Kata golf Co., Ltd. (Patent Dao Patent & Patent Attorney Haok-ho et al., Counsel for the defendant-appellant)

R-Swa (Patent Attorney Park Jae-sik et al., Counsel for the plaintiff-appellant)

March 4, 2010

1. The plaintiff's claim is dismissed.

2. The costs of lawsuit shall be borne by the Plaintiff.

The decision made by the Intellectual Property Tribunal on September 3, 2009 on the case No. 2009Da308 shall be revoked.

1. Basic facts

A. The registered trademark of this case

(i) The registration number / the filing date/ the filing date/ the renewed registration date: No. 429841// the date of September 22, 1997/ November 17, 1998/7.24.

Shebly Composition:

【Trademark trademark right holder: Defendant

•The designated goods classified into the category of goods: “gfolf Shoebags” in the category of goods; “golfabags” in the category of goods; “golfabags” in the category of goods; “golfabags; golf clubs; golf-golgs; golf-golgs; golf-gols; golf-gols; golf-gols; golf-gols; golf-glves; golf-gols; golf-glves; golf-glves; golf-glves; golf-glves; golf-glbags” in the category of goods in the category of goods in the category of classes 18; and “golfabags” in the category of goods in the same category of goods in the same category; and

B. Details of the instant trial decision

(1) On February 12, 2009, the Plaintiff filed a petition against the Defendant for the revocation of registration with the Intellectual Property Trial and Appeal Board against the Defendant, and without good cause, the Defendant et al. asserted that the registered trademark of this case was not used in the Republic of Korea for three consecutive years before the date of the instant request for the revocation of registration.

The Intellectual Property Trial and Appeal Board tried to examine the above case at No. 2009Da308, and rendered a decision of this case which rejected the plaintiff's claim on September 3, 2009.

【Ground for recognition】 Evidence Nos. 1 and 2, and the purport of the whole pleadings

2. Determination on the legitimacy of the instant trial decision

A. Summary of the plaintiff's assertion

(1) First, the evidence presented by the Defendant asserting that the trademark identical to the registered trademark of this case was used for the designated goods of Category 28 of the product category among the designated goods can not be used as evidence because its source and date are unclear. ② In the certificate of import declaration without the indication of origin, etc., it is difficult to deem that the trademark identical to the registered trademark of this case was used because the figure in the invoice, etc. is indicated as "KTNA" or the invoice, etc. is omitted, and ③ the golf club, etc. with which the trademark 1 of the actual use is attached, which is viewed as being after the import of the importer non-party 4 corporation, is not for sale, but for mere sampling or for the revocation of the trademark right. Thus, the registered trademark of this case constitutes Article 73(1)3 of the Trademark Act.

Belgium In addition, the Defendant intentionally got unfair profits by taking advantage of the trademark, such as the “KTNA”, which is widely known and well-known in the Republic of Korea, in the advertisement of golf clubs, which are designated goods of the instant registered trademark, using trademarks 2 and 3, which are considered to be similar to the instant registered trademark, and caused ordinary consumers to confuse the origin of the goods. Thus, the instant registered trademark falls under Article 73(1)2 of the Trademark Act.

Article 73 (1) 2 and 3 of the Trademark Act is applicable to the trademark of this case, and the registration of this case should be revoked. However, the decision of this case which different conclusions is unlawful.

B. Whether the registered trademark of this case constitutes Article 73 (1) 3 of the Trademark Act

(i)Criteria for judgment

Article 73 (1) 3 of the Trademark Act refers to the case where a registered trademark is used for the designated goods. The same trademark includes not only the registered trademark itself, but also the trademark in the form that can be seen as identical to the registered trademark in light of the common sense of the transaction society, but also includes the case where a similar trademark is used without including the case where a registered trademark is used, but also the case where a similar trademark is modified to the extent that it does not harm the identity of the trademark as a distinctive mark in light of the common sense of the transaction society (see Supreme Court Decision 2004Hu622, Sept. 29, 2005).

