Although the period of prior-use service mark is shorter than one year, Gap used the name of "Shang 00" in connection with cryp shock shocks in broadcasting, newspapers, Internet blogs, etc. which are mass media prior to the contract of the same business, and prior-use service mark is already widely known in the field of cryp, and Byung is deemed to have entered into an agreement of the same business with the name of "A" as it is, taking into account the circumstances that the prior-use service mark is likely to gain economic benefits by using such reputation, the case held that the prior-use service mark was considerably similar to the prior-use service mark since it is considerably similar to the prior-use service mark because it is merely identical or similar to the prior-use service mark as its name and concept, and the prior-use service mark is recognized as being identical or similar to the prior-use service mark as being used by consumers as it is recognized as being identical or similar to the prior-use service mark as its designated service mark.

Costs of lawsuit shall be borne by the defendant.

A. The relationship between the parties

1) The Plaintiff is a person who has been engaged in the cooking business since 1994, and the Defendant is a representative director of a corporation [the name of Pure Co., Ltd., Ltd., which was established with the aim of franchise business (outstanding and clothing), food distribution business as a business on February 17, 2012, which was changed the company's name into a corporation for the purpose of drinking and added the general food business to the business for the purpose of drinking as of February 28, 2013];

2) Around December 2012, the Defendant borne funds by the Defendant and proposed that the Plaintiff carry out the franchise and distribution business of the trade name, “Shang Yang ○○○,” which is the method of providing one’s name and reference technology, along with the Plaintiff. Accordingly, the Plaintiff entered into a business agreement (operating) with the Defendant, a representative director, on December 1, 2012, as indicated below (hereinafter “instant business agreement”).

Article 2(1) of the Business Convention (Business Agreement) partners (A) within the main sentence and Article 3(1) of the same Agreement include the Plaintiff as “A” and “B” with the Plaintiff as “B,” and enter into a business agreement on franchise and distribution business under the trade name between “A” and “B,” with the Plaintiff as “B.” The trade name refers to “B, 00.” Article 1(2) of the same Agreement refers to “B, 30,000 won necessary for the operation of B, and the obligation of investment was completed by providing 40,000 won + 30,000 won. The total amount of capital of Article 3(1) shall be KRW 30,000 + 10,000,000,0000,000 won and the total amount of capital of “B,” and the “B,” with the entire amount of the capital increase at the rate of 4,000,000,000 won and the total amount of profits generated from the business.

3) Around March 2013, 2013 following the conclusion of the instant trade agreement, the Plaintiff and the Defendant opened the business of the instant trade name, i.e., “S. S. S. S. S. S. S. S. S. S. S. S. S. S. S. S. S. S. S. S. S. S. S. S. S. S. S. S. S. S. S. S. S. S. S. S. S. S.S. P. S. S.S. P. S. S. S. S. S. S.S. S. S. S. S

4) The Plaintiff and the Defendant, from the opening date of the instant business, concurrently operated the instant pedagogy point using the prior-use service mark, and terminated the instant club agreement around April 2014. After that, the Defendant solely operated the instant pedagogy point, filed an application for registration of the registered service mark indicated in paragraph (b) below (hereinafter “registered service mark”). After that, the Plaintiff and the Defendant opened and operates the instant pedagogy point in Gangseo-gu and Gangseo-gu Seoul.

B. Registered service mark of this case

1) Registration number/filing date/registration date: (service mark registration number omitted)/ May 16, 2014/ May 19, 2015

2) Composition:

3. Designated service business: He/she may carry on a simple restaurant business referred to in Chapter 43 classified into service business, a peda-specialized restaurant chain business, a peda-specialized restaurant business;

(c) A prior registered service mark (A) No. 50;

1) Composition:

