Rottebea Co., Ltd. (Patent Firm NAE et al., Counsel for the defendant-appellant)

Hotel Pream Co., Ltd. (Law Firm Kim & Kim, Attorneys Kim Jong-chul et al., Counsel for the defendant-appellant)

September 29, 2005

1. The decision made by the Intellectual Property Tribunal on May 12, 2005 on the case No. 2004Da723 shall be revoked;

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

The same shall apply to the order.

1. Details of the instant trial decision

A. The defendant is a trademark right holder of the trademark of this case with the following contents.

(1) Composition:

(2) Registration number: No. 287806.

(3) Date of application/registration: March 15, 1993/ March 31, 1994

(4) Designated goods: “Saf-type 16 of the product classification category category “Saf-be, Nowon-gu, Sbox, bags, plastic bags, cards, photophones, pocketbookss, shower fences, saf-types, saf-types, cream, cream-types, color-types, color-types, rubber straws, rubber saf-macks, book-types (registration of conversion of product classification on August 18, 2004).

B. On April 14, 2004, the plaintiff asserted that the registration of the trademark of this case should be revoked under Article 73 (1) 3 of the Trademark Act since the trademark of this case was not used for not less than three consecutive years prior to the date of the request for the revocation trial without any justifiable reason, and the Korean Intellectual Property Tribunal has tried the above request for the revocation trial as of May 12, 2005, and the trademark registration trial can be requested only to interested parties. Such interests should be determined at the time of the conclusion of the trial. However, the existence of interests should be determined at the time of the request for the revocation trial. The evidence submitted by the plaintiff is that the plaintiff manufactures or sells goods of the same kind as the designated goods of this case as the designated goods at the time of the request for the revocation trial, and it is difficult to find that the plaintiff is directly and directly interested in the trademark of this case because it is difficult to recognize that the trademark of this case is used or scheduled to use on goods similar to the designated goods of this case or because it could not use the trademark identical or similar to the registered trademark.

[Evidence] Each description of evidence Nos. 1 and 2, and the purport of the whole pleadings

2. Determination on the legitimacy of the instant trial decision

A. Grounds for revoking the trial decision of the plaintiff's assertion

The issue of whether a person who requests a trial to revoke the registration of a trademark is an interested party shall be determined at the time of the closure of the trial, and the plaintiff, even before the date of the request for a trial to revoke the registration of the trademark of this case, has developed a business to commercialize the phrases, which are the designated goods of the trademark of this case, and continuously sold phrases, etc. thereafter. Since the trademark of this case may be damaged by being challenged by being unable to use the trademark identical or similar to the trademark of this case due to the existence of the trademark of this case, the trial decision of this case which dismissed the plaintiff's request on the ground that the plaintiff is not

B. Determination

(1) Criteria for determining interested parties who can request a trial to revoke trademark registration

An interested party in a request for cancellation of a trademark means a person who has a direct and practical interest in the extinguishment of the trademark because the existence of the trademark registration to be cancelled is likely to be damaged by being unable to use the trademark identical or similar to the registered trademark because it was set up against the trademark right holder due to the existence of the trademark registration to be cancelled (Supreme Court Decision 2001Hu188 delivered on April 24, 2001 and Supreme Court Decision 98Hu1914 delivered on March 23, 2001), and such interested party: (1) a person who uses or is currently using the registered trademark identical or similar to the registered trademark subject to the request for cancellation of a trial on goods identical or similar to the designated goods of the registered trademark; (2) a person who manufactures or sells goods identical or similar to the designated goods of the registered trademark subject to the request for the cancellation of a trial; and (3) a person who has received notification of rejection of registration due to the fact that the applicant's trademark is identical or similar to the registered trademark; and (3) whether the applicant constitutes an interested party shall be determined as at the

(2) Whether the Plaintiff is an interested party

(A) The following facts may be acknowledged in light of the evidence Nos. 3 through 13, evidence Nos. 14-1 through 21, evidence Nos. 15-1 through 17, evidence Nos. 16, evidence No. 17-1, 2, evidence No. 18-1 through 3, evidence No. 19, evidence No. 20-1, 20-2, evidence No. 1, 21, evidence No. 1-3, and evidence No. 1-2, and the purport of the whole pleadings in each of the evidence No. 2.

