2019Hu11787. Nullification of registration (Trademark)

A Stock Company

Attorney Seo-young et al., Counsel for the defendant-appellant

B A.

Law Firm Yang Hun-tae, Counsel for defendant-appellant

Attorney Choi Sung-sung

Patent Firm Aju

Patent Attorney Lee Chang-hoon

Patent Court Decision 2019Heo2837 Decided October 2, 2019

May 14, 2020

The appeal shall be dismissed.

The costs of appeal shall be borne by the plaintiff.

The grounds for appeal are determined.

1. Whether the registered trademark of this case is non-distinctive (Ground of appeal No. 1) Article 6(1) of the former Trademark Act (wholly amended by Act No. 14033, Feb. 29, 2016; hereinafter the same) provides that “a trademark, other than subparagraphs 7 through 6, where it is not possible to obtain registration of a trademark, in which case consumers’ identification of goods related to one’s business is unclear” (see, e.g., Article 33(1)7 of the current Trademark Act only provides that the same purport is prescribed in Article 33(1)7 of the same Act). This means that even if a trademark does not fall under subparagraphs 1 through 6 of the same Article, it is difficult to obtain registration for a trademark that does not distinguish the source between one’s own goods and another’s goods, and that it is inappropriate to determine whether it constitutes a trademark without distinguishing identity after being sentenced to 201, supra, 2017.

The court below held that the part of this case's registered trademark of this case is a mark with raw materials related to the designated goods, and thus, it has no distinctiveness, while the figure of this case's registered trademark of this case is recognized as distinctive. Thus, the registered trademark of this case falls under Article 6 (1) 7 of the former Trademark Act.

In light of the relationship with the designated goods and the circumstances of the transaction society, it is difficult to view that the design of packing the goods in the Class A products functions as the distinguishing mark of the source, and there is no ground to deem it inappropriate to read the above design to a specific person for public interest. Examining the reasoning of the original judgment in light of the aforementioned legal principles and records, the lower court did not err in its judgment by misapprehending the legal doctrine on Article 6 (1) 7 of the former Trademark Act, as alleged in the grounds of appeal, or by exceeding the bounds of free conviction due to logical and empirical rules, contrary to logical and empirical rules.

2. Whether a prior-use trademark is a well-known trademark (ground of appeal No. 3) under Article 7 (1) 10 of the former Trademark Act (see, e.g., Supreme Court Decisions 97Hu3975, 3982, Feb. 26, 199; 2013Hu1207, Oct. 15, 2015) should be determined on the basis of whether the prior-use trademark is so-called well-known trademark under Article 7 (1) 10 of the former Trademark Act (see, e.g., current Trademark Act only to the same purport as the expression under Article 34 (1) 11 of the same Act), based on whether the prior-use trademark was widely known to the general public as well as on the basis of the filing date of the instant registered trademark, and whether the so-called trademark under Article 7 (1) 1 of the former Trademark Act was not widely known and high-quality.

Examining the reasoning of the original judgment in light of the legal principles and records as seen in B, the lower court did not err in its judgment by misapprehending the legal doctrine on “other person’s goods or business” under Article 7(1)10 of the former Trademark Act, as alleged in the grounds of appeal, or by failing to exhaust all necessary deliberations, contrary to the rules of logic and experience.

3. Whether the trademark of this case is a trademark likely to mislead consumers (ground of appeal Nos. 2 and 4)

The lower court determined that there was no ground for invalidation of the registration of the instant registered trademark under Article 7(1)11 of the former Trademark Act on the ground that the instant registered trademark is not identical or similar to the pre-use trademark. Examining the reasoning of the lower judgment in light of the relevant legal doctrine and records, the lower court did not err by misapprehending the legal doctrine on the similarity of trademarks, as otherwise alleged in the grounds of appeal, or by failing to exhaust all necessary deliberations, by exceeding the bounds of the principle of free evaluation of evidence in violation of the rules of logic and experience.

4. Conclusion

The appeal by the plaintiff is dismissed as it is without merit, 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.

Justices Lee Dong-won

Justices Kim Jae-hyung

Justices Min You-sook

Justices Noh Tae-ok