Plaintiff (Withdrawal)

Cuamo Korea Co., Ltd. (Patent Attorney Song-soo et al., Counsel for the defendant-appellant)

Pakistan Co., Ltd. (Patent Attorney Park Jae-young, Counsel for the defendant-appellant)

October 26, 2011

1. The plaintiff succeeding intervenor's claim is dismissed.

2. The costs of lawsuit shall be borne by the intervenor succeeding to the plaintiff.

The decision made by the Intellectual Property Tribunal on June 14, 201 by the Intellectual Property Tribunal on the case No. 2812 shall be revoked.

1. Basic facts

A. The registered trademark of this case

1) Registration number / Date of application / Date of registration: Trademark registration (registration number 1 omitted)/ March 10, 2006/ October 31, 2006

2) Gu sex:

3) Designated goods: Inspection clothes, guide clothes, body clothes, Taekwondo clothes, Taekwondo clothes, wharfs, agricultural bed, strings, backs, strings, anti-defracks, Taekwondo paintings, strings, devats, vinyls, vinyls, slots, slurgs, slurgs, slurgs, new triggers, strings, backs for shoes, slurgs, backs for shoess, spacks for new triggers, front jus for new triggers, strings, sports shoess, strings, sports strings, Kads, Kadis, strings, Twitts, strings, strings, strings, first-hand for new triggers, postpacks, strings, first-hand for new triggers, postpacks, stracks, working in bracks, bracks,

4) Trademark right holder: Intervenor succeeding to the plaintiff

(b) a challenged mark;

1) Gu sex:

(b) Goods using: Taekwondo clothes;

3) Users: Defendant;

C. Circumstances leading to the instant lawsuit

1) The Plaintiff (hereinafter “Plaintiff”) filed a motion to confirm the scope of right by asserting that the challenged mark used by the Defendant is identical or similar to his own registered trademark of this case and its appearance, name, and designated goods are the same as the designated goods. Thus, the Korean Intellectual Property Tribunal filed a motion to confirm the scope of right by asserting that the challenged mark falls under the scope of right of the registered trademark of this case. However, the Korean Intellectual Property Tribunal decided that the challenged mark does not fall under the scope of right of the registered trademark of this case by the trademark of this case since the challenged mark was used in Korea continuously without any unlawful purpose prior to

2) On July 13, 2011, the Plaintiff filed the instant lawsuit seeking the revocation of the instant trial decision, and completed the registration of transfer of trademark rights of the instant registered trademark to the Intervenor succeeding to the Plaintiff on September 16, 201, while the lawsuit was pending. Accordingly, the Intervenor succeeding to the Plaintiff participated in the lawsuit on the second day for pleading of the instant lawsuit, while the Plaintiff retired from the lawsuit.

2. The parties’ assertion and the issues of the instant case

A. Summary of the plaintiff succeeding intervenor's assertion

1) The defendant asserted that the right to use the challenged mark has been transferred again from the manager (representative non-party 1) who received the right to use the challenged mark from the manager (representative non-party 1) and thus, he had the right to use the challenged mark under Article 57-3 of the Trademark Act. However, prior to January 19, 1982, non-party 2 applied for a trademark similar to the challenged mark on January 19, 1982 as the designated goods in Taekwondo uniform (registration number 2 omitted) and registered the trademark on April 14, 1983 as the trademark registration (registration number 2 omitted), and the trademark of this case had not been used as the registered goods in uniform similar to the challenged mark on July 25, 1984 as the designated goods and the trademark of this case had not been used lawfully after being registered as the owner of the right to use the trademark of this case and the trademark of this case had not been used as the trademark of this case (registration number 3, 1985).

2) The instant trial decision is a mark which was used by the so-called So-called " So-young" company since 1948, and in 1989 (State No. 198), the manager (representative Nonparty 1) took over and used the So-young company's business rights in 2000, and the Defendant again determined that the verified mark was continuously used in Korea after taking over the business rights of the regular manager on October 2009. However, the above (ju No. 5) So-young company was dissolved on December 5, 2005 and it was seen that the liquidation was completed on December 5, 2008 (refer to the evidence No. 5), it is difficult to view that the challenged mark was continuously used from 1948 to the filing date of the instant registered trademark (refer to the evidence No. 5).

3) The Defendant asserted that the right to use the challenged mark was transferred along with the right to operate the regular manager (representative Nonparty 1). However, the regular manager, the representative of Nonparty 1, is an individual company operated by Nonparty 3, the husband of Nonparty 1, and Nonparty 1, the husband of Nonparty 3, transferred the right to operate the company to Nonparty 4 to the representative director of the Defendant. Thus, the transfer of the right to operate the regular manager, even if recognizing the validity of the transfer, is not a corporate, but a non-party 4, the representative director of the Defendant, and thus, the Defendant, who is different from the non-party 4, does not have the right to use the challenged mark.

