[2] Whether Article 7 (1) 4 of the former Trademark Act, other than Article 7 (1) 6 of the same Act, can be applied to a trademark applied for or registered without permission by imitateing a well-known person's name (affirmative)

[2] Article 7 (1) 4 and 6 of the former Trademark Act (amended by Act No. 8190 of Jan. 3, 2007; hereinafter the same) differs from the benefits or legal interests and requirements to be protected, and there is no special provision as to the order of application of each subparagraph of Article 7 (1) of the former Trademark Act, even if a trademark is a trademark which imitates a well-known person's name and is applied for and registered without permission, the meaning or contents that the trademark itself or the trademark gives to ordinary consumers when used it for designated goods are contrary to the public order and good customs of society or good customs, such as fair distribution order of goods, international trust and morality, or lack of social validity in the process of filing and registering the trademark, and thus, it is reasonable to deem that Article 7 (1) 4 of the former Trademark Act, as long as the trademark satisfies the requirements of Article 7 (1) 4 of the former Trademark Act, should also be applied to the trademark.

1. As to the grounds of appeal Nos. 3 and 4

A. Where a judgment to revoke a trial decision becomes final and conclusive, the grounds for the reversal shall bind the Intellectual Property Trial and Appeal Board as to the relevant case. The binding force here arises with respect to the fact that the factual and legal judgment of the trial decision, which served as the grounds for revocation, is not justifiable. Therefore, barring special circumstances, such as where a new evidence is submitted in the course of a trial after revocation and where there is a change in the relationship that served as the grounds for binding judgment, the Intellectual Property Trial and Appeal Board may not make a trial decision identical with the previous trial decision for the same reason as that for the final and conclusive judgment. In this case, “new evidence” is not adopted or examined in at least a trial proceeding or a trial decision to which the revocation decision was revoked, and thus, it must be evidence that has probative value sufficient to reverse the conclusion of the judgment to revoke the trial decision (see Supreme Court Decision 2001Hu96, Dec. 26, 2002, etc.).

B. In the case of invalidation trial of the registration of the instant registered trademark or service mark (registration number No. 2486) claimed by the Intellectual Property Tribunal as the defendant as the defendant as the defendant. On May 28, 2009, the Intellectual Property Tribunal rendered a decision dismissing the defendant's trial on the ground that the registered trademark or service mark of this case was duly registered with the permission of the non-party, and the meaning or contents of the registered trademark or service mark to ordinary consumers are used in the composition itself or designated goods or designated service mark, and it cannot be deemed that it violates public order or good customs that is ordinary moral sense, and thus, it does not fall under Article 7 (1) 4 of the former Trademark Act (amended by Act No. 8190 of Jan. 3, 2007; hereinafter the same shall apply). However, in the lawsuit of revoking the previous trial decision filed by the defendant as the patent court on May 28, 2009, the previous trial decision should be revoked on the ground that it constitutes "the previous trial decision revoking the registered service mark of this case."

On July 22, 2010, the Supreme Court rendered a final judgment dismissing the Plaintiff’s appeal on the grounds that the instant registered trademark service mark falls under Article 7(1)4 of the former Trademark Act and its registration is null and void. In other words, considering the process of filing an application for the instant registered service mark and the Nonparty’s well-knownness of the Nonparty’s name, the act of applying for and registering the instant registered service mark without permission to take advantage of the Nonparty’s reputation, thereby impairing the reputation of a well-known video artist, thereby impairing the reputation of the Nonparty, thereby impairing the good customs, which is the moral sense of the general public. In addition, the Supreme Court’s decision to dismiss the Plaintiff’s appeal on the grounds that the instant registered service mark falls under Article 7(1)4 of the former Trademark Act and thus, became final and conclusive.

After that, in a trial proceeding conducted as the Intellectual Property Tribunal No. 2010 Party (Revocation Judgment) No. 81, the Intellectual Property Tribunal rendered the instant trial decision invalidating the registration of the instant registered trademark/service mark on the same ground as the previous decision revoking the previous decision on May 20, 2011. In addition, the lower court rejected the Plaintiff’s assertion that the instant registered trademark/service mark was filed and registered with the Nonparty’s consent, and determined that the application and registration of the instant registered service mark constitutes “where public order or good customs is likely to be injured” under Article 7(1)4 of the former Trademark Act.

C. Examining the records in light of the above legal principles, the above determination by the court below is just, and contrary to the allegations in the grounds of appeal, there are no errors in the misapprehension of legal principles as to Article 7 (1) 4 of the former Trademark Act or by misapprehending the legal principles as to Article 7 (1) 4 of the same

On the other hand, in a judgment revoking the previous decision, as long as it was recognized that the plaintiff applied for and registered the registered trademark service mark of this case without permission in order to take advantage of the reputation of the non-party's name intentionally, it shall be deemed that the plaintiff applied for and registered the registered trademark service mark of this case without the consent of the non-party. However, in order to exclude the binding force of the previous decision revoking the previous decision of this case, the plaintiff shall submit new evidence sufficient to reverse the conclusion of the previous decision revoking the previous decision of this case.

