[1] The case holding that a registered trademark " does not constitute grounds for invalidation under Article 23 (1) 4 of the Trademark Act, inasmuch as an applicant of the registered trademark " does not correspond to a person who actually produces goods at the time of the application for trademark registration as long as it is objectively deemed that he wishes to use the registered trademark as an identification mark of goods

[2] The case holding that the registered trademark " " cannot be deemed as a mark indicating, in a common way, the quality, raw materials, efficacy, use, etc. of the designated goods in the case where the registered trademark " " is used in the books" among the designated goods, and it merely indicates the contents of the books in a common way, and it cannot be deemed as a mark indicating, in a common way, the contents of the books in a common way since they merely suggest the contents of the books, and it cannot be deemed as a mark indicating, among the remaining designated goods

[3] Whether the title of the book has the character as a mark identifying the goods (affirmative with qualification)

[4] The case holding that the registration of the defendant's registered trademark " "," is invalid since it is identical to the pre-use trademark "Maz which is clearly recognized by consumers as indicating the plaintiff's goods with the pre-use trademark " which is not absolute in English air," and is used for goods identical or similar to the plaintiff's goods

[5] The case holding that since the pre-use trademark falls under the well-known trademark but does not fall under the well-known trademark, the registered trademark does not fall under Article 7 (1) 10 of the Trademark Act concerning the "Examination" among the designated goods

[6] The case holding that the registered trademark does not constitute "a trademark which is likely to mislead a consumer" under Article 7 (1) 11 of the Trademark Act on the grounds that there are no special circumstances to believe that it is used by the pre-use trademark right holder to the extent that it is not used for the designated goods identical with or similar to the goods of the pre-use trademark, in case where the registered trademark is used for the designated goods of the designated goods

[1] The case holding that a registered trademark " does not constitute grounds for invalidation under Article 23 (1) 4 of the Trademark Act, inasmuch as an applicant of the registered trademark " does not correspond to a person who actually produces goods at the time of the application for trademark registration as long as it is objectively deemed that he wishes to use the registered trademark as an identification mark of goods

[2] The case holding that the registered trademark " " cannot be deemed as a mark indicating the contents of the book in a common way because it is limited to the extent of simply suggesting the contents of the book among the designated goods and it cannot be deemed as a mark indicating the contents of the book in a common way, and it cannot be deemed as a mark indicating the quality, raw material, efficacy, use, etc. of the designated goods in a common way even where it is used in the remaining designated goods

[3] In principle, the title of the book does not function as a distinguishing mark of the book that directly explains the content of the relevant work as a creative production or it does not function as a distinguishing mark of the book. However, even in the case of the book, the title of the book clearly shows the characteristics of the publishing enterpriser's goods rather than as the author's creation after editing and publishing by responsibility of the publishing company. However, in the case of the book, the title of the book is the name of the work, and the title of the book, it has the function of indicating the source of the publishing company, and it has the character as a distinguishing mark of the other products.

[4] The case holding that the registration of the defendant's registered trademark " "," is invalid since it is identical to the pre-use trademark "Maz which is clearly recognized by consumers as indicating the plaintiff's goods with the pre-use trademark " which is not absolute in English air," and is used for goods identical or similar to the plaintiff's goods, as the trademark is used for the goods identical or similar to the plaintiff's goods

[5] The case holding that since the pre-use trademark falls under the well-known trademark but does not fall under the well-known trademark, the registered trademark does not fall under Article 7 (1) 10 of the Trademark Act concerning the "Examination" among the designated goods

[6] The case holding that the registered trademark does not constitute "a trademark which is likely to mislead a consumer" under Article 7 (1) 11 of the Trademark Act on the grounds that there are no special circumstances to believe that it is used by the pre-use trademark right holder to the extent that it is not used for the designated goods identical with or similar to the goods of the pre-use trademark, in case where the registered trademark is used for the designated goods of the designated goods

[1] Articles 2 (1) and 24 (1) 4 of the Trademark Act / [2] Article 6 (1) 3 of the Trademark Act / [3] Article 7 (1) 9 of the Trademark Act / [4] Article 7 (1) 9 of the Trademark Act / [5] Article 7 (1) 10 of the Trademark Act / [6] Article 7 (1) 11 of the Trademark Act

Non-party 1 and 3 others (Law Firm Gyeong, Attorneys Masung-si et al., Counsel for the plaintiff-appellant)

Jeong-ho (Patent Attorney Cho Jae-chul, Counsel for the defendant-appellant)

may 3, 2006

1. The part of the trial decision rendered by the Intellectual Property Tribunal on August 30, 2005 regarding the designated goods of the trademark No. 564818 shall be revoked on the designated goods of the trademark No. 564818.

