[2] Time to determine whether a trademark applied for registration falls under Article 7 (1) 7 of the Trademark Act (=the time of applying for registration of a trademark applied for registration)

[3] The case holding that Article 7 (1) 7 of the Trademark Act applies as long as the trademark applied at the time of application is similar in relation to the prior-registered service mark and the designated goods and the designated service business are similar in relation to the prior-registered service mark, even though the plaintiff filed an application for prior-registered service mark and the prior-registered service mark was not used at the time of application for prior-registered service mark, since the decision of cancellation of registration of the service mark for the defendant's prior-registered service mark became final and conclusive after the application for prior-registered service mark was filed

[2] According to Article 7(3) of the Trademark Act, the time of determining whether a trademark applied for is identical or similar to another person’s registered trademark based on an earlier application and used on goods identical or similar to the designated goods of the registered trademark, that is, the time of determining whether the trademark falls under Article 7(1)7 of the Trademark Act, is the time of application for registration

[3] The case holding that Article 7 (1) 7 of the Trademark Act applies as long as the trademark applied for registration is similar in relation to the prior-registered service mark and the designated goods and designated services are similar in relation to the prior-registered service mark, even if the plaintiff applied for the prior-registered service mark and the prior-registered service mark was not used at the time of application for the prior-registered service mark, since the decision of cancellation of registration of the service mark for the defendant's prior-registered service mark became final and conclusive after the plaintiff applied for the prior-registered service mark

2. Litigation costs shall be borne by the plaintiff.

A. The applied trademark of this case

(1) Date/application number: October 14, 2003/ 2003-45074

(2) Composition:

(c) Designated goods: Original meat, fluor fluor fluor fluor fluor fluor fluor fluor fluor fluor fluor (Classification of goods, No. 29);

(4) Applicant: The plaintiff

(b) Prior registered service marks;

(1) Date of application/registration date/registration date of cancellation of registration (date of confirmation of cancellation of registration)/registration number: June 28, 1995/ November 21, 1997 ( December 6, 2003)/387499

(2) Composition:

(c) Designated service business: A sanatorium business, local seed and livestock product sales agency business, general local food exhibition business, native health assistance and food sales agency business, local health assistance and food sales brokerage business, sales agency business, local food and food introduction business, local food food introduction business, tourist restaurant business, agricultural technical guidance business [Article 6(2) [Attachment 2] of the Enforcement Rule of the former Trademark Act (amended by the Ministry of Commerce, Industry and Energy No. 83 of Feb. 23, 1998)]

(4) Service mark right holder: Kim Dok was registered with the service mark, and on August 9, 2001, transferred to Mansan Co., Ltd.

C. Reasons for the decision of refusal and the trial decision of this case

(1) On October 14, 2003, the Plaintiff filed an application for the registration of the applied trademark of this case. On June 16, 2005, the Korean Intellectual Property Office rendered a decision to refuse the registration on the ground that the mark is similar to the mark, and the designated service business of the applied trademark of this case constitutes Article 7 (1) 7 of the Trademark Act, as the applied trademark of this case is similar to the designated service business of the applied trademark of this case, and filed a petition for a trial seeking the revocation of the said decision. The Korean Intellectual Property Tribunal deliberated on the application as of 2005 Won4431, and rendered a decision to dismiss the Plaintiff’s claim on September 30, 2005, on the ground that it falls under Article 7 (1) 7 of the Trademark Act.

(2) Summary of the trial decision of this case

(A) The applied trademark of this case is able to be separated and observed into “insulic” and “insulic.” Since “insulic” falls under the designated goods of the applied trademark of this case and without distinctiveness, the essential part of the applied trademark of this case is “insulic” and “insulic.” The registered service mark of this case is able to separate and observe “insulic” from “insulic” and “insulic” and “insulic” can be recognized as “insult” although the first letter is lusulized. “A” among “insulic acid” is a common word used as the word “insulic acid,” and “insulic acid” has no distinctive character as it is called and conceptualized as “insulic acid.” Thus, the applied trademark of this case and the registered service mark of this case are similar to that of “insulic acid.”

(B) The designated goods of the trademark applied in the instant case, “fluoring eggs into feed,” etc. are species of agricultural and livestock products. The “fluoring agricultural and livestock products sales agent business” in the pre-registered service business handles agricultural and livestock products, such as the above original meat, and the agricultural and livestock products are collected, sold, or sold by the distributor rather than being directly sold by the producer. As such, the designated goods of the trademark applied in the instant case are similar in close relation to the designated service business of the pre-registered service mark in terms of trade norms.

(C) Therefore, the trademark applied in this case constitutes a trademark under Article 7(1)7 of the Trademark Act because the trademark and the designated goods are similar to the mark and the designated service business of the prior-registered service mark, and thus, the original decision rejecting trademark registration of the applied trademark in this case is justifiable.

[Certificate] Evidence Nos. 1, 2, and 3, and No. 1, 2

2. Summary of the grounds for revoking the trial decision asserted by the Plaintiff

A. The pre-registered service mark is not used only at the time of the application for the trademark of this case. The decision of revocation of the registration was finalized on December 6, 2003, which was after the date of the application for the trademark of this case, and thereafter the plaintiff applied for and registered the pre-registered service mark almost identical to the pre-registered service mark, and actually, the pre-registered service mark is the plaintiff. Thus, since the applicant trademark of this case and the pre-registered service mark of this case were at all not likely to cause confusion and confusion about the actual source in the trading society from the time of the application for the trademark of this case, the trademark of this case and the pre-registered service mark of this case were at all at all at the time of the transaction society, and even if the trademark of this case is decided to grant the trademark registration of this case, they do not go against the legislative intent of Article 7 (1) 7 of the Trademark Act

B. In addition, the designated goods of the applied trademark of this case are not the ordinary half distance, such as cattle, pigs, pigs, etc. that the family owners ordinarily purchase at the meat store, but the special food that is handled only at the exclusive restaurant specializing in the fluorian, and the specialized store. In particular, from among the designated goods, the original diesel, original X-ray is a special processed food that is made through a separate processing process using the original fluor as the raw material and is not a general agricultural product or health support food, and therefore, the manufacturer and seller, place of sales, service provision, and consumer floor are different. Thus, the designated service business of the designated goods of the applied trademark of this case is not similar because the designated goods of the applied trademark of this case are not closely related to each other.