4) There is insufficient evidence to acknowledge that the challenged mark was used in Korea by the executive director (representative Nonparty 1) or the defendant continuously without the purpose of unfair competition, and thus indicating the goods of a particular person at the time of application for the trademark of this case.

B. Summary of the defendant's assertion

1) The challenged mark was used as approximately 60 years from the time of application for the trademark of this case from the time of application for the trademark of this case from the time of the so-called So-called 1948, and is used before Nonparty 2’s application for the trademark of this case, the Defendant has the right to use the challenged mark lawfully.

2) The challenged mark is a mark which was continuously used by the Defendant from the year 2000 in which the regular manager (representative Nonparty 1) acquired the business right from the general manager (representative Nonparty 1) to the year 2009 after re-taking the business right of the above regular manager (representative Nonparty 1). Thus, it is not affected by the conclusion of liquidation around 2005 and around 2008 after the transfer of the business of the above regular manager (representative Nonparty 1). The Defendant has the right to pre-use the registered trademark of this case on the basis of March 10, 2006, based on which the Plaintiff filed the instant registered trademark.

3) The defendant legally acquired the right to use the challenged mark through the business transfer contract with the managing director (representative non-party 1) and the above transfer act was made to the defendant who is not an individual non-party 4. Thus, the plaintiff's assertion against the plaintiff's successor is without merit.

4) As a result, the challenged mark is recognized as indicating the Defendant’s goods, which are the general manager (representative Nonparty 1) or the general manager (representative Nonparty 1) among consumers, as being used in the Republic of Korea at the time of application for the trademark of this case.

C. Key issue of the instant case

As a result of the Defendant’s continued use of the challenged mark before the application for the trademark of this case without the purpose of unfair competition, whether the Defendant acquired the right of prior use under the Trademark Act.

3. Whether the defendant is a prior licensee under the Trademark Act

A. Criteria for judgment

If, without the purpose of unfair competition, a trademark continues to be used in Korea prior to the application for trademark registration, and as a result, it is recognized that domestic consumers indicate the goods of a specific person, a person who uses a trademark identical or similar to another person’s registered trademark on goods identical or similar to the designated goods, or a person who succeeds to the status thereof, has the right to continue to use the trademark on goods identical or similar to the designated goods. The purpose of this is to protect the interests of a genuine trademark user and to prevent harm caused by the registration of an imitated trademark by recognizing the right to continue to use the trademark on the condition that the trademark is not for the purpose of unfair competition by adding an employer’

On the other hand, in cases where the character of the product owner is changed, such as transfer of business, the well-knownness of the trademark transferred along with the transfer of business or the degree known to the specific person is also transferred to the new business owner (see Supreme Court Decision 96Do197 delivered on May 31, 196).

(b) Fact of recognition;

The following facts are acknowledged by comprehensively taking account of each entry in Gap 5 to 14, Eul 1 to 12 (including virtual numbers), which has no dispute between the parties, the whole purport of the pleadings.

1) The marks subject to verification were trade names used by the Sowing Martials since 1948, and Nonparty 5, in 1989, continued to use the marks subject to verification as trademarks of Taekwondo articles, including Taekwondo uniforms, while establishing and operating (ju) Sowing Martials by Nonparty 5, who accepted Sowing Martials.

2) After that, the executive director (representative non-party 1) established on September 200, 200, who had defaulted around 200, continued to use the challenged mark with the business license transferred by the executive director (representative non-party 1) and the defendant (representative non-party 1) transferred the business license of the above executive director (representative non-party 1) on October 2009 and continues to use the challenged mark for Taekwondo articles including Taekwondo uniforms until now.

3) (Welju) The Minister of Land, Infrastructure and Transport exported Taekwondo goods using the challenged mark in the United States AWMA in 1993, and the goods were inserted in the AWMA issued by the United States, and also made and distributed the Kabrogs against foreign language. The manager (the representative non-party 1) who took over the business right from the above (the representative non-party 1) also produced and distributed the Kabrogs in the Republic of Korea while selling Taekwondo goods such as Taekwondo clothes in the Republic of Korea around 202.

4) On May 25, 200, the Plaintiff opened a store with the trade name of “ordinary secretary” in Gangnam-gu, Seoul (hereinafter omitted), and operated the store as a direct sales store of Nonparty 5’s (Korean Senior Executive Director) and operated the store as a direct sales store of Nonparty 5’s (Korean Senior Executive Director). On May 200, the above (Korean Senior Executive Director) had taken over the direct sales store around May 200, and operated the store as an agent of the Standing Director (Korean Senior Director 1) who acquired (Korean Senior Director 1)’s operating right after the Defendant took over the above regular manager’s operating right (Korean Senior Director 1).

