[2] Whether an application for trademark registration without an intention to use the trademark constitutes grounds for invalidation of trademark registration falling under "where it is not consistent with the definition of the trademark under Article 23 (1) 4 of the Trademark Act (negative)

[3] The case holding that it is difficult to view that there is a ground for invalidation of the registration, which constitutes "a trademark which is likely to disrupt the public order or good customs" under Article 7 (1) 4 of the Trademark Act, merely because the trademark right holder abused the principle of registration without the intention of simply using the registered trademark

[4] The case holding that the registered trademark " " does not fall under Article 6 (1) 7 of the Trademark Act since it is hard to see that the registered trademark " cannot be seen as being directly published in a specific area as a whole, because it is not recognized as a mark of the source of goods, or it is not appropriate to see that it is inappropriate to allow any one to use it

[2] The main text of Article 3 of the Trademark Act provides that "any person who uses or intends to use a trademark in the Republic of Korea may obtain a registration of his/her trademark"; however, where a person who uses or intends to use a trademark files an application for trademark registration, a separate ground for refusal of registration or a ground for invalidation of registration, and the Trademark Act provides that "the use of a trademark by an exclusive or non-exclusive licensee who is not a trademark holder or a non-exclusive licensee," under Articles 5 and 57, and Article 73 (1) 3 of the Trademark Act provides that "the use of a trademark by the trademark holder or the trademark holder, etc. is caused by the establishment of the trademark right" and Article 73 (1) 3 of the Trademark Act provides that "the use of the trademark shall not be caused by the establishment of the trademark right." In light of the purport of the above provisions, it is difficult to deem that the trademark law provides that the trademark owner does not have the intention to use the trademark

[3] The case holding that it is difficult to view that there is a ground for invalidation of the registration, which constitutes "a trademark which might disturb the public order or good customs" under Article 7 (1) 4 of the Trademark Act, merely because the trademark right holder abused the principle of registration without the intention of simply using the registered trademark.

[4] The case holding that although the registered trademark "Dong-nam" refers to the "defense between the east and the south" or the east and the south," the registered trademark "Dong-dong" refers to the "Examination, which is the designated goods," it is not recognized as a mark of the origin of the goods because it is difficult to view the registered trademark as a whole as a newspaper published in a specific area because it is difficult to view it as a whole, or it is not appropriate to see any one person to use it as an exclusive mark, it does not fall under Article 6 (1) 7 of the Trademark Act.

2. Litigation costs shall be borne by the plaintiff.

A. The Plaintiff filed for a registration invalidation trial on the ground that the registered trademark of this case under B(1) below (2) falls under Article 7(1)7 of the Trademark Act because the registered trademark of this case is similar to the prior registered service mark under Paragraph(2) below. The Intellectual Property Tribunal rendered the instant trial decision to dismiss the Plaintiff’s claim on the ground that the registered trademark of this case and prior registered service mark are similar to those of the registered trademark of this case, but the designated goods are not similar to those of the designated goods.

B. The registered trademark of this case and the prior registered service mark

(1) The registered trademark of this case

(a) Registration number: Defendant;

(C) Date of application/registration: December 12, 2003// December 31, 2004

(d) Composition:

(e) Designated goods: Examination (Article 6(1) [Attachment 1] of the Enforcement Rule of the Trademark Act, and Category 16 of the Product Classification

(2) Prior registered service marks

(a) Registration number: service mark right holder of No. 21989 (b): Taxide;

(C) Date of application/registration: June 23, 1992/ October 25, 1993 (registration of renewal of the duration of service mark right on February 18, 2004)

(d) Composition:

(e) Designated service business: Administrative published private teaching institute management business, experimental information provision business, book sales agency business, travel agency business [Attachment 2] under Article 6 (2) [Attachment 2] of the former Enforcement Rule of the Trademark Act (amended by the Ordinance of the Ministry of Trade, Industry and Energy No. 83 of Feb. 23, 1998]

【Evidence: No dispute between the Parties】

2. Determination as to the legitimacy of the trial decision

A. The plaintiff's assertion

(1) As the provision of test information is not only in the form of books or magazines, but also in the form of newspaper for prompt delivery of information, it is recognized that it is reasonable for an examinee, who is a general consumer in the test information market, to issue the newspaper to the examinee. Thus, the "Examination Information Provision Business, which is the designated product of the registered trademark of this case, and the designated service business of the prior-registered service mark, is similar.

