[1] Whether the provision of sharing under the Civil Act can be applied to a case where a trademark right is jointly owned (affirmative)

[2] In a case where a co-owner of a trademark right loses in a trial as to the validity of the trademark right, whether the lawsuit for revocation of the trial decision is an essential co-litigants (negative)

[1] In a case where trademark rights are jointly owned, each co-owner cannot transfer his/her share or establish a pledge on his/her share without the consent of the other co-owners, and does not establish an exclusive license or a non-exclusive license on the trademark right, and has a nature similar to the combination oil within the scope of such restriction, but such restriction is merely derived from the unique characteristics of the trademark right, and it cannot be deemed that the trademark right co-owners form a partnership based on the common purpose or partnership relationship and own the trademark right without any express provision that the co-ownership of the trademark right is a joint ownership relationship under the Trademark Act. Thus, the joint ownership of the trademark can be applied to the extent that it does not go against other provisions of the Trademark Act or its inherent nature.

[2] Where a co-owner of a trademark right has lost in a trial as to the effect of the trademark right, the litigation for cancellation of the trial decision shall not be deemed to be an essential co-litigation to be instituted jointly by all the co-owners, and where, even one of the co-owners, a trial decision invalidating the trademark registration or restricting or obstructing the exercise of right is rendered, the revocation of the trial decision alone may be sought to prevent the extinguishment of the right,

[1] Article 54 (5) and (6) of the former Trademark Act (amended by Act No. 5355 of Aug. 22, 1997) / [2] Article 139 of the Patent Act, Article 77 of the Trademark Act

The administrator of the parent-child corporation of the reorganization company, the non-party taking over the lawsuit of the non-party, and one other (Patent Attorney Park Jae-hoon et al., Counsel for the plaintiff-appellant)

M&M Co., Ltd. (Patent Attorney Hwang Young-chul, Counsel for the plaintiff-appellant)

Patent Court Decision 2001Heo5237 delivered on March 14, 2002

The judgment below is reversed, and the case is remanded to the Patent Court.

1. The judgment of the court below

The court below rejected the plaintiffs' action of this case against the plaintiff, seeking the revocation of the decision of 201Da395 dated August 31, 2001 by the Intellectual Property Tribunal, "The defendant's mark is not within the scope of the right of the trademark of this case since the trademark of this case and the appearance, name, and concept of the trademark of this case are different from those of the trademark of this case, which is registered as the joint ownership of three persons of the plaintiffs, the non-party parent company, the non-party corporation (the head office: the company (the address omitted; hereinafter referred to as "non-party company").

In other words, Article 54(5) and (6) of the former Trademark Act (amended by Act No. 5355 of Aug. 22, 1997; hereinafter the same) provide that where trademark rights are jointly owned, each co-owner shall transfer his/her share or establish a pledge right to his/her share without the consent of the other co-owners, and no exclusive or non-exclusive license shall be established. Article 77 of the Trademark Act provides that when a co-owner requests a trial on his/her right to the joint ownership by applying mutatis mutandis Article 139 of the Patent Act, all the co-owners shall jointly file a request. Thus, the co-ownership relation of the trademark is equivalent to the joint ownership under Article 273 of the Civil Act. Thus, a lawsuit seeking cancellation of the trial decision which a co-owner loses against all the co-owners in a trial on the validity of the trademark right is essential co-litigation, and the purpose of the lawsuit should be jointly filed by all the co-owners, and the plaintiffs, other than the non-party 3 of the registered trademark of this case, are unlawful.

2. Judgment of the Supreme Court

However, this decision of the court below is not acceptable.

Where trademark rights are jointly owned, each co-owner may transfer his/her share or establish a pledge on his/her share without the consent of the other co-owners, and have the nature similar to the joint ownership within the scope of the joint ownership under certain restrictions, such as where the trademark rights cannot be established or non-exclusive license for the trademark rights, as stated in the judgment of the court below. However, such restrictions are merely derived from the characteristics of the intangible property rights, and it cannot be deemed that the trademark rights co-owners form a partnership based on the joint purpose or partnership relationship and own the trademark rights, and unless there is any express provision that the joint ownership of the trademark rights is deemed a joint ownership relationship under the Trademark Act, the provisions of the Civil Act can be applied to the joint ownership of the trademark rights to the extent that it does not go against other provisions of the Trademark Act or its nature.

On the other hand, Article 77 of the Trademark Act applies mutatis mutandis to the procedure for the revocation of a trial decision, which provides an essential joint trial to all the co-owners. However, even in the procedure for the revocation of a trial decision, there is no provision regarding the procedure for the procedure for the procedure for the revocation of a trial decision. However, even in the case where one of the co-owners independently files a lawsuit for revocation of a trial decision, it is necessary to make a single request among the co-owners. However, even in the case where one of the co-owners independently files a lawsuit for revocation of a trial decision, if he/she participates in the lawsuit, he/she is found to win the lawsuit, and the effect of the revocation decision is satisfied by the resumption of a trial procedure in relation to all the other co-owners in the Korean Intellectual Property Tribunal, and even if he/she loses the lawsuit, it does not affect the rights of the other co-owners already lost in the trial procedure. Accordingly, in any case, the request for the revocation of a trial decision would be made only if all the co-owners file a lawsuit for revocation of the trial, but also does not infringe upon the other co-owners' rights or their rights.

Therefore, in a case where a co-owner of a trademark right has lost in a trial as to the validity of the trademark right, the litigation for cancellation of the trial decision cannot be deemed to be an essential co-litigation to be instituted jointly by all the co-owners, and where a trial decision to invalidate the trademark registration or restrict or obstruct the exercise of right even one of the co-owners has been rendered, the court may independently seek revocation of the trial decision to prevent the extinguishment of the trademark right or to exclude the exercise of right. As seen above, even if the filing of a lawsuit for cancellation of a trial decision by one of the co-owners is recognized, it cannot be said that there is a situation against the other co-owners’

Thus, the plaintiffs who lost in the trial to confirm the scope of rights as to the registered trademark of this case filed by the defendant can file a lawsuit to revoke the trial decision of this case as an act of preservation in order to exclude the confirmation of the above trial decision that obstructs the exercise of rights to the registered trademark

Nevertheless, the court below rejected the lawsuit without examining whether the lawsuit of this case does not meet the requirements of lawsuit, and the remaining decision that concluded that the lawsuit of this case is unlawful is legitimate. The court below did not err in the misapprehension of legal principles as to the party standing, etc. in the case where trademark rights are jointly owned, and the ground of appeal pointing this out has merit.

3. Conclusion

Therefore, the judgment of the court below is reversed and the case is remanded to the court below for a new trial and determination. It is so decided as per Disposition by the assent of all participating Justices on the bench.

Justices Kim Young-ran (Presiding Justice)