5) However, the Plaintiff applied for the instant registered trademark on March 10, 2006 and obtained the trademark registration on October 27, 2006, immediately after the registration of extinction due to the cancellation or expiration of the registration of cancellation due to Nonparty 2’s abandonment, on the following grounds: (a) the Plaintiff did not have registered the challenged mark from the so-called master to the Standing Director (Representative 1) who used the challenged mark from 1948 to the Standing Director (Representative 1); and (b) the Plaintiff applied for the instant registered trademark on March 10, 2006.

6) In 2010, the Plaintiff filed a criminal complaint against the Defendant on the violation of the Trademark Act to the Seoul Songpa Police Station to the effect that the challenged mark infringed the registered trademark of this case, but the Seoul Songpa Police Station sent it to the prosecutor’s office without prosecution (the criminal complaint case against the Defendant was rendered by Nonparty 3, a decision of rejection was made on September 14, 2010). Furthermore, the Plaintiff filed a separate lawsuit against the Defendant seeking an active trial to confirm the scope of rights by asserting that the challenged mark falls under the scope of the right of the registered trademark of this case, but the Patent Tribunal dismissed the Plaintiff’s request for a trial by the Intellectual Property Tribunal, but the instant trial decision was defective and the instant court sought the revocation of the

7) Meanwhile, the non-party 1’s husband, the representative of the above regular manager, and the plaintiff’s non-party 3, the non-party 3, while serving as an employee in charge of the defendant’s overseas business, was prosecuted as a crime of embezzlement of the defendant’s public funds, and was sentenced to a suspended sentence of two years in August on December 29, 2010 for embezzlement of business as Seoul East Eastern District Court Decision 2010Kadan2412.

8) On March 8, 2011, the Secretary General of the World Taekwondo Association sent an official letter to the effect that “The trademark SNGMOOSA is the Plaintiff’s trademark and the mark used by the Defendant constitutes trademark use.” However, the World Taekwondo Association rather sent a warning to the Plaintiff that “the Plaintiff is using the trademark in an unlawful manner,” and the Defendant demanded that the Defendant regulate the Plaintiff’s unfair misrepresentation by sending a warning to the Plaintiff that “I request the Plaintiff to take place by eradicating the Plaintiff’s illegal use of the trademark as the World Taekwondo Association.”

9) On September 16, 201, when the lawsuit of this case was pending on September 16, 201, the Plaintiff registered the entire trademark of this case to Kumomoa Korea Co., Ltd., the Intervenor succeeding to the Plaintiff, and the Intervenor succeeding to the Plaintiff succeeded to the lawsuit of this case, the Plaintiff himself/herself withdraws from the lawsuit. The Plaintiff’s previous domicile (Evidence A 11) and the location of the business place of the Plaintiff succeeding to the Plaintiff are the same as “Seoul Gangnam-gu Kumodong (hereinafter omitted).”

10) Meanwhile, the amount of Taekwondo articles supplied and released by the Defendant during the sales floor with the abbreviation "General Director of the Kukkiwon" before the Kukkiwon was approximately KRW 25,545,90 in 2008, approximately KRW 61,437,002 in 209, and KRW 494,428,01 in 200, KRW 1,530,593,593,510 in 202, KRW 1,438,610 in 202, KRW 1,932,438,610 in 203, KRW 1,961,707, KRW 707, KRW 789, KRW 2068, KRW 939, KRW 400 in 2008, KRW 2008, KRW 1968, KRW 2088, KRW 1968, KRW 2098, KRW 2098, KRW 1968,4086.

C. Determination

1) According to the above facts, since so-called "the challenged mark" used in Taekwondo goods, such as Taekwondo clothes from 1948, it can be seen that the challenged mark was transferred along with the transfer of business rights, and that the defendant continued to use the trademark continuously. As of March 10, 2006, the time when the plaintiff's application for the trademark of this case was filed, as of March 10, 2006, the general manager (representative non-party 1) and the transferor of business prior to the use of the challenged mark in Taekwondo goods, it is reasonable to view that the domestic consumers are recognized as indicating the goods of the general manager (representative non-party 1) who has transferred the business to the defendant at least among the domestic consumers, and therefore, the defendant who has transferred the business from the above regular manager (representative non-party 1) has the right to use the challenged mark under Article 57-3 of the Trademark Act.