(2) In light of the fact that the Defendant does not take any procedure for newspaper publication so far, and that the certified copy of the corporate register does not state the purpose of business related to newspaper publication, and that the newspaper is a large number of applications for trademark registration as designated goods, and that the Plaintiff advertised publication in south and applied for the registered trademark of this case after the passage of the previous time, the application for the registered trademark of this case constitutes abuse of the registration principle without any objective intention to use the trademark, and thus constitutes Article 23(1)4 and Article 7(1)4 of the Trademark Act.

(3) The term "Dongnam of the registered trademark of this case" refers to the defense between the east and the south or between the south and the south, and the term "Japan" refers to the examination, which is the designated goods, and it is not recognized as a mark of origin of the registered trademark of this case as a whole, because it is recognized as a newspaper published on the south and south, and it is not appropriate to see any person in the south and south area as if he wishes to use it, so it is not appropriate to see it to any other person, and therefore, it constitutes Article 6(1)7 of the Trademark Act.

(b) Markets:

(1) Whether the provision of newspaper and test information is similar

The similarity of designated goods shall be determined on the basis of whether the use of a trademark identical or similar to the goods compared to the goods in accordance with the general transaction norms is likely to be mistaken for the goods manufactured or sold by the same company when comprehensively taking into account the actual circumstances of the transaction, such as the quality, shape, use and production, sales, and the scope of consumers, which are the characteristics of the goods themselves (see Supreme Court Decision 2003Hu1086, Aug. 19, 2005). The issue of newspapers, which are the designated goods of the registered trademark of this case, and the provision of test information, which is the designated service of the prior registered service mark, are being made by the same company, cannot be deemed as being done by the same company, and there is no other evidence to acknowledge this. Thus, it is difficult to deem that the issue of newspapers and the provision of test information, etc. of information, which is the designated goods of the registered trademark of this case, and the provision of prior registered service mark, are similar.

(2) Whether it falls under Article 23(1)4 and Article 7(1)4 of the Trademark Act

Although the main text of Article 3 of the Trademark Act provides that "any person who uses or intends to use a trademark in the Republic of Korea may obtain a registration of his trademark", where a person other than the person who uses or intends to use the trademark files an application for trademark registration, the trademark right shall enter into force by registration of establishment" under Article 41 (1) of the Trademark Act, and Articles 55 and 57 provide that "the use of a trademark by an exclusive or non-exclusive licensee who is not a trademark right holder or a non-exclusive licensee, and Article 73 (1) 3 of the Trademark Act provides that "the use of a trademark by the trademark right holder is not used by the trademark right holder" under Article 73 (1) 4 of the Trademark Act. In light of the purport of various provisions of the Trademark Act, it is difficult to deem that the trademark right holder does not have the intention to use the trademark, and therefore it does not constitute "where the trademark does not conform to the definition of the mark" under Article 23 (1) 4 of the Trademark Act, even if the defendant does not intend to use the trademark in this case.

On the other hand, as seen above, Article 41 (1) of the Trademark Act provides that "the trademark right shall come into force by registration establishment" and adopts the principle of registration, so long as the plaintiff and the defendant who did not have any special trust relationship by specific transaction, etc. and the defendant abuse the principle of registration without the intention to use the registered trademark of this case, it is difficult to view that there exists a ground for invalidation of registration falling under Article 7 (1) 4 of the Trademark Act on the ground that the registered trademark of this case has been invalidated by the defendant without the intention to use the registered trademark of this case, and there is no evidence to deem otherwise that recognizing the registration of the registered trademark of this case is detrimental to the order of the Trademark

(3) Whether it falls under Article 6 (1) 7 of the Trademark Act

Although the "Dongnam" of the registered trademark of this case refers to the defense between the east and the south or between the east and the south, it is not appropriate to see that the trademark of this case is not recognized as a mark indicating the source of the product, or that it is not appropriate to see any one person who wants to use it as a whole because it is difficult to see that the registered trademark of this case is directly published in a specific area as a whole.

C. Sub-committee

Therefore, the registered trademark of this case does not have any ground for invalidation of registration under Articles 6(1)7, 7(1)4 and 7(1)7, and 23(1)4 of the Trademark Act. Thus, the trial decision of this case that deemed that there is no ground for invalidation of registration on the registered trademark of this case is legitimate.

3. Conclusion

The plaintiff's claim is dismissed as it is without merit. It is so decided as per Disposition.

Judges Lee Sung-ho (Presiding Judge)