2. The plaintiff's remaining claims are dismissed.

3. Of the costs of lawsuit, 20% is borne by the Plaintiff, and 80% is borne by the Defendant.

The Korean Intellectual Property Tribunal's decision on August 30, 2005 with respect to the case No. 2901 on the designated goods of the trademark No. 564818 shall revoke the part of the designated goods of the trademark No. 56481.

1. Basic facts

(a) Details of the trial decision;

The Plaintiff filed for a registration invalidation trial on the ground that the registered trademark of this case, as indicated below (b) of the Defendant, is identical to the pre-use trademark “Malok,” which is used in the books published by the Plaintiff, and the pre-use trademark is remarkably recognized among consumers, and the designated goods of the instant registered trademark are identical or similar to the goods used in the pre-use trademark, and thus, the registration should be invalidated as they fall under Article 7(1)9, 10, and 11 of the Trademark Act.

As to the above request for adjudication, the Korean Intellectual Property Tribunal rendered the decision of this case stating the purport of dismissing the plaintiff's claim on the ground that the pre-use trademark was used as a book and it is not used as the plaintiff's trademark, and even if it was used as a trademark, it cannot be viewed as being recognized as the plaintiff's trademark as the plaintiff's trademark, and thus, it does not fall under Article 7 (1) 9, 10, and 11 of the Trademark Act, and there is

B. The registered trademark of this case

(1) Date of application/registration (date of decision of registration)/registration number: October 6, 2001/ November 7, 2003 ( October 2, 2003)/No. 564818

(2) Composition:

(c) Designated goods: Paper tapes for periodicals, learning sites, books, cartags, non-self-scamp cards, brokes, learning models, yearmatics, newspapers, computer program records (category 16 of the product categories);

(4) Right holder: Defendant;

C. First Used Trademark

(1) Composition: Maraz which is not absolute in the English public book;

(b) Goods using: Book;

[Grounds for Recognition: Facts without a dispute]

2. The plaintiff's assertion

A. The defendant is not a publishing business entity, and there is no idea to engage in publishing business, and only has the intention to use the registered trademark of this case as a book title, and the trademark of this case does not conform with the definition of trademark under Article 2(1)1 of the Trademark Act because it does not intend to use the registered trademark of this case as a trademark identification mark, and its registration is null and void as it falls under Article 23(1)4 of the Trademark

B. The registered trademark of this case is merely a technical mark indicating the content of the book, which is merely a title of the book written by the Defendant, and thus, is null and void by Article 6(1)3 of the Trademark Act, since it has no distinctive character.

C. The registered trademark of this case is identical to the pre-use trademark widely recognized as the trademark by consumers as the trademark of the Plaintiff, which is a publishing company, and is used for goods identical or similar to the Plaintiff’s goods, and thus, is likely to cause confusion with the Plaintiff’s goods or business which are recognized remarkably among consumers. Thus, Article 7(1)9 of the Trademark Act provides that if the Defendant uses the registered trademark of this case as a product mark on the designated goods, ordinary consumers are mistaken for the source as it is the goods published by the Plaintiff, and thus, it is invalid as it falls under Article 7(1)10 of the Trademark Act.

3. Determination

A. Facts recognized

(1) Around May 26, 1999, the Plaintiff written a book on the English learning law (hereinafter “original work”) with the Defendant, and proposed that the Plaintiff be in charge of production, sale, and publicity, and that the Plaintiff shall have publication right for the original work for five years from the date of original publication, and the Defendant shall not publish the work identical or substantially similar to all or part of the original work during the contract period, and the Plaintiff shall claim the title of the original work in the title of the original work in the name of “a book to complete English within a day” with the Defendant and proposed that the Defendant “a book to complete English language” as the title of the original work in the course of consultation with the Defendant. The Plaintiff proposed that the Plaintiff “a book to be put in the English public book” in the name of the Defendant as the title of the original work.