2) 사용서비스업: 서비스업류 구분 제43류의 간이식당업, 간이음식점업, 관광음식점업, 극장식주점업, 레스토랑업, 무도유흥주점업, 뷔페식당업, 서양음식점업, 셀프서비스식당업, 스낵바업, 식당체인업, 식품소개업, 음식조리대행업, 음식준비조달업, 일반유흥주점업, 일반음식점업, 일본음식점업, 중국음식점업, 패스트푸드식당업, 한국식 유흥주점경영업, 한식점업

3) Users: Nonparty 2

D. The process of the instant lawsuit

1) On May 11, 2017, the Plaintiff filed a petition for registration invalidation trial on the instant registered service mark with the Intellectual Property Trial and Appeal Board against the Defendant, asserting that “The instant registered service mark constitutes a mark likely to mislead or confuse the Plaintiff as a restaurant directly operated by the Plaintiff, or to deceive consumers, and thus, falls under Article 7(1)11 of the former Trademark Act (wholly amended by Act No. 14033, Feb. 29, 2016; hereinafter the same shall apply).”

2) On November 23, 2018, the Korean Intellectual Property Tribunal rendered a ruling dismissing the Plaintiff’s above appeal on the ground that “ insofar as it is difficult to readily conclude that the prior-use service mark was recognized as a service mark of a specific person by the general consumers or traders in the Republic of Korea at the time of determining the registration of the instant registered service mark or that it was known as indicating the source of a specific person’s service, it does not need to examine whether the registered service mark does not fall under Article 7(1)11 of the former Trademark Act (hereinafter “instant trial ruling”).”

3) Accordingly, the Plaintiff filed the instant lawsuit against the Defendant seeking the revocation of the instant trial decision on the ground that the instant trial decision was unlawful.

[Reasons for Recognition] Facts without dispute, Gap evidence Nos. 1, 5, 22, 50, Eul evidence Nos. 1, 5, and 6 (including branch numbers; hereinafter the same shall apply)

2. Summary of the plaintiff's assertion

A. Article 7(1)11 of the former Trademark Act

The prior-use service mark was known to the extent that it can be perceived as the Plaintiff’s service mark among domestic users at the time of the registration of the instant registered service mark, and as long as the prior-use service mark and the instant registered service mark are identical or similar to that of the instant registered service mark, the instant registered service mark is likely to mislead or confuse consumers as to the provision of services directly operated by the Plaintiff, or to mislead consumers, and constitutes Article 7(1)11 of the former Trademark Act.

B. Article 7(1)18 of the former Trademark Act

The Defendant knew that the Plaintiff used the pre-use service mark through the instant trade agreement at the time of the filing of the application for the instant registered service mark, the Defendant applied for and registered the instant registered service mark by converting the pre-use service mark from the pre-use service mark called “Shang ○○○○,” into the sea (sea) only, and thus, the instant registered service mark constitutes Article 7(1)18 of the former Trademark Act.

C. Article 7(1)12 of the former Trademark Act

At the time of the application for the instant registered service mark, prior-use service mark was known to the extent that it can be perceived as the Plaintiff’s service mark among domestic users of cryptian, and the prior-use service mark and the instant registered service mark are identical or similar thereto. The Defendant entered into a trade agreement with the Plaintiff and carried on a business by using the prior-use service mark as “Shang ○○○,” and even though it is well aware that the prior-use service mark is recognized as indicating the Plaintiff’s service by means of the Plaintiff’s mass media contribution and publicity activities, consumers in Korea were well aware that prior-use service mark is recognized as indicating the Plaintiff’s service, the prior-use service mark applied for the instant registered service mark, which is substantially identical to the prior-use service mark for unlawful purposes, such as obstructing the Plaintiff from entering the market as the prior-use service mark after the termination of the contract. Thus, the registered service mark constitutes Article 7(1)12 of the former Trademark

D. Article 7(1)6 of the former Trademark Act

In Article 7 (1) 6 of the former Trademark Act, "trademark containing the name, title or trade name, portrait, signature, seal, pen name or pen name of another person, or its abbreviation," where the name or title itself is registered as a service mark by another person, it constitutes infringement on personal rights, and it is reasonable to interpret by relaxing the requirements of well-knownness when considering the legislative intent of this provision. Thus, the registered service mark of this case constitutes "trademark containing the name, title or trade name, portrait, signature, seal, pen name or pen name of the other person or its abbreviation," and constitutes "trademark including the name, name or trade name, portrait, signature, pen name, stage name or pen name of the other person or its abbreviation."

