205Heo9343 Confirmation of the scope of rights (or award)

Lee Won-sung

Suwon-gu Suwon-gu

Patent Attorney Kim Young-ho, Counsel for the defendant-appellant

Pluxus only

Seoul Dongdaemun-gu

Patent Attorney Lee Jin-jin, Counsel for the defendant-appellant

Patent Attorney Lee Jae-sung

February 24, 2006

March 31, 2006

1. The plaintiff's claim is dismissed.

2. The litigation costs shall be borne by the plaintiff.

The decision made by the Intellectual Property Tribunal on September 30, 2005 on the case No. 2005Dang2777 shall be revoked.

1. Details of the trial decision;

A. As between July 10, 2004 and January 13, 2005, the Defendant: (a) held that the trademark subject to confirmation falls under the mark indicated in the following sub-paragraph (c), and filed a motion to confirm the scope of the registered service mark on the ground that the effect of the Plaintiff’s (b) registered service mark does not extend to the trademark subject to confirmation; (c) on September 30, 2005, the Korean Intellectual Property Trial and Appeal Board held that the registered service mark of this case falls under the mark indicated in a common way as the product processing method, etc. under Article 51(1)2 of the Trademark Act; and (d) held that the registered service mark of this case is not effective.

As to the plaintiff's assertion that the registered service mark of this case can also be effective in the service mark falling under Article 51 (1) 2 of the Trademark Act because the part of "Couribane C" acquired distinctiveness through the use of Article 6 (2) of the Trademark Act, since the registered service mark of this case was registered with the recognition of distinguishability of "T. B. C" and the "Couribane C" part has no distinguish character as a technical mark, it was rejected for the reason that Article 51 (1) 2 of the Trademark Act is still applicable, and the decision of this case was rendered with the purport of accepting the defendant's claim.

B. Registered service mark T. B. B. B. C. : Registration number of B. B. C. : B. B. B. B. B. : B. B. B. B. B. B. B. : application date / registration date: May 22, 2000 / December 1, 2001 (amended by Ordinance of the Ministry of Commerce, Industry and Energy No. 146 of December 24, 2001) designated service business: The organization of a restaurant that is subject to confirmation under subparagraph 12 of attached Table 2 of Article 6(2) of the former Enforcement Rule of the Trademark Act (amended by Ordinance of the Ministry of Commerce, Industry and Energy No. 146 of December 24, 2001): The organization of a restaurant that is subject to confirmation under subparagraph 2 of attached Table 6(2) of Article 6(2) of the former Enforcement Rule of the Trademark Act (amended by Ordinance of the Ministry of Commerce, Industry and Energy).

【Evidence: Evidence Nos. 1 and 2, and the purport of the whole pleadings】

2. Determination as to the legitimacy of the trial decision

A. From March 1998, the part of the "Bencc" among the marks subject to confirmation of the plaintiff's assertion is not directly known to the "Bencc" in the Republic of Korea, but merely makes it possible for the plaintiff to know only through drilling or rhecing. Thus, the part of the "Benccc" among the registered service marks of this case falls under the category of "Bencccc" under the category of "Benc" as well as "Benc" under Article 51 (1) 2 of the Trademark Act. Thus, the decision of this case should be revoked. (2) Since the plaintiff used the "Bencc" part of the registered service marks of this case as a designated service business continuously and collectively, in light of the number of member stores and users of this case, advertising and media reports, the part of the registered service marks of this case falls under the scope of "Benc" under Article 51 (1) 2 of the Trademark Act, and thus, it should be recognized that the registered service marks of this case fall under the scope of "Benc" No. 1 of this case.

B. Determination

(1) Of the marks subject to confirmation as to whether the challenged mark falls under Article 51 (1) 2 of the Trademark Act, the part of the "New Zealand" is merely a technical mark indicating the origin of the "English" with the meaning of the "new", and the part of the "Seoul Benenc" is merely a technical mark indicating the quality of the "English", and the part of the "Seoul Bencurc" is not a technical mark indicating the quality of the "Seoul Bencur in terms of the use service business." The part of the "Bencurc", which is a service business, is directly cut back to the "Seoul Bencur in terms of Korean style." Thus, the challenged mark constitutes a technical mark directly expressing the quality of the service business, raw materials and processing methods beyond the point of view of the use service business, and the part of the "Bencurcurc in terms of the "Bencurc in terms of the color of 2," and the part of the "Bencurc in terms of the "Bencurcurc in terms of this case."

Article 6 (2) of the Trademark Act provides that if a trademark is recognized remarkably among consumers as a trademark by virtue of the prior use of the trademark before filing an application for trademark registration, the technical mark shall also be registered, notwithstanding the provision of paragraph (1) 3 of the same Article. The purport of the provision is that a trademark cannot be used exclusively for a specific person. Of the registered service mark of this case, the technical mark directly expresses beyond the degree of suggesting raw materials and processing methods of the service business, such as the part of "Coh Babbscen", should be interpreted and applied strictly. Thus, the standard should be strictly interpreted and applied since the technical mark directly expresses beyond the degree of suggesting the raw materials and processing methods of the service business. The fact that a trademark is recognized remarkably among consumers cannot be presumed by the fact that the trademark is advertised to a certain extent, and it should be clearly determined by evidence that the trademark itself has been considerably perceived among consumers (see Supreme Court Decision 2002Hu1768, May 16, 2003).

However, comprehensively taking account of the purport of the plaintiff's statements in Gap's evidence Nos. 3 through 9, the plaintiff started business with the mark "Chobane Babe Co., Ltd." from Suwon-si on March 1998, and then registered the service mark of this case on May 22, 200 and registered on December 1, 2001. After the plaintiff established Thobe Co., Ltd.'s establishment of 2002, it was not enough to recognize the remaining part of the service mark of this case from 00 won to 30,000 won for each of the above 20,000 won for the above 30,000,000 won for each of the above 30,000,000 won or more for each of the above 20,000,000 won or more for each of the above 20,000 won to 30,000 won or more for each of the above 30,005.

C. Sub-decision

Therefore, the challenged mark constitutes a mark indicating the quality, raw materials, processing methods, etc. under Article 51 (1) 2 of the Trademark Act in a common way, and thus, it shall not have the effect of the registered service mark of this case. Accordingly, the decision of this case as to this conclusion is lawful.

3. Conclusion

Therefore, the plaintiff's claim is dismissed as it is without merit. It is so decided as per Disposition.

Judges Lee Sung-ho

Oral Jina

Central Superintendent of the Korean Supreme Court