205Heo961. Nullification of registration (Trademarks)

1. National Bank of Korea;

Seoul

Representative Director;

Manager;

2. Korea Exchange Bank;

Seoul

Representative Director;

Manager;

3. Han Bank;

Seoul

Representative Director;

4. Jeju Bank;

Jeju

Representative Director;

5. Daegu Bank;

Daegu

Representative Director;

Manager;

6. The Busan Bank of Korea;

Busan

Representative Director;

7. Jeonbuk Bank;

Jeonju City

Representative Director;

New Bank Co., Ltd. (former Trade Name: Cho Jae-Hy Bank)

Seoul

Representative Director;

[Defendant-Appellee] Plaintiff 1 and 1 others (Law Firm Mai, Attorney Choi Han-won, Counsel for defendant-appellee)

Modrified, Kim Ho

Law Firm Barun, Attorneys Lee Young-young, et al.

tin, scopic species

Korea Financial Branch Co., Ltd.

Seoul

Representative Director;

Attorney Cho Young-hoon, Counsel for the defendant-appellant

Patent Firm Dan Patent Attorney Lee Dong-soo et al.

Patent Attorney Lee Jae-soo

Law Firm Dr. Law Firm Dao, Attorneys Hah upper, Lee Jin-hoon

May 23, 2007

July 11, 2007

1. Among the decision rendered by the Intellectual Property Tribunal on the case No. 891 on October 31, 2005, the part on the credit business, lease financial business, guarantee business, bill exchange business, travel check issuance business, electronic financing substitution business, factoring service, rare material deposit business, insurance and finance business; financial assessment business; financial assessment business; tax agent business; savings bank business; savings bank business; installment sales convergence business; lottery ticket issuance business; real estate rental business; claims purchase business; and corporate financial affairs business among the designated service businesses of service marks No. 196318.

2. The plaintiffs' remaining claims are dismissed.

3. The costs of lawsuit shall be borne by each person.

The decision made by the Intellectual Property Tribunal on October 31, 2005 on the case No. 2005Da891 shall be revoked.

1. Basic facts

(a) Details of the trial decision;

The plaintiffs asserted that the registration should be invalidated on the ground that the registered service mark of this case constitutes a new concept of "bank," and that there is no distinctive character in the designated service business of "bank" under Article 6 (1) 3, 5, and 7 of the Trademark Act, and that the registered service mark of this case has no distinctive character, and that it falls under either Article 6 (1) 3, 5, and 7 of the Trademark Act, and that the expression that the public should freely use is exclusive, thereby forcing consumers or competitors to exercise more attention, and that it may cause confusion as to the quality of service by transmitting information related to the relationship between the service provider and the consumer, and that the service mark falls under Article 7 (1) 4 and 11 of the Trademark Act, and thus, the Patent Tribunal rejected the plaintiffs' claim for adjudication on the invalidation of registration on the ground that the registered service mark of this case constitutes a new concept of "bank," which is one of several banks when comprehensively observe the registered service mark of this case, and thus, it does not fall under the order of this case.

B. Composition of the registered service mark (1) of this case: The filing date of the Bank (2) / the registration date / the registration number: The designated service business on May 17, 2002 / December 17, 2003 / The designated service business on January 27, 2004 / The international finance business, international finance business, credit service business, loan service, loan, personal loan, broom card issuance business, lease and guarantee business, credit card issuance business, credit card brokerage business, credit card brokerage business, trust business, bank business, savings bank business, electronic financing transfer business, securities brokerage business, installment financing business, installment financing business, money exchange business, intermediary financing business, lottery financing business, trust business, lottery financing business, financial investment evaluation business, tax agent business, financial analysis, financial counseling business, financial counsel business, financial information business, loan financing business, loan financing business, mortgage financing agency business, loan financing business, loan financing business, loan financing business, mortgage financing business, loan financing business, loan financing business, loan financing business, loan financing business, securities transaction business, insurance, loan financing business, trust business, trust business, trust business, trust business, trust business

[Ground for Recognition: Facts without dispute]

2. Determination on this safety defense

A. Whether the plaintiffs are interested parties

The defendant asserts that the plaintiffs are not interested parties entitled to file a petition for the invalidation trial of the registration of this case, since there is no intention to use the registered service mark of this case, the interested parties entitled to file a petition for the invalidation trial of the registration of this case may oppose their rights because the registered service mark which is the subject of the petition for the invalidation trial is in force, or the registered service mark provides the same kind of service as the registered service mark designated by them, and thus there is a direct interest in the extinction of the registered service mark (refer to Supreme Court Decisions 9Hu1331 delivered on June 29, 201, 2001, 201Hu584 delivered on August 21, 201, etc.). The plaintiffs' assertion that "the above registered service mark of this case is not likely to be used in our bank's own trade name or service mark as the advertising mark of this case," and the purport of the whole arguments as to "the above registered service mark is not likely to be used in our trade name or service mark as the advertising mark of this case."