E. Article 7(1)7 of the former Trademark Act

The instant registered service mark is a trademark identical or similar to “”, which is a prior registered service mark, and is identical or similar to the designated goods of the prior registered service mark and the instant registered service mark, and thus constitutes Article 7(1)7 of the former Trademark Act.

3. Judgment on the plaintiff's assertion

A. Whether the registered service mark of this case constitutes Article 7(1)11 of the former Trademark Act

1) Relevant legal principles

The purpose of Article 7(1)11 of the former Trademark Act is not to protect the existing trademark, but to prevent misconceptions or confusions among general consumers with regard to the quality, origin, etc. of goods using a trademark already recognized as a trademark of a specific person, and to protect the trust thereof. Thus, the latter part of Article 7(1)11 of the former Trademark Act “a trademark likely to deceive a consumer” includes a trademark which imitates another person’s trademark in relation to the designated goods and thereby deceives consumers by its registration or application for registration as a one-time trademark (see, e.g., Supreme Court Decisions 86Hu156, Mar. 10, 1987; 98Hu2870, Sept. 3, 199).

Meanwhile, in order to constitute a trademark where the registered trademark is likely to deceive the consumers as stipulated in Article 7(1)11 of the Trademark Act, it should be known to the extent that the pre-use trademark or the goods using the pre-use trademark compared to the registered trademark or the designated goods are not necessarily known and clear, but at least in general transactions in the Republic of Korea, if it is a trademark or goods to the extent that it can be recognized as a trademark or goods of a specific person (see Supreme Court Decision 2001Hu184, 1891, Apr. 8, 2003).

In this context, whether the pre-use trademark or its goods can be recognized as a trademark or goods of a specific person among general consumers ought to be determined by comprehensively taking into account the period, method, mode, scope of use, etc. of the trademark or goods, or whether they are objectively and reasonably known to the general public in terms of social norms. Therefore, if the size of sales, market share, advertising expenses, etc. of the goods using the pre-use trademark is reasonable, it can be confirmed that the above requirements are met. However, even if it does not meet such requirements, it can be seen that the trademark or goods of a specific person can be recognized as a trademark or goods of a specific person in the actual circumstances or social norms. For instance, if the pre-use trademark is widely known to consumers or traders in the relevant field through broadcasting, newspaper, or Internet screen, or manufacturing specific goods with high quality by specialized knowledge or technology, and if the pre-use trademark or service mark is composed solely of the name of a person known to the general public and thus, it can be seen as a specific person’s goods or goods being used, and thus, it can be seen as a specific person’s goods or goods origin.

2) Facts of recognition

According to the overall purport of Gap evidence Nos. 10, 13, 14, 23, 28, 29, 32-35, 37, 38, 41, 42, 45-47, the following facts are acknowledged.

A) On April 2010, the Plaintiff: (a) performed a shock show at the Dog-ri restaurant called “Magsung”; (b) on April 25, 2010, the Plaintiff held an event to crypt crypt crypt crypt crypt crypt crypt cryp cryp cryp cryp cryp cryp cryp cryp cryp cryp cryp cryp cryp cryp cryp cryp cryp cryp cryp cryp cryp

B) From the date of Jan. 1, 2010 to Dec. 1, 2012, the instant trade agreement was concluded between N.V. and N.N. to the date of Dec. 1, 2012, the search of “S. S. S. S. S. S. S. S. S. S. S. S. S. S. S. S. S. S. S. S. S. S. S. S. S. S. S. S. S. S. S. S. S. S. S. S. S. S. S. S. S. S. S. S. S. S. S. S. S. S. S. S. S. S. S. S. S. S. S. S. S. S. S. S. S. S. S. S. S. S. S. S. S. S. S. S. S. S. S. S. S. S. S. S. S. S. S. S. S. S. S. S. S. S. S. S. S. S. S. S. S. S. S. S. S. S. S. S. S. S. S. S. S. S