2) The Plaintiff’s succeeding intervenor asserts that the use of the challenged mark by Nonparty 2, which is similar to the mark, was illegally used during the period in which Nonparty 2’s trademark was registered, and thus the Defendant cannot be a prior user right under the Trademark Act. However, as seen earlier, the challenged mark began to be used by Nonparty 2 from 1948 to 198, which was far earlier than the 1983 trademark that was registered by Nonparty 2, and thus, the right to prior use of the challenged mark was suspended or not denied by Nonparty 2’s each trademark registration act. Thus, the Plaintiff’s aforementioned assertion by the Plaintiff’s succeeding intervenor is without merit without further need.

3) The Plaintiff’s succeeding intervenor asserts that the mark subject to confirmation was continuously used from 1948 to the registration date of the instant registered trademark, since the Plaintiff’s succeeding intervenor was ordered to be dissolved on December 5, 2005, and the liquidation was completed on December 5, 2008.

However, as seen earlier, since the managing director (representative non-party 1) established on September 200 by the managing director (representative non-party 1) of the company established on September 2000, 200, transferred a business right and used the challenged mark from around that time, the challenged mark is deemed to have been continuously used regardless of the fact that (ju) the leading managing director was dissolved around 2005 and the liquidation was completed around 2008. Thus, the plaintiff's succeeding intervenor's assertion is without merit.

4) In addition, the Plaintiff’s succeeding intervenor asserted that the Defendant was transferred the business rights from Nonparty 1, the Defendant, but the actual operator of the regular manager, who is Nonparty 3, who is the husband of Nonparty 1, presented as evidence the evidence that the above transfer of business is ineffective, and accordingly, presented the evidence Nos. 8 (written statement of Nonparty 1) and Nos. 9 (written statement of Nonparty 1). However, in full view of the overall purport of the pleadings in the written evidence Nos. 10, it is determined that the evidence No. 8 is not prepared by Nonparty 1, the person who is the statement. The evidence No. 9 is an e-mail between Nonparty 4 and Nonparty 1, the Defendant’s representative director and Nonparty 1, and there is no evidence to prove otherwise.

In this regard, even if the act of transfer was effective, the transfer of business rights of the managing director is not limited to the defendant who is a juristic person, but is limited to the non-party 4, who is the representative director of the defendant. Thus, the non-party 4 and the defendant, other than the defendant, cannot have the right of prior use of the challenged mark. However, in full view of the entries and the whole purport of the arguments in Gap's certificate 6 (transfer certificate), the plaintiff's successor bears the signature and seal of "non-party 4" as the transferee of the certificate of transfer, but in full view of the overall contents, it is recognized that "non-party 1, the representative of the managing director, the non-party 1, the representative of the managing director, the non-party 4, the representative director of the managing director, shall be deemed to have been transferred to the non-party 4, who is a juristic person, not the non-party 4, and thus

5) The plaintiff's successor argues that there is no evidence to acknowledge that the challenged mark is recognized as indicating the goods of a specific person at the time of the application for the trademark of this case because the challenged mark was used in Korea without any unfair competition by leading officers, (ju), leading officers, and regular instructors (representative non-party 1). However, considering the overall purport of the arguments in Eul through 9 (including virtual numbers) as seen above, the Taekwondo products using the challenged mark have been widely exported to the United States beyond domestic consumption. In China, the challenged mark was manufactured and sold in this case. According to the facts that the challenged mark was written out of the defendant's sale of Taekwondo uniforms, the plaintiff's use of the Taekwondo mark was recognized as indicating that at least the delivery amount of Taekwondo products supplied by the plaintiff's regular director (representative non-party 1) from 2008 to 90,000,000 won in total, and the defendant's sale and purchase of the trademark of this case to non-party 20 billion won in Korea (the plaintiff's domestic representative of Taekwondo products).

D. Sub-committee

Therefore, since the challenged mark constitutes a trademark recognized as indicating the goods of a specific person among domestic consumers at the time of the application of the trademark of this case by using the trademark continuously in Korea without the purpose of unfair competition before the application of the trademark of this case, the trademark subject to confirmation constitutes a trademark recognized as indicating the goods of a specific person among domestic consumers at the time of the application of the trademark of this case, the defendant who acquired the right to use the challenged mark along with the business right from the above regular manager (representative Nonparty 1) shall be deemed to have the right to prior use the challenged mark under the Trademark Act.

4. Conclusion

Therefore, the trial decision of this case, which concluded as above, is legitimate, and the plaintiff succeeding intervenor's claim seeking revocation is dismissed as it is without merit, and it is so decided as per Disposition.

Judges Lee Jae-chul (Presiding Judge)