[1] The meaning of interested parties who can request a trial on cancellation of trademark registration

[2] The burden of proving the non-use of a trademark where the use of the trademark is presumed by the renewal of trademark duration.

[1] In a request for cancellation of a trademark registration, an interested person means a person who has a direct and realistic interest in the extinguishment of the trademark because the existence of the trademark registration to be cancelled is against the trademark right holder and is unable to use the trademark identical or similar to the registered trademark and thus is likely to be damaged.

[2] If the renewal of the duration of a trademark right has been made, it shall be presumed that the use of the trademark within three years prior to the time of application for renewal of the trademark right, and if the trademark duration renewal has been made by the respondent upon application for renewal of the duration of the trademark right after the claimant for cancellation of trademark registration filed under Article 73 (1) 3 of the Trademark Act, it shall be presumed that the use of the trademark for three years prior to the date of application for renewal of the duration of the trademark right by the respondent for cancellation of the trademark right. Therefore, in order to prove the non-use of the trademark, the claimant shall submit a counter-written statement to the respondent that the respondent had not used the trademark for the presumed period prior to the date of application for cancellation of trademark registration.

[1] Article 73(1)3 and (6) of the Trademark Act / [2] Article 42(2)2 and Article 43(1)3 of the Trademark Act, Article 73(1)3 of the Trademark Act

[1] [2] Supreme Court Decision 95Hu897 delivered on November 28, 1995 (Gong1996Sang, 232) / [1] Supreme Court Decision 88Hu1519 delivered on October 10, 1989 (Gong1989, 1676) Supreme Court Decision 95Hu155 delivered on April 26, 1996 (Gong196Sang, 1731) / [2] Supreme Court Decision 92Hu1578 delivered on April 9, 1993 (Gong193Sang, 1403), Supreme Court Decision 93Hu459 delivered on October 22, 1993 (Gong193Ha, 3185)

Co., Ltd.

Appellants

Korean Intellectual Property Trial Office Decision 94Na112 dated October 31, 1996

The decision of the court below is reversed, and the case is remanded to the Korean Intellectual Property Office.

We examine the grounds of appeal by the respondent.

1. On the second ground for appeal

In a request for cancellation of a trademark registration, an interested person means a person who has a direct and real interest in the extinguishment of a trademark, inasmuch as the existence of the trademark registration to be cancelled is likely to be damaged by being unable to use the trademark identical with or similar to the registered trademark due to the invalidation of the trademark right (see Supreme Court Decisions 95Hu897, Nov. 28, 1995; 88Hu1519, Oct. 10, 1989, etc.).

According to Gap's evidence Nos. 2 and 3, Gap evidence Nos. 4, and Gap evidence No. 4-1 (Copy of each product car) of the claimant's submission, since the claimant was established for the purpose of manufacturing and selling clothing, etc. for children on June 16, 1983, he/she manufactured and sold garrys, bags, caps, caps, probs, probs, probs, probs, probs, etc., which are products incidental thereto. The designated goods of the registered trademark of this case are common and consumer or trader's common in cases where the claimant jointly produces and sells the goods of the same kind. Thus, as long as the claimant is engaged in the manufacturing industry of the same product and uses a trademark similar to the registered trademark, he/she has a direct and real interest in the extinction of the registered trademark of this case.

Therefore, this part of the judgment of the court below to the same purport is justified, and the arguments are without merit.

2. On the first ground for appeal

According to the reasoning of the decision of the court below, the court below determined that the registration of the registered trademark of this case should be revoked on the ground that the applicant for a trial had not used the registered trademark of this case for three or more years prior to the date of the request for revocation trial, on the ground that the statement in the evidence Nos. 1 through 15 was insufficient to acknowledge that the applicant for a trial had used the registered trademark of this case for three or more years prior to the date of the request for revocation trial

Article 42 (2) 2 of the former Trademark Act (amended by Act No. 4597 of Dec. 10, 1993) which applies to this case concerning the renewal of the duration of a trademark right provides that the trademark shall be refused to renew the registration where the trademark is not used within three years from the time of renewal of the duration of the trademark right, and Article 43 (1) 3 of the same Act provides that a document stating the fact that the trademark is used within the three years prior to the time of renewal of the duration of the trademark right shall be presumed to have been registered if the renewal of the duration of the trademark right is made (see, e.g., Supreme Court Decisions 95Hu897, Nov. 28, 1995; 93Hu4599, Oct. 22, 1993).

However, according to the records of this case, after the claimant filed a request for cancellation of trademark registration of March 12, 1993, it can be known that the trademark duration renewal had been filed as of May 28, 1994 by the respondent on July 16, 1993 after the claimant filed a request for cancellation of trademark registration of this case. Accordingly, in this case, the fact of using the trademark for the three years before July 16, 1993 when the respondent filed an application for cancellation of trademark registration of this case, shall be presumed to have been complied with. Thus, the claimant cannot cancel the trademark registration of this case unless the respondent submitted counter-written evidence against the respondent's failure to use the trademark of this case for a period from July 17, 1990 to March 12, 193, which is presumed to have been used before the date of the request for cancellation of trademark registration of this case.

On the other hand, upon examining the record, the claimant submitted Gap evidence Nos. 8 ( Current Status of Application for Trademark), Gap evidence Nos. 9-1 through 4, and Gap evidence Nos. 10 (Co., a copy of each decision) to prove the fact that the respondent did not use the trademark of this case for three years prior to the application for the cancellation of registration of the trademark, but there is no other evidence to destroy the above presumption.

Nevertheless, the court below determined that each evidence submitted by the respondent on the premise that the burden of proof of the use of the trademark of this case is still against the respondent, and thus revoked the trademark of this case by misunderstanding the legal principles as to the presumption of the use of the trademark following the renewal of the trademark duration, and thereby affected the result of the trial decision.

3. Therefore, without examining the remaining grounds of appeal, we reverse the judgment of the court below and the case is remanded to the Korean Intellectual Property Office for Appeal. It is so decided as per Disposition by the assent of all participating Justices on the bench.

Justices Shin Sung-sung (Presiding Justice)