C) On June 18, 2010, the Plaintiff contributed to “(the program name 2 omitted),” “(the program name 3 omitted),” “(the program name 3 omitted),” “(the program name 4 omitted),” “(the program name 5 omitted),” “(the program name 5 omitted),” “(the program name 5 omitted)” “the program name 5 omitted),” etc. broadcasted by SBS 2 on December 24, 2014. The instant “(the program name 5 omitted)” broadcast was taken at the EbS specialty.

라) 원고는 2013. 7. 25. ◎마트 ◁◁점에서 개최된 한-일 참치 전문가 초청 참치 해체쇼 대결에 초청되었다. 당시 원고는 “참치왕 양○○”라는 황금색 글자가 표시된 옷을 입고 참치 해체쇼를 하였는데, 그러한 사실은 뉴시스, 연합뉴스, 세계일보, 서울신문, 국민일보, 뉴스1 등에서 기사화되었으며, SBS, KBS 등에서는 위 장면을 촬영하고 원고를 인터뷰하였다.

마) 이 사건 참치요리전문점의 개업 당시 위 매장 내부에는 “참치왕!! 양○○!! 그의 한칼을 볼 수 있는 기회가 왔습니다.”라는 문구와 함께 국내 검색사이트에 ‘참치왕’을 검색해보라는 취지의 검색창 그림을 인쇄한 아래와 같은 사진이 있다.

A person shall be appointed.

F) After the agreement of this case was entered into between N.V. and the following, when searching “S. S. S. S. S. S. S. S. S. S. S. S. S. S. S. S. S. S. S. S. S. S. S. S. S. S. S. S. S. S. S. S. S. S. S. S. S. S. S. S. S. S. S. S. S. S. S. S. S. S. S. S. S. S. S. S. S. S. S. S. S. S. S. S. S. S. S. S. S. S. S. S. S. S. S. S. S. S. S. S. S. S. S. S. S. S. S. S. S. S. S. S. S. S. S. S. S. S. S. S. S. S. S. S. S. S. S. S. S. S. S. S. S. S. S. S. S. S. S. S. S. S. S. S. S. S. S. S. S. S. S. S. S. S. S. S. S. S. S. S. S. S. S. S. S. S. S. S. S

사) “♤♤♤♤ ♤♤♤♤”라는 이름의 네이버 카페의 2014. 2. 21.자 “참치 좋아하세요?”라는 카페 게시글에는 원고의 해체쇼 장면을 촬영한 사진을 게시하고 있고, 위 글의 2014. 2. 21.자 댓글에는 “여기 산본 참치왕 양○○인가요?! 비싼만큼 맛나더라구요ㅜㅜ”라는 내용이 있으며, 위 댓글에 대한 2014. 2. 21.자 답글로 “네 산본의 참치왕 양○○ 맞습니다. 어제 퇴근하구 여기 (프로그램 명칭 5 생략) 촬영 때문에 못 갔어요. 양○○ 쉐프님이 가게 옮기신다고 하니 이제 이 곳은 더 이상 안 가셔도 될 것 같아요.”라는 내용이 게시되어 있다.

아) 2010년, 2011년 네이버 파워블로그로 선정된 “♡♡♡♡ ♡♡♡♡ ♡♡♡♡”라는 블로그에는 2013. 6. 10.자 “〈참치왕 양○○〉 생참치이야기”라는 제목의 글이 게시되어 있고, 위 글에는 원고의 모습과 함께 생참치 해체쇼를 하는 장면을 촬영한 사진이 있고, “참치왕 양○○, 네이버 검색하시면 생참치하면 가장 먼저 떠오르시죠.”라는 내용이 있다.