C. Therefore, the pending trademark does not fall under Article 7(1)7 of the Trademark Act, and the trial decision of this case must be revoked.

3. Determination

A. Whether the mark is similar

The trademark of this case is a combination of the trademark "Masan" and "Maul original" and it cannot be deemed as an indivisible combination, and thus, it can be separated and observed as "Masan" and "Maul original". "Maul original" are parts of the designated goods of the applied trademark of this case, and there is no distinctive character as it represents the raw materials of designated goods. Thus, the important part of the applied trademark of this case is "Masan". The registered service mark of this case is a combination of "Masan" and "Maul" and it cannot be deemed as an indivisible combination. The first word "Masan" can be deemed as "Masan" and "Masan" can be deemed as "the person," and "Masan" refers to a relative organization, a person professionally able to understand the date, etc., and thus, "Masan" is an important part of the registered service mark, and thus, it is an important part of the registered service mark, which is identical or similar to the service mark of this case, and thus, it is likely to mislead the origin of the trademark of this case and its origin.

(b) Whether the designated goods and services are similar;

Of the designated goods of the applied trademark of this case, the term "raw milk mixed with feed" constitutes livestock products that are used for food, and most of the cases where a producer sells it to a sales agent or a distributor rather than directly selling it to consumers. The prior meaning of "top" refers to "a seed from the land of this case", and if the designated goods are indigenous, it is naturally classified as indigenous livestock products. Even if the stop is not a stop paper, it can be treated as indigenous livestock products because the stop paper is mixed with historical feed, and even if the stop paper paper is not a stop paper paper, it is mainly treated as indigenous livestock products. Accordingly, the designated goods of the applied trademark of this case are closely similar to the designated goods of the prior registered service mark.

The Plaintiff asserted that “Yegegegeles” and “Yeul EXS” are not closely related to the designated service business of the pre-registered service mark, because they are not goods handled by the seller of agricultural and livestock products or the seller of health assist food, but they are not similar. However, even if there are many designated goods, one application is bound to be treated as a single portion, and thus, if the trademark registration requirements for some designated goods are not satisfied due to their withdrawal from the designated goods through the correction procedure, an application for the registration of the entire designated goods shall be made (see Supreme Court Decision 93Hu1360 delivered on December 21, 1993). As seen above, insofar as the Plaintiff determined that one of the designated goods of the instant trademark applied for registration of this case was similar to the designated service business of the pre-registered service mark, the Plaintiff’s assertion that the trademark registration of this case is no longer affected even if the above service business is not designated.

C. Sub-committee

Therefore, the applied trademark of this case is similar to the prior registered service mark and its mark, and the designated goods and the designated service business are similar.

D. Judgment on the plaintiff's other arguments

The Plaintiff argues that the applied trademark of this case and the prior registered service mark are similar to the mark, designated goods, and designated services, but it is not likely to mislead or confuse the source of goods and services for the same reason, and therefore, the applied trademark of this case does not fall under Article 7(1)7 of the Trademark Act.

According to Article 7(3) of the Trademark Act, the time to determine whether a trademark applied for is identical or similar to another person’s registered trademark based on an earlier application and used on goods identical or similar to the designated goods of the earlier application, that is, the time to determine whether the trademark falls under Article 7(1)7 of the Trademark Act, and Article 73(7) of the Trademark Act refers to the time of application for registration of the earlier application, and trademark rights are to be terminated in the future from the time when the decision to cancel registration becomes final and conclusive. Thus, the similarity of marks of the pending trademark, prior registered service marks, designated goods, and designated services should also be determined as at the time of application for registration of the earlier applied trademark (see Articles 7(3), 71(3) and 71(3) of the Trademark Act, even in cases where the decision to invalidate the registration of the prior registered trademark becomes final and conclusive after the application for registration of the trademark was filed, and such trademark has never existed at the time of application for registration of the earlier registered trademark, so long as the earlier registered trademark does not fall under Article 7(1)7(7)7)7(7)7)7.

Therefore, the decision to revoke the registration of a prior registered service mark after the application for the trademark of this case became final and conclusive, and even if the Plaintiff applied for and registered the service mark almost the same as the prior registered service mark, the trademark of this case, as seen above, is similar in relation to the prior registered service mark, and the designated goods and designated service business are similar in relation to the prior registered service mark, and thus constitutes Article 7 (1) 7 of the Trademark Act. Further, even if the prior registered service mark was not used at the time of the application for the trademark of this case, as long as Article 7 (1) 7 of the Trademark Act does not actually require the actual use of the prior registered service mark, the above conclusion is not affected, and the Plaintiff’s above assertion cannot be accepted.

E. Therefore, since the trademark applied in this case constitutes Article 7(1)7 of the Trademark Act, the decision of this case which maintained the original decision rejecting trademark registration of the applied trademark in this case is lawful.

4. Conclusion

Therefore, the plaintiff's claim seeking the revocation of the trial decision of this case is dismissed as it is without merit, and it is so decided as per Disposition.

Judges Choi Sung-sung (Presiding Judge)