B. Whether there is no interest in the lawsuit

The Defendant asserts to the effect that the registered service mark of this case is not registered as his own service mark on the ground that the defendant can immediately re-register the registered service mark on the ground that the registered service mark of this case became well-known and thus, even if the judgment of registration invalidation becomes final and conclusive, the plaintiffs cannot register it as their own service mark on the ground that it acquired its distinctiveness by use, and therefore, the plaintiffs cannot deny the interests of adjudication or lawsuit solely for the reasons such as the defendant's assertion

3. Whether the registered service mark of this case is distinctive

(a) Whether the composition itself has distinctiveness;

According to Article 6 (1) 7 of the Trademark Act, a service mark whose business it is impossible for consumers to distinguish which service is indicated shall not be registered as a service mark. This is to say that even if a service mark does not fall under subparagraphs 1 through 6 of the same paragraph, it is impossible to distinguish one’s own service mark from another’s service mark, that is, in itself, it is not appropriate to distinguish one’s own service mark from another’s service mark, or to use it for all persons, and thus it is not appropriate to distinguish one’s own service mark from the other’s service mark. Whether a service mark is a service mark with special distinction or not shall be determined objectively by taking into account the concept that the service mark carries, the relation with the designated service business, and the circumstances of the trade society (see, e.g., Supreme Court Decisions 2004Hu912, May 25, 2006; 96Hu979, Feb. 28, 1997).

In this case, the registered service mark of this case is widely used as a master name, i.e., a simple and non-specific figure, ii) referring to multiple types of services, such as “us’s mother”, “us,” or “b)” in daily life, and is widely used by all people in a comprehensive sense that the ownership or affiliation of the subject, such as “Korean company,” “school,” and “Korea’s net business,” and its employees or customers have no choice but to indicate that it constitutes a “bank” as the most general expression that can be widely used in all goods and services, and thus, it cannot be seen as a combination or service mark of the designated service business, which is a combination or service business, and thus, it cannot be seen as a combination or service mark of the designated service business, which is a combination or service business, and thus, it is distinguishable from the designated service mark of Korea’s new service business. As such, it cannot be seen as a combination or service mark of the designated service business.

In regard to this, the defendant asserts that the registered service mark of this case has distinguishability in light of the circumstances where a number of service marks containing the expression "us" have already been registered, as well as the special distinction with the meaning of "the trademark is clearly more excellent than the ordinary one as the registration requirements of the trademark or service mark". However, the special distinction used as the registration requirements of the trademark or service mark is another expression of distinguishability, and it is not used in addition to the registration requirements of the service mark. The existence of the registration eligibility of the service mark should be determined individually in relation to the designated service business, and the registration examples of other service marks cannot be the grounds for the registration of the specific service mark (see Supreme Court Decision 2005Hu339, May 12, 2006, etc.). Thus, the above assertion is without merit.

B. Whether a trademark is distinguishable from its use (1) Article 6(1)7 of the Trademark Act means that even a service mark that does not fall under Article 6(1)1 through 6 of the same Act cannot be registered. Thus, even if a mark appears to have no special distinction from its own concept or relationship with the designated service business objectively when examining the situation of its use, it is deemed that the applicant’s use of the mark shows that consumers or traders indicate services related to whose business it is, barring any special circumstance, the mark does not constitute a service mark with no special distinction under Article 6(1)7 of the Trademark Act, and as a result, it does not interfere with obtaining registration of the service mark, and it does not necessarily mean that Article 6(2)7 of the same Act does not include a similar service mark, and thus, it cannot be seen as being applied to the service mark (see, e.g., Supreme Court Decision 205Hu397, May 12, 2006).

(2) In light of the overall purport of the arguments in this case, since the above light bank was incorporated into Korea Financial Group on January 4, 199 as its subsidiary on April 2, 2001 and it was launched into Korea Financial Group on May 20, 200, the name of the subsidiary was changed to Korea Bank on May 20, 200, the above bank was not "Korea Bank", "Oori Bk", "Korea Bank" to 60, 142 through 203, 142 through 203, 142 to 203, and it was merely a designated service business (including each number): the above designated service mark was used in the designated service business (i.e., financial service business among the designated service business; (ii) the financial agent; (iii) the financial agent; (iii) the bank’s savings and service business; (iv) the bank’s data were not submitted to the designated service business; and (v) the bank’s information service business related to the bank; (v) the bank’s account issuing and exchange; (v) the financial service business.

20. The defendant's 70.m. Financial Services Association's 16.m. 7m. and 20.m. 7m. 7m. - The defendant's 6m. 2m. 7m. 1m. 7m. 7m. 6m. 7m. 7m. 7m. 7m. 7m. 7m. 7m. 7m. 8m. 8m. 1m. 2007m. 1m. 7m. 1m. 2007m. 1m. 7m. 8m. 1m. 2007m. 1m. 6m. 3m. 1m. 6m. 2m. 3m. 7m. 1007m. 1m. 6m. 3m. 3m. 8m. 2008m. 3m. 3m.