I) After the conclusion of the instant trade agreement, some consumers visited the instant Track store after the conclusion of the instant trade agreement, were able to post on the Plaintiff’s Block or Internet Block that some consumers misper the instant Track store as the restaurant or franchise store operated by the Plaintiff.

3) Specific determination

A) The degree of known service mark

In full view of the aforementioned facts and the following circumstances, which can be recognized by comprehensively taking account of the aforementioned facts as well as the testimony of Nonparty 3 and the purport of the entire pleadings, it is recognized that the service mark used in the prior-use service mark was less than one year, but it was considerably known to the extent that it was a service mark related to the china provided by the Plaintiff at the time of the application or registration of the instant registered service mark.

(1) From around 2010 to the time of the registration decision date of the instant registered service mark, the Plaintiff contributed to a broadcast (such as KBS, MBC, SBS, and SBS) which is a mass medium with high radio wave to the general public. The Plaintiff’s Internet articles related to the “scambling shock” was reported from several newspapers, and the Plaintiff was searched on the Internet as a search by the “scamh” or “scamh”.

(2) In introducing the Plaintiff, the said mass media, etc. used the Plaintiff’s name “Shang ○○” as a substitute in the sense that the Plaintiff has an outstanding professional skill relating to the decommissioning of the pedry, and the ordinary consumers also introduce the store as a massage place for which the Plaintiff works.

(3) The pre-use service mark used in the instant Reference Points is used in the name of the Plaintiff already known in the Reference Points as above, and the service provided by the pre-use service mark is also “contribute”.

(4) In light of the following: (a) the Defendant agreed to the trade name of the instant title store as “Shang ○○○”; (b) the Defendant’s side agreed to contribute to the entire capital at the time of the instant trade agreement; and (c) advertisement contents at the time of opening the instant title store, etc., the Defendant also concluded a partnership agreement on the said condition that the name “Shang ○○” at the time of the instant trade agreement was already known to the general consumers to a considerable extent; and (b) the Defendant had already concluded a partnership agreement on the said condition that he would obtain economic benefits by using such reputation.

(5) Nonparty 3, a witness who worked with the Plaintiff at the instant Ethical point, stated to the effect that the majority of the customers discovered the Plaintiff from among the customers who found the Ethical point of this case, was aware of the Plaintiff. It seems that the pre-use service mark was known to the extent of considerable degree to ordinary consumers as the mark of service business providing the Plaintiff’s Ethical point of view.

(6) The business property belongs to the partnership of its partners (see Article 271(1) of the Civil Act). Since the Plaintiff and the Defendant’s side entered into an agreement on the partnership of business, as long as they operated at the store of this case, the right to the prior-use service mark should also be deemed to belong to both the Plaintiff and the Defendant until April 2014 when the agreement on the partnership of this case was terminated, and since the Defendant agreed to have exclusive right to the prior-use service mark upon the termination of the agreement on the partnership of this case, the prior-use service mark constitutes another person’s service mark in relation to the Defendant [the Defendant, on the same ground, did not submit the previous trade name called “Shang ○○○○” while filing the application for the registered service mark of this case, rather than filing the application for the prior-use service mark of this case with the Defendant, it is argued that “” added the “yang” as the registered service mark of this case, and its meaning also belongs to the registered service mark [Attachment] [Attachment] of the prior-use service mark.]

B) Whether the registered service mark of this case and the prior used service mark are identical or similar

In light of the aforementioned facts, the aforementioned evidence and evidence, evidence Nos. 15, 19, 44, and evidence Nos. 2 through 6, and the following circumstances acknowledged by the purport of the entire pleadings, etc., the registered service mark of this case is considerably similar to the prior-use service mark, and its name and appearance are identical to the prior-use service mark, and if the prior-use service mark exists for the same or similar service, the registered service mark of this case may cause mistake or confusion as to the source of service. Thus, both marks are identical or similar.