(2) In order to promote the sale of a series of books published under the title, including original literary works, the Plaintiff advertised 7 daily newspapers from July 24, 1999 to April 21, 2001, on several occasions, from July 24, 2009, the Plaintiff paid KRW 180 million in 200, and approximately KRW 94 million in the year 2001.

(3) The original author published around July 19, 199, and sold 585,280 copies until September 2001, which was immediately before the filing date of the instant registered trademark, and 50,584 copies were additionally sold from the next day until October 1, 2003, which was the day before the decision date of registration of the instant registered trademark.

(4) On September 30, 199, the Plaintiff: (a) on the part of the Defendant, had the Plaintiff write and publish the books indicating “hing and ming-ming-ming-ming-hing-hing-hing-h-h-h-h-h-h-h-h-h-h-h-h-h-h-h-h-h-h-h-h-h-h-n-h-h-h-h-h-h-h-h-h-h-h-h-h-h-h-h-h-h-h-h-h-h-h-h-h-h-h-h-h-h-h-h-h-h-h-h-h-h-h-h-h-h-h-h-h-h-h-h-h-h-h-h-h-h-h

(5) Around November 15, 1999, the Plaintiff published a book indicating “Yingerman and minger” as a supplementary book by having other persons, other than the Defendant, write two others on the sign of co-owner, and the above teaching material sold 225,648 copies until September 2001, and 43,235 copies from the next day until October 1, 2003 were sold.

(6) On March 16, 200, the Plaintiff published, as a title, the book indicating “toplights and writing materials” as a title, and as a title, the book indicating “toplights and writing materials” was written by having other persons, other than the Defendant, write two others on the sign of the teaching material development team for the language of social deliberation, and the above teaching material was sold by 179,831 parts until September 2001, and 44,49 parts were sold by October 1, 2003.

(7) On February 20, 2001, the Plaintiff published the books indicating the Young River as the title, “middle school entrance” as a supplementary work (hereinafter “middle school entrance books”) by having other persons who are not the Defendant, and the books published after the start of these books did not indicate the Defendant as a joint author. On March 2, 2001, he did not indicate the Defendant as a joint author; on March 2, 2001, he expressed the Young River as the title, “middle school entrance records” (hereinafter “middle school entrance records”); on March 20, 201, on March 3, 2001, he expressed the Young River as the title, “middle school basic records” (hereinafter “middle school basic records”); on April 9, 201, up to 3rd school entrance and 6th school entrance, 16 middle school entrance and 4 middle school entrance and 6th school entrance and 6th school entrance, 1 middle school entrance and 6th school entrance and 6th school entrance, 1 middle school entrance and 6th school entrance.

(8) The plaintiff applied for trademark registration of the pre-use trademark on August 4, 200, but the defendant filed an application for trademark registration of the registered trademark of this case on October 6, 2001 and asserted that there is a ground for rejection to the plaintiff's trademark application, and the decision of rejection was issued on the ground that the application for trademark registration of the pre-use trademark constitutes Article 7 (1) 11 of the Trademark Act on June 17, 2003.

[The grounds for recognition: Facts without a partial dispute, Gap evidence 4, 5-1 through 7, 6-1 through 4, 10-1 through 5, 12-1 through 53, 18, 19, 22, and the purport of the whole pleadings]

B. Whether the registered trademark of this case is inconsistent with the definition of the trademark

According to Article 2(1)1 of the Trademark Act, a trademark refers to a mark used by a person who produces, processes, certifies, or sells goods in the context of business to distinguish goods related to his/her business from those of another person, and a trademark that does not conform with the definition of the trademark is deemed invalid pursuant to Articles 71(1)1 and 23(1)4 of the Trademark Act.

