[1] Requirements for falling under Article 7 (1) 12 of the Trademark Act and the standard for determining whether there is an unlawful purpose under the above provision, and whether the above legal principles also apply to service marks (affirmative)

[2] In a case where Company A, the right holder of the prior use mark “ “,” filed an appeal for invalidation of registration against Company B, etc. on the ground that the prior use mark “,” and the mark and the designated service business correspond to Article 7(1)12 of the Trademark Act, etc., and the Korean Intellectual Property Tribunal cited it, the case holding that Company B, etc. filed an application for registration of a registered service mark with the intent of obtaining unjust profits by copying the prior use mark and taking advantage of the superior image accumulated in the prior use mark or the customer attraction with the prior use mark “,” or seeking to inflict damages on Company A, etc.

[1] Article 7 (1) 12 of the Trademark Act / [2] Article 7 (1) 12 of the Trademark Act

[1] Supreme Court Decision 2010Hu2322 Decided July 14, 2011

Plaintiff 1 and one other (Law Firm Squa, Attorneys Park Song-hoon et al., Counsel for the plaintiff-appellant)

Commission Holdings, LelC (Law Firm KEL, Attorneys Kim Young-chul et al., Counsel for the plaintiff-appellant)

Patent Court Decision 2012Heo10457 Decided April 19, 2013

The judgment below is reversed, and the case is remanded to the Patent Court.

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

1. In order to fall under Article 7(1)12 of the Trademark Act, an applicant for a trademark must use the trademark identical or similar to a trademark recognized as indicating the goods of a specific person by domestic or foreign consumers for unlawful purposes. The purport of the above provision is to prevent damage to the right holder of the trademark by means of registration of the trademark which is recognized as indicating the goods of a specific person by a third party in the Republic of Korea or foreign consumers, or by obstructing the business in the Republic of Korea of the right holder of the trademark, which is recognized as indicating the goods of a specific person by using the trademark through registration of the trademark which is recognized as indicating the goods of a specific person, or not allowing registration of the trademark which is used for the purpose of obtaining unfair profits by using such imitate trademark. On the other hand, whether the above provision is unlawful or not, the degree of recognition or creativity of the trademark of a specific person, the same or similar nature of the trademark of the applicant and the trademark of the specific person, the relationship between the two parties, whether the applicant specifically prepares for business using the registered trademark, whether goods are identical or similar, or economic relationship with the goods, and the circumstances at the time of the registered trademark.

A person shall be appointed.

2. In light of the records, the marks consisting below the right side of the marks used in the " hotel business, casino facility business, golf cooking business" (hereinafter "pre-use marks") are created based on the syn Gynnnn's nature of the window that the Defendant was affiliated with, and the 23 types of service businesses, such as "boom management business, beauty consultation business, beauty and beauty business," are designated service business, and the right side of the registered service marks (registration number omitted) of this case consisting of the above registered service marks (registration number omitted) are widely widely known to the U.S. consumers at the time of the application of the registered service marks (registration number omitted) of this case. The registered service marks of this case are the same as the pre-use marks, and the designated service marks of this case include the services provided within hotel or cooking as indicated above.

Examining these points in light of the legal principles as seen earlier, the Plaintiffs filed for the instant registered service mark for the purpose of using the registered service mark for unlawful purposes, such as intending to obtain unfair benefits by copying the prior use mark and taking advantage of a high-quality image or human resources for customer smoking with the prior use mark accumulated in the prior use mark, or causing damage to the Defendant, who is the right holder of the prior use mark.

Nevertheless, the lower court determined otherwise, that the registered service mark of this case did not constitute Article 7(1)12 of the Trademark Act on the ground that it was not recognized that the Plaintiffs had applied for the use of the registered service mark for an unlawful purpose. In so doing, the lower court erred by misapprehending the legal doctrine on “unlawful purpose” under the above provision, thereby adversely affecting the conclusion of the judgment.

3. Therefore, the lower judgment is reversed, and the case is remanded to the lower court for further proceedings consistent with this Opinion. It is so decided as per Disposition by the assent of all participating Justices on the bench.

Justices Jo Hee-de (Presiding Justice)