2012Hu2968. Nullification of registration (Trademark)

A. H.C.

Defendant:

Patent Court Decision 2012Heo153 decided August 10, 2012

December 27, 2012

The appeal is dismissed.

The costs of appeal are assessed against the Defendant.

The grounds of appeal are examined (to the extent of supplement in case of supplemental appellate briefs not timely filed).

1. As to the ground of appeal No. 1, Article 6(1)7 of the Trademark Act, one of the cases where a trademark cannot be registered, “other than those as referred to in subparagraphs 1 through 6, Article 6(1) of the Trademark Act provides “A trademark which does not enable consumers to distinguish goods related to a person’s business,” and this means that even if a trademark does not fall under any of subparagraphs 1 through 6 of the same Article, the source between the goods and the goods of another person cannot be registered. Whether a trademark without distinctiveness is a trademark shall be determined objectively by taking into account the concept of the trademark holding, the relationship with the designated goods, and the circumstances of the transaction society. If it is difficult to recognize distinctiveness of the goods of another person under generally accepted social norms, or it is deemed inappropriate to allow a specific person to monopoly the trademark (see Supreme Court Decision 2008Hu4721, Jul. 29, 2010, etc.).

According to the records, the term "monme" and "ONESSORI" are widely known and used as referring to the study teaching materials and teaching tools applying a specific concept of early childhood education or its theory among general consumers as well as workers and traders in the industries related to early childhood education.

On the other hand, when the original adjudication of MONESO (registration number omitted) of the instant registered trademark "MESO" is conducted, all the designated goods of this case are closely related to early childhood education, teaching materials and teaching materials for early childhood education.

Examining these circumstances in light of the above legal principles, the registered trademark of this case composed of only LONTRO "MOTSO", which is not specifically Dolified, is not a distinctive mark as to the designated goods of this case, but it is not appropriate to have a distinctive mark as to the source of the goods of the other goods, and it is not appropriate to enable a specific person to monopoly. Thus, the registered trademark of this case constitutes "a trademark which does not distinguish a consumer's goods related to his business" under Article 6 (1) 7 of the Trademark Act.

Therefore, the decision of the court below to the same purport is just, and contrary to the allegations in the grounds of appeal, there were no errors in the misapprehension of legal principles as to Article 6 (1) 7 of the Trademark

2. Regarding ground of appeal No. 2

A. Article 6(1)7 of the Trademark Act merely means that even if a trademark does not fall under Article 6(1)1 through 6 of the same Act does not constitute a trademark, the source between one’s own goods and another’s goods cannot be registered. Thus, even if a trademark appears to have no distinctiveness when objectively seen only the concept of its use or the relationship with the designated goods, etc., without considering the situation of its use, if the applicant’s use of the trademark shows that the trademark is clearly recognized as indicating his/her goods related to his/her business among consumers or traders, barring special circumstances, such trademark does not constitute a trademark with no distinctiveness under Article 6(1)7 of the Trademark Act, and there is no obstacle in obtaining trademark registration. This does not change solely on the ground that the trademark does not include Article 6(2)7 of the same Act, and thus, it cannot be seen that the trademark is clearly related to the applicant’s exclusive use of the trademark prior to the application for trademark registration. Therefore, the purport of Article 6(1)6(2)6 of the Trademark Act’s exclusive use of the trademark is recognized among consumers’ rights.

The trademark itself cannot be seen as being widely recognized as indicating goods related to a person’s business among consumers. The existence of distinctiveness through such use should be determined on the basis of the time of registration decision (see, e.g., Supreme Court Decision 2006Hu3397, 3403, 3410, 3427, Nov. 13, 2008). Meanwhile, where a trademark cannot be registered because it falls under “other non-distinctive trademarks” under Article 6(1)7 of the Trademark Act prior to the trademark registration decision or additional registration decision, where a trademark is clearly recognized as indicating goods related to a person’s business among consumers as indicating goods related to the designated goods before the trademark registration decision or additional registration decision is made, the effect thereof belongs to the actual user. Thus, whether such trademark has distinctiveness through use of the trademark at the time of registration decision or additional registration of the designated goods should be determined on the basis of the applicant’s trademark use record in principle.

B. We examine whether the use of the instant registered trademark under the name of the Defendant could take into account the actual use of the instant registered trademark in Korea Montreal Co., Ltd. (hereinafter “Non-Party Co., Ltd.”).

