[2] Requirements for falling under Article 7 (1) 12 of the former Trademark Act / Standard for determining whether a trademark of a specific person constitutes a well-known trademark, and whether the applicant has an unlawful purpose / Standard for determining whether such trademark is a well-known trademark (=the time when the trademark is applied

[3] The case holding that in a case where Company A's registered trademark " " " is similar to the pre-use trademark " " " of the pre-use trademark of the company A, and the Korean Intellectual Property Tribunal filed a petition for a nullification trial on the invalidation of registration, and the Korean Intellectual Property Trial and Appeal Board rejected Gap's claim on the ground that Gap's previous claim was not for unjust purposes in light of the recognition of the pre-use trademark in light of the recognition of the pre-use trademark, in a registration invalidation trial filed against the applicant Byung who is the applicant Byung of the registered trademark, the judgment dismissing Gap's claim for the same facts as the prior final and conclusive judgment dismissing the claim, and it violated the principle of res judicata because it was based on the same evidence and identical facts, the illegality purpose of the pre-use trademark's well-known and Byung is recognized, and the newly submitted evidence related to the recognition of the pre-use trademark

[2] Article 7 (1) 12 of the former Trademark Act (amended by Act No. 8190 of Jan. 3, 2007) provides that trademark registration may not be granted for unlawful purposes, such as obtaining unjust profits or inflicting losses on a specific person, which is identical with or similar to a trademark which is recognized as indicating the goods of a specific person by domestic or foreign consumers. The purport of the above provision is that a trademark which causes damage to the well-known owner of a trademark right by means of obstructing the business in the Republic of Korea of the well-known owner of a trademark right, or is used for the purpose of obtaining unjust profits by using such imitate trademark, by registering and using the trademark which is recognized as a well-known trademark among domestic or foreign consumers.

In order to fall under the above provisions, a specific person’s trademark shall be applicable to a well-known trademark, and an applicant for a trademark shall use the trademark identical or similar to a well-known trademark of a specific person for unlawful purposes. Whether it falls under a well-known trademark is a standard for the period of use, method, mode, scope of use, etc. of the trademark, and whether it is objectively widely known in terms of transaction circumstances or social norms. Whether it is an unlawful purpose shall be determined at the time of application for a registered trademark, comprehensively taking into account the following: (a) the degree of well-known, name or creativity of a specific person; (b) the trademark of a specific person and the applicant’s trademark; (c) the degree of the same and similar nature of the trademark; (d) the existence and content of negotiations surrounding the trademark between an applicant and a specific person; and (e) other parties’ relations,

[3] The case holding that in a case where foreign company Gap's registered trademark " " " is similar to the pre-use trademark " " " of Gap company," and thus, Gap company's claim for a invalidation trial was filed against Eul company's applicant Byung, and the Korean Intellectual Property Tribunal decided to dismiss Eul's claim on the ground that Gap company's former claim for invalidation trial against Eul company's applicant Byung cannot be recognized as unlawful purpose in light of the recognition of the pre-use trademark, the case holding that the judgment below's judgment's rejection of claim is identical to the pre-use trademark "," "," and " "," and the product's sale period, advertisement, press report, sales amount, etc. are clearly perceived as trademark of a specific person among consumers of the United States and Canada as at the filing date of the pre-use trademark, and the judgment below's rejection of the claim is not identical to the pre-use trademark's prior-use trademark's trademark's judgment that did not violate the definition of the pre-use trademark's trademark and its relation with Gap company Gap's prior pre-use trademark's products.

1. Prior final and conclusive adjudication and the judgment of the court below

A. In light of the fact that the First Used Trademark " " was almost known in the Republic of Korea and it is difficult to view it as a well-known and well-known trademark in a foreign country, the Patent Tribunal rendered a trial decision to the effect that it does not fall under Article 7 (1) 12 of the former Trademark Act (amended by Act No. 8190 of Jan. 3, 2007; hereinafter the same) since it cannot be readily concluded that the First Used Trademark " " (Registration Number omitted) was applied for the purpose of preventing the entry into the domestic market of the First Used Trademark " "," enforcing agency contracts, or taking advantage of the reputation of the First Used Trademark " (hereinafter referred to as "prior final and conclusive trial decision"). The above trial decision became final and conclusive around that time as a party did not object to the decision (hereinafter referred to as "prior final and conclusive trial decision").