Dozed Facts

In addition to the statements and images of the evidence Nos. 1-1 to 4, Eul evidence No. 6-1, 2, Eul evidence No. 7-1 to 3, and the testimony of non-party No. 1, the following facts are recognized:

㈎ 소외 2 주식회사(대표자 이사 소외 3)는 2006. 3. 31. 서울세관장에게 유효기간을 2006. 3. 31.부터 2008. 11. 17.까지로 정하여 이 사건 등록상표에 관한 상표권을 신고하였다.

㈏ 수입업자 소외 4 주식회사는 2008. 8. 30. 브렌포드 에이전트 리미티드(Brentford Agents Ltd)로부터 피고에 의하여 실사용상표 1 ‘ (사용상품 : 골프클럽, 을 제1호증의 4)’이 부착된 모델명 ‘ ○○○’ 100개, 모델명 ‘ □□□’ 100개 총 200개를 국내로 수입하고, 2008. 9. 1. 인천공항세관에 수입신고하였으며, 위 골프클럽들은 그 무렵 소외 5 주식회사를 통하여 국내에 판매되었다.

【Judgment

㈎ 위 인정사실과 같이, 수입업자 소외 4 주식회사가 이 사건 심판청구일 전 3년 이내에 피고에 의하여 실사용상표 1이 부착된 골프클럽 200개를 수입하여 소외 5 주식회사를 통하여 국내에 판매하였던 점에 비추어 보면, 실사용상표 1은 국내에서 골프클럽에 표시되어 피고에 의하여 정당하게 사용되었다 할 것이다(위 인정사실에 비추어 보면, 수입업자 소외 4 주식회사가 수입한 실사용상표 1이 부착된 골프클럽들은 원고의 주장처럼 단순한 샘플용이거나 상표권의 취소를 면하기 위하여 형식적으로 수입된 것에 불과하다고 할 수 없다).

㈏ 나아가 실사용상표 1이 이 사건 등록상표와 거래사회의 통념상 동일하게 볼 수 있는 형태의 상표인지 여부에 관하여 본다. 이 사건 등록상표 ‘ ’의 구성은 영어알파벳 ‘K’와 ‘G’를 형상화한 ‘ ’와 같은 도형과 영문자 ‘ ’의 결합으로 이루어진 표장으로서, 도형 부분과 영문자 부분이 상하 2단으로 배열되어 있고, 실사용상표 1 ‘ ’의 구성은 ‘ ’와 같은 도형과 영문자 ‘KATANA’ 및 ‘GOLF'가 3단으로 배열되어 있다.

However, in light of the fact that two trademarks are used both in the same diagrams as “” and English letters “KTNA” and “GOLF,” and that the figures and English persons arranged two parts of the three parts are mere mere changes in their location, trademark 1 in actual use is a trademark that can be seen as identical to the instant registered trademark in light of the common sense of the trade society.

· Sub-determination

Therefore, the trademark 1, which is a trademark in the form that can be seen as identical in light of the common sense of the instant registered trademark and the trade society, has been used lawfully by the Defendant, who is a trademark holder in Korea within three years before the date of the instant request for revocation trial ( February 12, 2009). Thus, the instant registered trademark does not fall under Article 73(1)3 of the Trademark Act.

C. Whether the registered trademark of this case constitutes Article 73(1)2 of the Trademark Act

Article 73 (1) 2 of the Trademark Act provides that the trademark right holder intentionally uses a trademark similar to the registered trademark on the designated goods, or uses the registered trademark or similar trademark on goods similar to the designated goods so as to mislead consumers as to the quality of goods or confused with goods related to any business of another person.

(1) In the instant trial proceeding, whether the Plaintiff filed a petition for revocation of registration on part of the designated goods of the registered trademark on the ground of Article 73(1)3 of the Trademark Act, and whether it is permissible to assert Article 73(1)2 of the Trademark Act in addition to the ground for revocation of registration of the trademark in the instant trial proceeding.