According to the reasoning of the judgment below and the record, the following circumstances are revealed. The non-party company has been running the non-party company's business of publishing, selling and selling books related to early childhood education using marks such as "Korea Montreal", "MoNESSORI" or marks combined with other letters or diagrams after its establishment in around 1992, and the defendant has actually carried on the non-party company's business after holding all shares issued by the non-party company together with his family members and did not directly carry on the non-party company's business after its establishment. On the other hand, on September 28, 1998, the defendant received the registration decision of "MONESOSO" and registered the registered trademark "MOSTI" on November 2, 1998 as designated goods "the designated goods "the letter business" as the designated goods "the designated goods" as well as the registration number "the registered goods" on November 31, 2009.

Examining these circumstances in light of the above legal principles, even if the non-party company had already used the registered trademark of this case for a considerable period of time prior to the registration decision of the registered trademark of this case or the registration decision of additional designated goods, its effect belongs to the non-party company, the actual employer.

However, in light of the relationship between the defendant and the non-party company as seen above, as long as the possibility that the defendant acquired the right to the registered trademark of this case from the non-party company before the filing of the application cannot be ruled out, the court below erred by failing to exhaust all necessary deliberations to conclude that the non-party company cannot use the registered trademark of this case as data for the acquisition of distinctiveness due to the use of the usage of the non-party company, without examining the circumstances where the registered trademark of this case was applied

However, as seen below, the judgment below to the same purport is justifiable, since the registered trademark of this case cannot be deemed to have a distinctive character due to the use of the non-party company, even at the time of the decision of initial registration and the time of the decision of additional registration of designated goods. Therefore, there is no illegality that affected

(1) On the designated goods one at the time of the original adjudication.

According to the records, the non-party company is aware that it has used the term "Korean Montreal," "MoNESSOTRI" or "MOTRI" to publish, produce, and sell infant learning teaching materials and teaching tools until September 28, 1998, which is the date of the initial decision of registration of the trademark of this case. On the other hand, the Montreal teaching materials and teaching materials at the time of the initial decision of registration of the trademark of this case, other companies than the non-party company, were using the term "Momeology" or "MOTRI". Considering these circumstances in light of the above legal principles, even if considering all advertising records and sales records by the date of the initial decision of registration of the non-party company of this case, it cannot be viewed that the non-party company's first designated goods of this case are not widely known to consumers of MOTR 2, which is composed of the non-party company's first designated goods at the time of the initial decision of registration of the trademark of this case.

According to the record, the non-party company has been using parts of the designated goods 2 and 3 prior to the date of the decision of additional registration of the designated goods 2 and 3 as to the registered trademark of this case, and the following marks (hereinafter referred to as "the actual use marks") on the advertisement, etc. (hereinafter referred to as "the head of the actual use marks"). However, the (mark 1) letter "the Montreal et al. of the de facto use marks" (mark 2) letter "the part of the actual use marks" is English and "MONTRSORI", but its appearance is the same as that of the registered trademark of this case. Therefore, it cannot be deemed that (mark 5) the actual use marks are identical to the trademark of this case.

As the use of the instant registered trademark, the actual use of the marks of the non-party company cannot be viewed as the use of the instant registered trademark (mark 7). The use of the marks of the non-party company (mark 8) can not be used as a judgment data on whether the instant registered trademark acquired distinctiveness by the Montreal Triology (mark 90) at the time of the decision to register the addition of goods (mark 8).

In light of the records, the non-party company excluded the actual use of the mark called "monme" in Korean from the actual use of the trademark in the non-party company's trademark, the non-party company can be seen as using the registered trademark of this case to a certain extent from before the date of the decision of additional registration of 2 and 3 of the designated goods of this case, such as teaching materials, teaching tools, books, etc. for Home School, and in its advertisement, "MONTRSO" as "MOTRI". However, the registered trademark of this case seems to be used incidental to the mark called "Motheme" in Korean, and the frequency of use is very low compared to the mark called "Mothemeology" in Korean. Thus, the actual use of the registered trademark of this case by the non-party company of this case, which is not specifically Dolified, cannot be seen as indicating that the registered trademark of this case, which is composed of only 2, 322, and 3 of the designated goods at the time of its additional registration decision.

3. Conclusion

Therefore, the appeal is dismissed, 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 Ko Young-han

Jeju High Court Justice Yang Chang-soo

Justices Park Byung-hee

Justices Kim Jae-tae