[1] Where the provision of the Trademark Act concerning the requirements for trademark registration is amended, the provision applicable to a case where there is no separate transitional provision concerning the amended provision (=the previous provision)

[2] The case affirming the judgment below that the above registered service mark constitutes Article 7 (1) 4 of the former Trademark Act and its registration is null and void, in case where the wife, etc. separately considered the construction of the "Panam Art Gallery" and applied for and registered " "" with the intent to exclusively use the trademark, etc. including the name Panam-do, taking advantage of the reputation of Panam-Nam's name

[1] Where the provision of the Trademark Act concerning the requirements for trademark registration is amended and there is no separate transitional provision concerning the amended provision in the Addenda, barring special circumstances, the previous provision shall apply in principle in order not to undermine the stability of the order of the Trademark Act established under the previous provision. The amendment of the Trademark Act (Act No. 8190 of Jan. 3, 2007) as to Article 7 (1) 4 of the former Trademark Act (amended by Act No. 8190 of Jan. 3, 2007) aims to limit the contents and scope of the provision specifically and clearly compared to the previous provision. However, there is no special circumstance that the public interest purpose to be achieved by the amendment of the above subparagraph 4 may justify the destruction of the trust of a third party concerning the continuation of the order of the Trademark Act established under the previous provision. Therefore, Article 7 (1) 4 of the former Trademark Act (amended by Act No. 8190 of Dec. 10, 199) applies to litigation for a registered service mark.

[2] The case holding that where the above registered trademark service mark constitutes Article 7 (1) 4 of the former Trademark Act (amended by Act No. 8190 of Jan. 3, 2007) and applied for and registered the service mark " " " "," with the intent to exclusively use the trademark, etc. containing the name of the Republic of Korea, taking advantage of the reputation of the name of the Republic of Korea, as the wife, etc. of the Republic of Korea applied for and registered the trademark " "," which is a registered service mark with the intent to take advantage of the reputation of the name of the Republic of Korea, such act is likely to impair its reputation as a video artist, and it is against the good customs of ordinary people as well as against the reputation of the Republic of Korea, because it is likely to damage its reputation, and it is likely to disrupt the fair distribution order of goods and business ethics, etc. by taking advantage of the reputation of the well-known name of the Republic of Korea.

[1] Article 7 (1) 4 of the former Trademark Act (amended by Act No. 8190 of Jan. 3, 2007) / [2] Article 7 (1) 4 of the former Trademark Act (amended by Act No. 8190 of Jan. 3, 2007)

Gyeonggi Cultural Foundation (LLC, Kim & Lee LLC, Attorneys Park Dong-dong et al., Counsel for the defendant-appellant)

Defendant (Law Firm Sejong et al., Counsel for the defendant-appellant)

Patent Court Decision 2009Heo5028 Decided December 30, 2009

The appeal is dismissed. The costs of appeal are assessed against the defendant.

We examine the grounds of appeal.

1. Regarding ground of appeal No. 1

Article 7(1)4 of the former Trademark Act (amended by Act No. 8190 of Jan. 3, 2007; hereinafter the same) provides that "a trademark that is likely to be contrary to the public order or good customs" shall not be registered. However, the amended Trademark Act (amended by Act No. 8190 of Jan. 3, 2007) amended the aforementioned provision as "a trademark that, in its own case or a trademark is used for goods, the meaning and contents of the trademark to users are contrary to the good customs, which is the ordinary moral sense of the general public, or is likely to disturb the public order," and there is no transitional provision in its Addenda as to the above amended provision.

However, in a case where the provision of the Trademark Act concerning the requirements for trademark registration is amended and there is no separate transitional provision concerning the amended provision in the Addenda, barring any special circumstance, the previous provision shall apply in principle in order to prevent the stability of the order of the Trademark Act established by the previous provision from being damaged. The above amendment with respect to Article 7 (1) 4 is made with the purport that the contents and scope of application of the provision are more specific and clear compared to the previous provision. However, there is no special circumstance that the public interest purpose to be achieved by the amendment under the above subparagraph 4 may justify the destruction of the trust of a third party concerning the continuation of the order of the Trademark Act formed by the previous provision. Therefore, it is reasonable to view that Article 7 (1) 4 of the former Trademark Act, which is the previous provision, applies to the adjudication and lawsuit of the service mark of the registered trademark of this case, filed on December 10, 199, which is the date of enforcement of the amended Trademark Act.

Therefore, the judgment of the court below to the same purport is just, and there is no error of law such as amendment of Article 7 (1) 4 of the former Trademark Act and misapprehension of legal principles as to its scope of application, as otherwise alleged in the ground of appeal. Supreme Court precedents cited in the ground of appeal are inappropriate to invoke this case,

2. As to grounds of appeal Nos. 2, 3, and 4

The term "trademarks that are contrary to the public order or good customs" under Article 7 (1) 4 of the former Trademark Act includes not only cases where the composition of a trademark itself or the meaning or contents that the trademark gives to ordinary consumers are contrary to the public order or good customs, which is the ordinary moral sense of the society, but also cases where the act of using the trademark upon the registration of the trademark violates good customs such as fair goods distribution order or international trust and morality (see, e.g., Supreme Court Decisions 97Hu860, 87, 884, Apr. 21, 200; 2004Hu1267, Feb. 24, 2006). Further, whether the trademark falls under Article 7 (1) 4 of the former Trademark Act shall be determined at the time of the decision to grant the trademark registration (see, e.g., Supreme Court Decision 2002Hu1362, May 14, 2004).

In light of the records, in the course of preparing exhibitions to raise funds from around April 1999 by organizing the “Committee for Promotion of the Establishment of the White Art Gallery in the Daegu area,” the Defendant was aware of the intention of exclusive use of the trademark or service mark containing the name of Yinam in the name of Yinam, including modern gallon, by taking into account the construction of the “Yinam Art Gallery” separately from the Defendant, and the intention of exclusive use of the trademark or service mark including the name of Yinam in the name of Yinam, and the registered service mark of this case, which is the service mark of this case, which is the service mark of this case in which designated goods and service business are “art gallery business,” and which was registered without permission, from around December 10, 1999. On the other hand, it was known that the general consumers of the Republic of Korea on January 29, 200, which is the registration decision of the service mark of this case, at the time of the registration decision of the trademark of this case.

In light of the background leading up to the application of the registered trademark/service mark of this case and the well-knownness of the name Panam-do, the Defendant’s act of applying for, registering, and using the registered trademark/service mark of this case without permission in order to intentionally take advantage of the reputation of Pa Nam-Nam-Nam-Nam-Nam-Nam-Nam-Nam-Nam-Nam-Nam-Nam-Nam-Nam-Nam-Nam-Nam-Nam-han, is likely to impair its reputation by impairing the reputation as a video artist, and thus, it is contrary to the good customs of ordinary people, as well as against the good customs of ordinary people, as it is intended to unfairly attract consumers’ purchases by taking advantage of the reputation of Pa Nam-Nam-Nam-Nam-Nam-Nam-Nam-Nam-Nam-Sa, and thus, it might be prejudicial to the good customs such as fair order in distribution of goods

Therefore, the fact-finding and judgment of the court below to the same purport is just, and there is no error in the misapprehension of legal principles or incomplete hearing as to the above legal provisions, or in violation of the rules

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 Kim Nung-hwan (Presiding Justice)