In addition to the above basic facts, the plaintiff filed a request to revoke the trademark registration on the ground that the golf clubs, etc. of the category 28 among the designated goods of the registered trademark of this case fall under Article 73 (1) 3 of the Trademark Act, and only when the lawsuit was brought to revoke the trademark registration of this case, it is recognized that the ground for revoking the trademark under Article 73 (1) 2 of the Trademark Act is added. Thus, the trial to revoke the trademark registration on the ground that Article 73 (1) 2 of the Trademark Act is possible only for the entire registered trademark and the claim for part of the designated goods of the registered trademark of this case is not allowed. Thus, the issue of whether the plaintiff's trademark of this case falls under Article 73 (1) 2 of the Trademark Act of this case, which the plaintiff asserted only when the lawsuit was brought to revoke the trademark registration of this case

Whether the Defendant, a trademark holder, used the trademark similar to the registered trademark of this case on the designated goods of the registered trademark of this case

㈎ 판단의 전제

Even if the above (i) opinion is different, in order for the instant registered trademark to fall under Article 73(1)2 of the Trademark Act, the Defendant, a trademark holder, should use the trademark similar to the instant registered trademark on the designated goods of the instant registered trademark.

㈏ 판단

1) We examine whether the “(use products: golf clubs and evidence No. 23-1)” is a trademark similar to the instant registered trademark “.”

The composition of the instant registered trademark is as seen earlier, and the composition of the trademark 2 in actual use is arranged in two parts above the upper half of the figure and the English language “F.” The composition of the instant registered trademark is added on the right side of the “F”, and the parts of the “F” are arranged on the side of the trademark.

However, in light of the fact that both trademarks are used in both the diagrams such as “” and the English language “KTNAGLF”, the part of “” added on the right side of “F” under the trademark 2 in actual use, is not the part of the general consumers’ visual path, and the part of “” under the trademark 2 in actual use, is merely the expression stating the manufacturing cost and the import source, the trademark 2 in actual use is deemed as a trademark that can be seen as identical to the registered trademark in light of the common sense of the trade society, and cannot be deemed as a trademark similar thereto.

2) We examine whether the “(use products: golf clubs, evidence A No. 24)” is a trademark similar to the instant registered trademark “.”

The composition of the instant registered trademark is as seen earlier, and the trademark 3 in actual use is arranged in English letters with two parts above and below, and is added above the right side of the “F” under English Aalpha, and there is no figure such as “F”.

However, in light of the fact that the two trademarks are used both in the English language “KTNAGGLF”, the part of “” added on the right side of “F” in the English Ampha of the trademark 3 used in actual use, is not the part that leads to the snow of ordinary consumers, and the advertisement in the attached Form 3 appearing in the actual use trademark 3 is accompanied by a golf club with shapes such as “” and the trademark in actual use with “KATNA” and the trademark in actual use 3, and the overall observation is made, as in the instant trademark, the two trademarks are used both in the “KATNAGGLF” as in the instant trademark, and the part of “” in the actual use trademark 3 is merely a word that expresses manufacturing source, it can be seen as identical to the instant registered trademark in light of the common sense of the trade society, and it cannot be said that the trademark in actual use trademark 3 is a trademark similar to this.

3) Therefore, as long as the Defendant used trademarks 2 and 3, which are trademarks in the form that can be seen as identical to the instant registered trademark, for golf clubs, which are designated goods of the instant registered trademark, the instant registered trademark does not fall under Article 73(1)2 of the Trademark Act without any need to further examine the remainder of the Plaintiff’s assertion.

D. Sub-determination

Therefore, since the registered trademark of this case does not fall under Article 73 (1) 2 and 3 of the Trademark Act, the registration of this case shall not be revoked. Thus, the decision of this case, which is the conclusion, is legitimate.

3. Conclusion

Therefore, the plaintiff's claim seeking the revocation of the trial decision of this case is without merit, and it is so decided as per Disposition by the assent of all participating Justices.

[Attachment]

Judges Kim Jong-hwan (Presiding Judge)