(2) As regards the designated service business other than the financial assessment business of financial and real estate, tax agent business, financial assessment business, savings bank business, installment sales business, lottery ticket issuance business, real estate rental business, and corporate financial settlement business, the general consumers and traders acquired distinctiveness as it has reached the Defendant’s service business. (3) As to this, the Plaintiffs’ public mark that is inappropriate to be exclusive to a person for public interest, such as the instant registered service mark, cannot obtain full distinctiveness in its nature, and thus, it is unfair to deprive general consumers or customers of its distinctiveness. (2) As such, since the distinctiveness by use cannot be acquired only by the Defendant’s bank that actually uses the instant registered service mark, it is unreasonable to recognize the use of the registered service mark as a non-exclusive licensee under Article 6(1)7 of the Trademark Act as being 1 of the Trademark Act, the Defendant’s assertion that the registered service mark cannot be deemed as non-exclusive licensee under Article 6(1)7 of the Trademark Act as well as the above non-exclusive licensee under Article 6(1)7 of the Trademark Act.

C. Sub-decision

Therefore, with respect to the registered service mark of this case among its designated services, credit business, lease financing business, guarantee business, bill exchange business, travel check issuance business, electronic funds substitute business, factoring service business, insurance, valuable goods deposit business, tax agent business, tax consulting business, financial assessment business, savings bank business, installment sales business, lottery ticket issuance business, real estate leasing business, claim purchase business, corporate financial affairs business, and other service marks with no distinctive character as provided by Article 6 (1) 7 of the Trademark Act without considering the other grounds for registration invalidation as claimed by the plaintiffs, the registered service mark of this case should be invalidated by Article 71 (1) 1 of the Trademark Act.

4. Whether there exists any ground for invalidation of registration under Article 7 (1) of the Trademark Act on the part acquired distinctiveness.

A. Whether it violates subparagraph 4

The plaintiffs asserts that the Defendant’s exclusive use of the registered service mark of this case, which is an expression used by the general public, forced ordinary consumers to take unfair time and expenses to distinguish between them and competitors, constitutes a violation of good customs such as fair distribution order or international trust and morality, and thus constitutes Article 7(1)4 of the Trademark Act, and thus, the registered service mark of this case should be invalidated.

The term "service mark" under Article 7 (1) 4 of the Trademark Act, which is likely to disturb the public order or good customs, refers to a case where the composition of the service mark itself or the service mark is used for the designated service business, and the meaning or content that the service mark gives to ordinary consumers when it is used for the designated service business is in violation of the public order of society and public order, good customs and good customs, which are ordinary people of society, or where the act of registering and using the service mark which imitates another's mark without permission, as if it is intentionally used for the registered service mark in order to take advantage of the reputation of the service mark or trade name, goes against the good customs, such as fair distribution order or international trust and morality (see Supreme Court Decision 2004Hu1267, Feb. 24, 2006). Thus, the above argument does not fall under the above grounds asserted by the plaintiffs.

B. Whether it violates subparagraph 11

In addition, the plaintiffs also asserted that the registered service mark of this case has weak function of indicating the source of service, and thus, it may cause mistake and confusion as to source, but it is highly likely to cause mistake and confusion as to the quality of service by distorted delivery of information related to the relationship between the service provider and consumers. Thus, the registered service mark of this case should be invalidated since it constitutes a service mark only for consumers as provided by Article 7 (1) 11 of the Trademark Act.

The term "service mark", which is likely to mislead consumers as to the quality of "service business" under Article 7 (1) 11 of the Trademark Act, means a service mark whose composition itself has characteristics different from its original nature of the designated service business (see Supreme Court Decision 9Hu628 delivered on October 13, 200, etc.) and "service mark which is likely to mislead consumers" as the grounds for nullification of the registration, is intended to prevent general consumers from misunderstanding and confusion as to the origin of service business which is already recognized as a specific person's service mark, and to protect consumers' trust thereof. Thus, in order to constitute a service mark whose registered service mark is likely to mislead consumers, it is more widely known that the registered service mark is used as a service mark than the registered service mark and it is 00 after being used as a service mark or 00 after being used as a service mark (see Supreme Court Decision 9Hu628 delivered on October 13, 200. 202).

C. Sub-decision

Therefore, the registration of the instant registered service mark is not applicable to the grounds for invalidation under Article 7(1)4 and 11 of the Trademark Act, since the designated service business of the instant registered service mark does not constitute grounds for invalidation under Article 7(1)4 of the Trademark Act.

5. Conclusion

Therefore, the decision of this case is legitimate only with respect to the designated service business other than the designated service business specified in Paragraph (1) of the Disposition that should be invalidated among the designated service business of the registered service mark of this case. Thus, the plaintiffs' claim of this case seeking its revocation is justified only for the part concerning the designated service business specified in Paragraph (1) of the Disposition, and the remaining claims are dismissed as they are without merit. It is so decided as per Disposition.

Judges Lee Ki-taik

Judges Oh Jin-jin

Judges Kim Tae-tae