In the same purport, the court below is just in rejecting the plaintiff's assertion that the defendant failed to bear the burden of proof, and there is no error of law as alleged in the grounds of appeal

2. Regarding ground of appeal No. 1

Article 7(1)4 of the former Trademark Act provides that “A trademark that is likely to disturb the public order or good customs” may not be registered. However, the amended Trademark Act (hereinafter “Revised Trademark Act”) amended by Act No. 8190 on January 3, 2007 amended by Act No. 8190 on the ground that the said provision is amended to read “a trademark, in its own case or a trademark is used on a product, that the meaning, content, etc. that the trademark user would use on the product, would be contrary to the ordinary moral sense of the general public, or would be prejudicial to the public order,” and there is no special transitional provision regarding the said amended provision in its Addenda.

However, since a trademark registration becomes null and void retroactively if the trademark registration becomes null and void, barring any special transitional provision in the Addenda of the amended Act even if the provision on the requirements for trademark registration is amended, the previous provision should be applied to the trademark registered by application prior to the enforcement of the amended provision in order to maintain stability in the trademark order formed on the basis of the previous provision. Moreover, as seen earlier with regard to Article 7(1)4, there is no special circumstance to apply subparagraph 4 of the amended provision to the trademark registered by application prior to the enforcement of the amended provision to the extent that the content and scope of the provision are more specific and clearly limited compared to the previous provision.

Therefore, Article 7 (1) 4 of the former Trademark Act, which is the previous provision, shall be deemed to apply to the trial, review, and lawsuit on the registered trademark/service mark of this case, filed on December 10, 199, prior to the enforcement of the amended Trademark Act. The judgment below to the same effect is justifiable, and contrary to the allegations in the grounds of appeal, there are no errors in the misapprehension of legal principles as to the scope of application under Article 7 (1) 4 of the amended Trademark Act.

Supreme Court Decision 2005Hu70 Decided July 13, 2006 cited in the ground of appeal by the Plaintiff is inappropriate to be invoked in the instant case, unlike the instant case. In addition, Supreme Court Decision 201Hu1722 Decided June 28, 2012 is also related to the trademark applied after the enforcement date of the amended Trademark Act, and it is not appropriate to be invoked in the instant case, since it differs from the instant case.

3. Regarding ground of appeal No. 2

The term "trademarks which are contrary to the public order or good customs" in Article 7 (1) 4 of the former Trademark Act refers to cases where the composition of a trademark itself or where the trademark is used on the designated goods, the meaning or contents which the general consumers give are contrary to the public order and good customs, which is the normal moral sense of the general public, or where the act of using a trademark which imitates another's trademark without permission, as if it is used for registration in order to take advantage of the reputation of the trademark, service mark, trade name, etc. of a famous person's trademark or service mark or trade name, etc., generally violates good customs such as fair goods distribution order or international trust and morality (see Supreme Court Decision 2004Hu1267, Feb. 24, 2006, etc.).

On the other hand, Article 7 (1) 6 of the former Trademark Act provides that "a trademark containing the name, title or trade name, portrait, signature, seal, pen name or pen name of a well-known person or its abbreviation" cannot be registered without the consent of the person. The purpose of legislation is to protect the name, portrait, etc. of a well-known person.

As such, Article 7(1)4 and 6 of the former Trademark Act differs from the benefits and legal interests and requirements to be protected, and the application order of Article 7(1)4 of the former Trademark Act does not have any special provision as to the order of application under Article 7(1)4 of the former Trademark Act, even if a trademark is applied for or registered without permission by imitateing a well-known person’s name, the meaning or content that the trademark itself or the trademark gives to ordinary consumers when used on designated goods is contrary to the public order or good customs of society, or is contrary to the good customs of society, such as fair distribution order of goods or international trust and morality, and recognition of its registration is contrary to the order of the Trademark Act, and it is not acceptable to recognize its registration due to lack of social validity in the process of its application or registration, and if the trademark satisfies the requirements of Article 7(1)4 of the former Trademark Act as well as Article 7(1)6 of the same Act.

Therefore, there is no error in the misapprehension of legal principles as alleged in the grounds of appeal in the judgment below that held to the same purport. Where the name of a well-known person is registered without permission under the premise that Article 7(1)4 of the former Trademark Act is applied only to limited and supplementary matters to the extent that other grounds for registration are not applied to the extent that the grounds for registration under the same provision are not applied, the argument in the grounds of appeal that Article 7(1)6 of the former Trademark Act, which is a special provision, is not applicable, is not acceptable.

4. Conclusion

Therefore, the appeal is dismissed, and the costs of appeal are assessed against the losing party. It is so decided as per Disposition by the assent of all participating Justices on the bench.

Justices Ko Young-han (Presiding Justice)