In light of the fact that a trademark right holder, an exclusive licensee, or a non-exclusive licensee adopts the principle of registration recognizing the acquisition of trademark rights by registration, rather than the principle of use recognizing the acquisition of trademark rights by the use of trademark rights, and that any person among the trademark rights holder, an exclusive licensee, or a non-exclusive licensee has a system to revoke the registration of the designated goods through a trial to revoke the registration in cases where the registered trademark is not used in Korea for three consecutive years or more before the date a request for revocation is filed without justifiable grounds (Article 73(1)3 of the Trademark Act), even if the trademark does not fall under a person who actually engages in the production, etc. of goods at the time of the

In addition, the plaintiff's assertion that the defendant did not intend to engage in publishing business in the future, and that the defendant did not intend to use the registered trademark of this case as a book and as a mark of goods does not exist. As seen above, in light of the circumstances of the registration of the registered trademark of this case, the designated goods kinds, the defendant's writing activities, and the plaintiff's application for trademark registration, the defendant should have the intention to use the registered trademark of this case.

Therefore, the plaintiff's assertion that the registration of this case does not coincide with the definition of the mark is null and void is without merit.

C. Whether the registered trademark of this case is a technical trademark without distinctiveness

Any trademark which cannot be registered as a trademark means a trademark consisting solely of a mark indicating in a common way the origin, quality, raw material, efficacy, use, quantity, shape, price, production method, processing method, method or time of goods, and the method or time of use.

In addition, a trademark consisting of goods containing creative production such as books is a trademark consisting solely of a mark indicating, in a common way, the quality, use, etc. of the designated goods under Article 6(1)3 of the Trademark Act, insofar as the trademark beyond simply suggesting or emphasizing the content of the designated goods recorded therein, and should reach the extent that the trademark is recognizable as being ordinarily used by ordinary consumers as being indicated in the designated goods (see Supreme Court Decision 2000Hu3418, Dec. 10, 2002).

In the event that the registered trademark of this case is used in the "statement", it is limited to simply suggesting the contents of the book, and it does not constitute a mark indicating the contents recorded in the book in a common way. It does not constitute a mark indicating the quality, raw materials, efficacy, use, etc. of the designated goods in a common way even if it is used in the remaining designated goods. Thus, the plaintiff's assertion on this part is without merit.

D. Whether the registered trademark of this case falls under Article 7 (1) 9 of the Trademark Act

(1) Whether the pre-use trademark was used as a trademark

In principle, the title of the book does not function as a distinguishing mark of the book, which directly explains the title or content of the book as a creative production of the relevant work, or does not function as a distinguishing mark of the book. However, even in the case of the book, the title of the book clearly shows the character of the publishing enterpriser's goods rather than the face of the author's creation after editing and publishing by responsibility of the publishing enterpriser.

As seen above, in light of the fact that title 8 was decided by the agreement between the plaintiff and the defendant, the contractual relationship between the plaintiff and the defendant, and the book 8 as title 8 was published and sold in order with the exception of the title prior to the application of the trademark of this case, the defendant was not involved in the remaining seven books other than the original book, and there was the plaintiff's continuous advertisement on these books from the date the original book was published to the date all of the above eight books were published, the pre-use trademark does not indicate the name of the book published by the plaintiff, but function as the mark of the plaintiff's source, and function as the mark of the goods published by the plaintiff as trademark. Thus, the pre-use trademark has been used as trademark.

(2) Whether the pre-use trademark acquired well-knownness

As seen above, for about one year and nine months prior to the application for the registered trademark of this case, the above letter 8, which used Yong-don as the Plaintiff’s title, was released in the middle of 1,434,00 and sold more than 1,434,00 copies. Before the application for the registered trademark of this case, the Plaintiff advertised the above books for about one year and nine months to promote sales of the above books, and the amount paid as the advertising fee was about 22,00,000 won. In light of the above, it is deemed that the pre-use trademark used the Plaintiff’s goods as the mark of the Plaintiff, and the pre-use

(3) Whether the goods of the pre-use trademark are similar to the designated goods of the registered trademark of this case

Among the designated goods of the part for which the Plaintiff seeks to revoke trademark registration, the term “periodicals” is published in the form of a book, and the term “learning sites, books, and books” are identical or written with the book, and these designated goods are goods identical or similar to the book, which are goods using the pre-use trademark.

However, among the designated goods, the “examination” differs from the “book” which is a prior-use product, its shape, use, and the issuer, and the distribution channel is different, and thus, such a product is not identical or similar.