B. The lower court determined that the instant registered trademark cannot be deemed to fall under Article 7(1)12 of the former Trademark Act even if based on the evidence newly submitted in the instant trial decision, and thus, the said evidence constitutes evidence identical to the evidence of the prior final and conclusive trial decision, which could have reversed the conclusion of the prior final and conclusive trial decision, and ultimately, the instant petition for a trial was based on the same facts as the prior final and conclusive trial decision and evidence, and thus, is not allowed in violation of the principle of res judicata.

2. Judgment of the Supreme Court

A. Relevant legal principles

1) “The same evidence” under Article 150 of the Trademark Act, which provides for the principle against double Jeopardy, includes not only the evidence such as the evidence of the final and conclusive trial decision, but also the evidence which has not been sufficiently able to reverse the trial decision. Therefore, in a case where the evidential evidence to reverse the conclusion of the final and conclusive trial decision is newly submitted, it cannot be said that the said evidence violates the principle against double Jeopardy (see Supreme Court Decision 2004Hu42, Mar. 11, 2005, etc.).

2) Article 7(1)12 of the former Trademark Act provides that trademark registration may not be granted for unlawful purposes, such as obtaining unjust profits or inflicting harms on a specific person, which is identical with or similar to a trademark which is recognized as indicating goods of a specific person by customers in the Republic of Korea or in foreign countries. The purport of the above provision is that a trademark used for the purpose of obtaining unjust profits by registering and using a trademark which is recognized as a trademark of a specific person among consumers in the Republic of Korea or in foreign countries is not to cause damage to an identical owner of a trademark right by impeding the business in the Republic of Korea of an identical owner of a trademark right, or by using it for unjust profits by using it after registering and using the trademark which is recognized as a trademark of a specific person.

In order to fall under the above provisions, a trademark of a specific person shall fall under the well-known trademark, and an applicant for a trademark shall use the trademark identical or similar to the well-known trademark of a specific person for unlawful purposes. Whether a trademark of a specific person falls under the well-known trademark is a standard for the period of use, method, mode, scope of use, etc. of the trademark, and whether it is objectively widely known in terms of social norms or social norms. Whether there is an unlawful purpose shall be determined by comprehensively taking into account the following factors: (a) the degree of well-known, name or creativity of a specific person; (b) the trademark of a specific person and the applicant’s trademark; (c) the degree of the same and similarness of the trademark; (d) the existence of negotiations surrounding the trademark between an applicant and a specific person; (e) the relationship between the two parties; (e) whether the applicant has prepared the business using the registered trademark; (e) whether goods are identical or similar to the trademark; and (e) whether there is an economic relation with the trademark;

B. Review of the reasoning of the lower judgment and the record reveals the following circumstances.

1) The pre-use trademarks 1 “,” the pre-use trademarks 2 “,” and the pre-use trademarks 3 “ “,” (hereinafter “pre-use trademarks”) are attached to the bicycles manufactured by E.I.D. (Cervine L.A. on February 17, 2012; hereinafter “Plaintiffs” and “Plaintiffs” are sold at a high level in many countries including the United States and Canada or in Internet shopping malls in various countries including the United States and Canada since 1996. The pre-use trademarks 1 “,” are registered in various countries including the United States, Canada, and the European Union.

2) The Plaintiff began to grow up for the sale of bicycles for Trithlon. From 2003, the Plaintiff started to support the professional team. The professional team sponsored by the Plaintiff sponsored the pre-use trademarks, including the bicycle riding affixed with the pre-use trademarks, with good grades in major bicycle competitions, such as Trith France, and accordingly, the pre-use trademarks have increased the awareness of pre-use trademarks. From 1996 to 2005, the Plaintiff published a lot of newspapers, magazines, Internet media, etc., including “Trithrathmte”, “procling,” and “procling,” continuously attached pre-use trademarks to the pre-use trademarks, and the articles and advertisements of the players’ active drugs, including those of the players. From 2003 to 206, the pre-use trademarks published the product and advertisements related to the bicycle ridings included in the pre-use trademarks’ brand and the bicycle-related product.