(1) The Defendant continued to use the Defendant’s business information, “,” which was used at the instant store located in accordance with the instant trade agreement, after the application and registration of the instant registered service mark. Considering that the Defendant’s broadcast content in the instant service mark “(the program name 6 omitted),” “SBS” on February 24, 2014, “(the program name 1 omitted),” “MBC’s “(the program name 7 omitted)” on May 16, 2016,” and “(the program name 8 omitted)” on May 11, 2017, the Defendant appears to have used the Defendant’s business information in the instant broadcast service mark in the form of “Ilman Pak○○○○○○○○,” and the Defendant’s introduction in the magazines on August 24, 2016, appears to have used “the instant registered service mark in the form of “○○○○, a representative restaurant.”

(2) In light of the fact that the instant registered service mark “” is merely an indication of “Bhhhhhhhhhhhhhhhhhhhhhhhhhhhhhhhhhhhhhhhhhhhhhhhhhhhhhhhhhhhhhhhhhhhhhhhhhhhhhhhhhhhhhhhhhhhhhhhhhhhhhhhn

(3) The registered service mark of this case and the prior used service mark are referred to both as “Shang Shang ○○,” and thus, the registered service mark of this case and the prior used service mark are the same names.

(4) As seen earlier, it appears that the Plaintiff’s name, “Shang ○○,” which is the Plaintiff’s name, was known to a considerable extent with respect to biochemical shock, etc., and when considering the language habits of Korea, the name “Shang ○○,” which is the name of the “Shang ○○,” is highly likely to be perceived as an expression that indicates a person with or has a good capacity to be aware of, or has good capacity to, the “Shang ○○,” which is a designated service business entity, as an expression that indicates, the registered service mark of this case is indicated “Shang ○○,” and the transaction situation that appears to have been called, even if it is added, it is difficult to view that it alone, as alleged by the Defendant, it is difficult to view that the concept of both marks is equal to that of the Defendant.

C) Whether the designated service business is identical or similar

The designated service business of this case, the designated service business of the registered service mark of this case, the pedice-only restaurant business, the pedice-only restaurant business, and the service business of using the prior use service mark of this case, are the same or similar service business.

B. Sub-determination

In full view of the results of the above review, the registered service mark of this case is identical or similar to the prior-use service mark recognized as indicating a specific person’s service business, and thus, if used in the designated service business, it may cause consumers to mislead or confuse the source of the service business. Accordingly, the registered service mark of this case constitutes Article 7(1)11 of the former Trademark Act.

4. Conclusion

Therefore, the registered service mark of this case should be invalidated without any further examination as to whether there exists any other grounds for invalidation in the registered service mark of this case. Thus, the decision of this case, which concluded otherwise, is unlawful. Thus, the plaintiff's claim seeking the revocation of the decision of this case, is justified, and it is so decided as per Disposition by the assent of all participating Justices.

Judges Rohn-man (Presiding Judge) Kim Dong-dong

(1) Although the Plaintiff did not specify the pre-registered service mark, the Plaintiff’s assertion that the pre-registered service mark was a pre-registered service mark in light of the overall purport of the entries and arguments in Gap’s evidence No. 50.

2) At the time of the instant trial decision, the Plaintiff asserted that the registered service mark of this case falls under Article 34(1)12 of the Trademark Act, but Article 2(1) of the Addenda to the Trademark Act amended by Act No. 14033, Feb. 29, 2016 provides that “this Act shall apply from the filing date of an application for trademark registration filed after this Act enters into force,” and the filing date of the registered service mark of this case was May 16, 2014, the Korean Intellectual Property Tribunal decided on the instant trial decision by applying the former Trademark Act.

주3) 한편 네이버 및 다음에서 2010. 1. 1.부터 2012. 12. 1.까지 ‘생참치해체쇼’ 또는 ‘생참치 해체쇼’를 검색하면, 원고가 일하였던 ‘□□□□□’, ‘☆☆☆☆’, ‘▷▷▷ ▷▷▷’에 관한 내용이 있는 블로그 글이 검색된다.