(4) Fixed interest rate

Therefore, the registered trademark of this case, among the designated goods, is identical to pre-use trademarks recognized remarkably by consumers as indicating the plaintiff's goods, and is used for goods identical with or similar to the plaintiff's goods, and thus its registration should be invalidated. However, in relation to "New-use Trademark" among the designated goods, the registered trademark of this case is not used for goods identical with or similar to the plaintiff's goods, and its registration cannot be deemed null and void.

E. Whether the registered trademark of this case falls under Article 7(1)10 of the Trademark Act with respect to the "Examination" among the designated goods

The term "trademarks which may cause confusion with goods or business of another person which are remarkably recognized among consumers" under Article 7 (1) 10 of the Trademark Act means trademarks identical or similar to a well-known trademark, and a well-known trademark means a trademark whose trademark is widely known to consumers as well as the general public due to its excellence in quality of the goods. It means a trademark which has the ability to indicate not only the source of goods but also the main body of the business because it is obtained from consumers as well as the consumers of the trademark.

As seen above, it is not sufficient to recognize that the pre-use trademark has reached the well-known trademark by examining whether the pre-use trademark falls under the well-known trademark or not, and by the evidence submitted by the plaintiff, the pre-use trademark has reached the well-known trademark. Therefore, this part of the plaintiff's assertion is without merit without examining any further.

F. Whether the registered trademark of this case falls under Article 7 (1) 11 of the Trademark Act with respect to "Examination" among the designated goods

Article 7 (1) 11 of the Trademark Act provides that a trademark which is likely to deceive a consumer shall not be registered. In light of the legislative purport of this provision, even in cases where a trademark is widely known to the general consumer to the extent that it obtains well-knownness and only is known to the extent that it can be perceived as a trademark of a specific person, a trademark thereafter registered shall be deemed identical or similar to the pre-use trademark, and in light of the specific use condition of the pre-use trademark or the economic relation between the products using both trademarks, and other general transaction circumstances, if there are special circumstances likely to be misunderstood that the registered trademark is used by the pre-use trademark holder to the extent that it cannot be used for the designated goods identical or similar to the goods using the pre-use trademark, even if it is not used for the designated goods identical or similar to the goods using the pre-use trademark, it is likely that the general consumer may mislead or confuse the source (see, e.g., Supreme Court Decision 9Hu2594, Feb. 8, 2000; 205Hu363, Aug. 26, 2005).

The pre-use trademark is so known to the extent that it can be recognized as the plaintiff's trademark by consumers or traders, and thereafter the registered trademark of this case is identical with the pre-use trademark, and one of the "written" and the designated goods of the trademark of this case, which are the goods using the pre-use trademark of this case, is different from the shape, use, publishing entity, and the distribution channel of the registered trademark of this case, and thus, they cannot be identical

Therefore, in order for the registered trademark of this case to be likely to mislead or confuse the general consumers as to the designated goods' source, it should be deemed that there are special circumstances to believe that the registered trademark of this case is used by the plaintiff, who is the right holder of the pre-use trademark, to the extent that it cannot be used for designated goods identical with or similar to the goods used in the pre-use trademark in light of the specific use condition of the pre-use trademark or the economic relation between the goods used in both trademarks, and other general transaction circumstances. In the event that the registered trademark of this case is used for newspapers, there is no evidence to deem that there is any special circumstance to believe that the registered trademark of this case is used by the plaintiff, the right holder of the pre-use trademark, to the extent that it is not used for designated goods identical or similar to

Therefore, the plaintiff's assertion on this part is without merit.

G. Sub-committee

Ultimately, since the registered trademark of this case is about the periodical, learning place, book keeping, and book keeping among the designated goods, the registration of the trademark of this case should be invalidated. As such, the part on the periodical, learning place, book keeping, and book keeping among the designated goods of the registered trademark of this case among the designated goods of this case is unlawful in conclusion, but the part on the newspaper among the remaining designated goods is legitimate.

4. Conclusion

Thus, the plaintiff's claim seeking the revocation of part of the trial decision of this case is justified within the above scope of recognition, and part of the claim is accepted, and the remaining claim is dismissed as it is without merit. It is so decided as per Disposition

Judges Lee Ki-taik (Presiding Judge)