3) Sales from the sale of products affixed with the Plaintiff’s pre-use trademarks have increased rapidly since 1996, and sales amounting to USD 11 million annually in 2004.

4) From around 2002, Nonparty 1 began to import and sell bicycle products with pre-use trademarks manufactured and sold by the Plaintiff in Korea. Since the business registration was completed on February 6, 2004, Nonparty 1 imported and sold bicycle products, including bicycles, from the Plaintiff by means of direct operation or agency establishment, etc.

5) On March 16, 2005, Nonparty 1 filed an application for trademark registration of the mark “” with a bicycle, etc. without the Plaintiff’s permission, and the Plaintiff became aware of the fact that the application was filed on November 28, 2005, Nonparty 1 entered into an agreement on the entrustment of trademark rights containing the following: “The Plaintiff shall not grant the right to register the ervel trademark in the name of Nonparty 1. Although Nonparty 1 filed the application for the said trademark on behalf of the Plaintiff and received the consignment from the Plaintiff, Nonparty 1 applied for the said trademark on behalf of the Plaintiff, but if the Plaintiff so requests, the right to the said trademark shall be transferred to the Plaintiff or to the person designated by the Plaintiff.” Although Nonparty 1 decided to register the trademark on January 4, 2006, the trademark right became extinct due to the unpaid registration fee on March 6, 2006.

6) On March 14, 2006, Nonparty 2 filed an application for the instant registered trademark “” and completed the trademark registration on January 18, 2007.

7) On March 29, 2012, the Plaintiff filed a petition for invalidation trial against Nonparty 2 on the ground of Article 7(1)12 of the former Trademark Act. However, in light of the recognition guidance of the pre-use trademark, the above petition was dismissed on the ground that the non-exclusive licensee could not be recognized for any unlawful purpose (the prior final and conclusive judgment). On March 17, 2015, the Plaintiff filed a petition against Nonparty 2 for a trial on revoking non-use of the registered trademark of this case. On March 17, 2015, the above petition was dismissed on the ground that Nonparty 1, the non-exclusive licensee, used the registered trademark of this case. In that process, the Plaintiff became aware of the fact that Nonparty 1 is a non-party 2’

C. We examine the above circumstances in light of the legal principles as seen earlier.

Considering the sale period, advertisement, press report details, sales amount, etc. of products using the pre-use trademarks, the pre-use trademarks can be seen as trademarks that are clearly perceived as trademarks of a specific person between the U.S. and Canadian consumers as at March 14, 2006, which are the filing date of the instant registered trademark. In addition, in light of the well-knownness of the pre-use trademarks, similarity between the instant registered trademark and the pre-use trademarks, the details and contents of concluding contracts between the Plaintiff and Nonparty 1, relationship between Nonparty 1 and Nonparty 2, and the process of filing the instant registered trademark, etc., Nonparty 2 filed an application for the instant registered trademark with the aim of using it for unlawful purposes, such as intending to inflict damage on the Plaintiff, who is the user of the pre-use trademarks. Ultimately, in relation to the relationship between Nonparty 2 and Nonparty 1, the newly presented evidence in this case constitutes evidence that can reverse the conclusion of the prior final judgment that the instant registered trademark does not fall under Article 7(1)12 of the former Trademark Act, and thus, it cannot be deemed to conflict with the doctrine

D. Nevertheless, the lower court determined that the instant petition for a trial was not permitted on the grounds stated in its reasoning. In so doing, the lower court erred by misapprehending the legal doctrine on Article 7(1)12 of the former Trademark Act and the res judicata doctrine. The allegation contained in the grounds of appeal on this point is with merit.

3. Conclusion

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 Kim Jong-hee (Presiding Justice)