application for the registered trademark constituted another person's registered trademark for which one year has not passed
[1] Article 7(1)8 of the former Trademark Act (wholly amended by Act No. 14033, Feb. 29, 2016; hereinafter the same) provides that “any trademark used on goods identical with or similar to the designated goods, which is identical or similar to another person’s registered trademark (excluding any registered geographical collective mark) for which one year has not passed since the date the trademark right is extinguished (where a trial decision invalidating the trademark registration has become final and conclusive, referring to the date the trial decision becomes final and conclusive)” shall not be eligible for trademark registration. This provision aims to prevent confusion between the former trademark owner or legitimate licensee (hereinafter referred to as “previous trademark owner, etc.”) of the trademark that remains among consumers by using the registered trademark as the origin mark of his/her own goods.
As such, considering the legislative intent of the previous trademark right holder, etc. to have a gap of one year after the cancellation of the trademark right, it is reasonable to deem that the initial date of the period prescribed by this provision is no longer the previous trademark right holder becomes no longer able to exclusively use the previous trademark due to the extinguishment of the trademark right.
Therefore, in a case where a trial decision on revocation of registration becomes final and conclusive and an additional trial decision on invalidation of registration becomes final and conclusive, so long as the previous trademark owner, etc. becomes no longer able to exclusively use the previous trademark from the date a trial decision on revocation of registration becomes final and conclusive, the term “the date on which the trademark right is extinguished” as the initial date of the period under Article 7(1)8 of
[2] In a case where “ ” and “ 3” of the pre-registered trademark were final and conclusive on January 29, 2009, and the trial decision to invalidate the registration became final and conclusive on August 1, 2009, and the registered trademark “ ” was applied on June 1, 2009 and registered on June 1, 2009, the court affirmed the judgment below that held that “ 2 and 3 of the pre-registered trademark at the time of the application to invalidate the registration as to the designated goods identical or similar to “ 3 of the pre-registered trademark” under Article 7(1) 8 of the former Trademark Act (wholly amended by Act No. 1403, Feb. 29, 2016) constituted “ 2 and 8 of the former Trademark Act (wholly amended by Act No. 14033, Feb. 29, 2016), and thus, the registered trademark constitutes the designated goods identical or similar to the designated goods of “ 2 and 3 of the pre-registered trademark.”
[1] Article 7(1)8 of the former Trademark Act (wholly amended by Act No. 14033, Feb. 29, 2016) / [2] Article 7(1)8 of the former Trademark Act (wholly amended by Act No. 14033, Feb. 29, 2016)
[1] Supreme Court Decision 2012Hu2470 Decided October 25, 2012 (Gong2012Ha, 1975)
The bankruptcy trustee of Do Cosmetics Co., Ltd. (Patent Attorney Shin Shin-chul et al., Counsel for the plaintiff-appellant)
Dok Cosmetics Co., Ltd.
Defendant (Patent Attorney Kim Young-young, Counsel for defendant-appellant)
Patent Court Decision 2013Heo10188 Decided June 13, 2014
The appeal is dismissed. The appeal is dismissed. The costs of appeal are assessed against the plaintiff, and the costs incurred by the request for continuation of the proceedings are assessed against the requester for the proceedings.
1. The grounds of appeal are examined.
(1) Article 7(1)8 of the former Trademark Act (wholly amended by Act No. 14033, Feb. 29, 2016; hereinafter the same) provides that “any trademark used on goods identical with or similar to the designated goods, which is identical with or similar to another person’s registered trademark (excluding any registered geographical collective mark) for which one year has not passed since the date on which the trademark right was extinguished (referring to the final and conclusive date of a trial decision, where a trial decision invalidating the trademark registration became final and conclusive)” shall not be eligible for trademark registration. This provision aims to prevent confusion between the former trademark owner or legitimate licensee (hereinafter “previous trademark owner, etc.”) in relation to the trademark that remains among consumers by using the registered trademark as its origin mark on his/her own goods (see Supreme Court Decision 2012Hu2470, Oct. 25, 2012).
As such, considering the legislative intent of the previous trademark right holder, etc. to have a gap of one year after the cancellation of the trademark right, it is reasonable to deem that the initial date of the period prescribed by this provision is no longer the previous trademark right holder becomes no longer able to exclusively use the previous trademark due to the extinguishment of the trademark right.
Therefore, in a case where a trial decision on revocation of registration becomes final and conclusive and an additional trial decision on invalidation of registration becomes final and conclusive, so long as the previous trademark owner, etc. becomes no longer able to exclusively use the previous trademark from the date a trial decision on revocation of registration becomes final and conclusive, the term “the date on which the trademark right is extinguished” as the initial date of the period under Article 7(1)8 of
(2) The lower court determined that the part of the designated goods indicated in the judgment of the lower court (attached Form 2) that was identical or similar to the designated goods indicated in the judgment of the lower court (attached Form 7(1)8 of the former Trademark Act and the designated goods indicated in the judgment of the lower court at the time of the application for the trademark of this case constitutes a registered trademark of another person for which one year has not passed since the date of extinguishment of the trademark right, and that the registered trademark of this case (trademark No. 926920) was invalidated as it fell under Article 7(1)8 of the former Trademark Act, and thus, the registered trademark of this case (trademark No. 926920) at the time of the application for the trademark of this case constitutes a registered trademark of this case, for which one year has not passed since the date of extinguishment of the trademark right.
Examining the aforementioned legal principles and records, the lower court’s aforementioned determination is justifiable. In so doing, it did not err by misapprehending the legal doctrine on Article 7(1) Subparagraph 8 of the former Trademark Act.
2. An application for taking over a litigation procedure by an applicant for taking over;
According to the records, on May 3, 2016, which was not timely filed on May 3, 2016, the applicant for the continuation of legal proceedings, may know the fact that he/she received a transfer registration of the right to the registered trademark of this case from the Plaintiff on May 3, 2016. However, in cases where a judgment is declared without oral pleadings at the same stage, it is not necessary to have the assignee take over the legal proceedings (see Supreme Court Decision 2013Da3675, Oct. 15, 2015). Accordingly,
3. Therefore, the appeal and the request for continuation of proceedings are dismissed, and the costs of appeal are assessed against the losing party, and the costs incurred by the request for continuation of proceedings are assessed against the requester. It is so decided as per Disposition by the assent of all participating Justices.
Justices Park Sang-ok (Presiding Justice)