① On March 2, 1999, the Plaintiff (former trade name: MTT collection, and the change to the trade name as of September 7, 2004), the representative director of the Plaintiff (the Plaintiff’s representative director), established the Korean Association of Telecommunications (Korea Association) in order to introduce the term “tedibi” type to Korea, “in order to introduce the term “tedibi type created by diversity,” and opened exhibitions. The Korea Association of Etedibi (Korea), which is the subject of the establishment, has developed projects such as the issuance of a chain-related business, an exhibition with theme of Edibiology type, and an exhibition with theme of Edidibiology type.

② On September 1, 2003, the Plaintiff, the representative director of the Plaintiff, entered into a contract on vicarious implementation of the Tec Communications and License Business on September 1, 2003 in order to carry out the character project, the form of “tecry” that is the subject of the charge created by the Plaintiff, and on September 23, 2003, on behalf of the Plaintiff on September 23, 2003, on behalf of the Plaintiff, on the basis of the aforementioned contract, on the form of “tecry” bearing the burden created by the Plaintiff on behalf of the Plaintiff, the character license agreement was concluded for various products, including the text.

③ On January 14, 2004, and on January 28, 2004, knife Co., Ltd., which entered into a license agreement as seen above, manufactured and sold goods, such as strip, box, wing box, show the shape of “tedibe” created by the Plaintiff from that time.

④ On April 14, 2004, the Plaintiff filed a petition with the Intellectual Property Tribunal for the revocation of registration of the trademark of this case, recognizing that the existence of the trademark of this case was unable to produce and sell goods bearing the trademark such as “tedibe” or “Ted Bear” due to the existence of the trademark of this case. On June 16, 2004, the Defendant sent a written notice to the Plaintiff requesting the suspension of infringement on the trademark of this case. On this matter, the Plaintiff had the Defendant use the shape of “tedibe” in the phrase, but notified the Defendant that the use of the mark would infringe on the trademark right.

⑤ Since August 25, 2004, the Plaintiff supplied the three-story shopping mall of Sungnam-si, Sungnam-si, Co., Ltd., Ltd., Ltd., the three-story shopping mall, which was operated by professional compliance, with the phrase, etc., indicating the form of “tedibe” (However, the product sales receipt is in the name of “Edibe”, a representative of professional compliance in accordance with the commercial practice). On September 7, 2004, the Plaintiff changed the company’s trade name to “tedibee,” as at present,” and added the company’s business name to “the purpose column of the corporation’s registry” on the 10th day of the same month.

(B) As seen above, prior to the date of the request for the cancellation trial of this case, the Plaintiff was allowed to manufacture and sell phrases indicating the form of “tedibry” to Hands Co., Ltd., and after the date of the request for the cancellation trial of this case, the Plaintiff sold the phrases produced by Hands Co., Ltd. to the shopping mall called “beligs,” and the Plaintiff’s trade name is changed and the purport of the change is included in the manufacture and sale of phrases. The Plaintiff not only can it be viewed as the person who used or currently uses the trademark identical or similar to the registered trademark subject to the request for the cancellation trial of this case for goods identical or similar to the designated goods of the registered trademark, but also the person who manufactures or sells goods identical or similar to the designated goods of the registered trademark subject to the request for the cancellation trial of this case. Thus, the Plaintiff is a person having a direct and realistic interest in the extinguishment of the trademark since it could not use the trademark identical or similar to the registered trademark by obtaining the trademark from the Defendant who is the trademark holder.

(3) Sub-decisions

Therefore, the plaintiff is an interested party in the claim for the cancellation of registration of the trademark of this case, and the decision of this case which dismissed the plaintiff's appeal is unlawful.

3. Conclusion

Therefore, the plaintiff's claim seeking the revocation of the trial decision of this case is reasonable, and it is decided as per Disposition with the assent of all participating Justices.

Judges Park Dong-dong (Presiding Judge)