[1] The time of determining whether a registered service mark falls under Article 7(1)3, 6, 9, and 10 of the Trademark Act, and the time of determining whether the registered service mark is a well-known or well-known trademark, and the requirements for determining whether the registered service mark constitutes “a trademark which causes mistake of the quality of goods or might mislead consumers,” as provided by Article 7(1)11 of the Trademark Act

[2] Criteria for determining whether a specific service mark constitutes a well-known and well-known service mark, and whether consumers or traders are well known to the extent that it can be perceived as a specific person’s service mark or service business in domestic general transactions

[3] The case holding that the registered service mark " " does not fall under Article 7 (1) 3, 6, 9 through 11 of the Trademark Act

[4] The case holding that the registered service mark " " does not fall under Article 7 (1) 4 of the former Trademark Act since it is difficult to regard it as the use of the service mark under Article 8 of the Industrial Bank of Korea Act

[5] The case holding that although the registered service mark " "" and the registered service mark " " " " ", etc. of development financial business and international financial business" are similar to the registered service mark " "," the designated service business of which is "corporate management and organization counseling business, personnel management consultation business, etc.," and the designated service business are "development financial business, international financial business, etc., the two designated service businesses are not identical or similar to each other, so the registered service mark does not fall under Article

[1] For a registered service mark to fall under Article 7(1)3, 6, 9, and 10 of the Trademark Act, the registered service mark shall be either known or well-known at the time of application for registration of the registered service mark, and for a registered service mark to fall under Article 7(1)11 of the Trademark Act, even if the registered service mark is not well known or well-known at the time of determination of whether to register the registered service mark, it should be known to the extent that it can be recognized as a specific person’s service mark or service business if it is a consumer or a trader in the general trade in Korea at least if it is said to be a specific person’s service mark or service business.

[2] Whether a service mark constitutes a well-known and well-known and well-known service mark, even if not, at least, a consumer or a trader in general transactions in Korea is well-known and well-known and well-known and well-known, whether it is well-known to the extent that it would promptly be perceived as a specific person’s service mark or service business should be determined by taking into account all the circumstances, such as the use period, use, method of use, scope of business, and commercial name’s publicity.

[3] The case holding that the registered service mark " " " does not fall under Article 7 (1) 3, 6, and 9 through 11 of the Trademark Act, since it is difficult to view that the registered service mark " " acquired the well-known and well-known reputation at the time of application for or registration of the registered service mark " ", or that it does not fall under any of Article 7 (1) 3, 6, and 9 through 11 of the Trademark Act, since it is difficult to view that it was known to consumers or traders in general domestic trade

[4] The case holding that since registered service mark " " cannot be seen as "the Bank or any similar name" under Article 8 of the Industrial Bank of Korea Act, it does not fall under Article 7 (1) 4 of the former Trademark Act (amended by Act No. 8190 of Jan. 3, 2007) since it is difficult to view it as "the use of the service mark" under Article 8 of the Industrial Bank of Korea Act

[5] The case holding that although the registered service mark " "" and the registered service mark " " "" are similar to the registered service mark " "," whose designated service business is "corporate management and organizational counseling, personnel management consultation, etc.," and the designated service business are "development financial business, international financial business, etc.," the two designated service businesses are not identical or similar since there is no possibility of confusion as to each other due to the different service provider's different service providers, so the registered service mark does not fall under Article 7 (1) 7 of the Trademark Act

[1] Article 7 (1) 3, 6, 9, 10, and 11 of the Trademark Act / [2] Article 7 (1) 3, 6, 9, 10, and 11 of the Trademark Act / [3] Article 7 (1) 3, 6, 9, 10, and 11 of the Trademark Act / [4] Article 8 of the Industrial Bank of Korea Act; Article 7 (1) 4 of the former Trademark Act (amended by Act No. 8190 of Jan. 3, 2007) / [5] Article 7 (1) 7 of the Trademark Act

[2] Supreme Court Decision 89Hu2205 delivered on September 11, 1990 (Gong1990, 2095) Supreme Court Decision 97Hu3975, 3982 delivered on February 26, 199 (Gong1999Sang, 666) Supreme Court Decision 98Hu843 delivered on May 30, 200 (Gong2000Sang, 1566) Supreme Court Decision 2006Hu3526 delivered on February 8, 2007

Industrial Bank of Korea (Attorney Park Jong-sung et al., Counsel for the plaintiff-appellant)

ABK Co., Ltd. (Patent Attorney Yellow-do et al., Counsel for defendant-appellant)

July 10, 2009

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 December 22, 2008 on the case No. 2008Da7877 shall be revoked.

1. Basic facts

A. Registered service mark of this case

(1) Date of application/registration date/registration number: December 17, 2001/ Oct. 8, 2003/No. 91660

(2) Composition:

(c) Designated service business: business management and organization consultation business, personnel management consultation business, job placement business, professional business consultation business, business management assistance business, business management assistance business, provision of information, provision of information to enterprises, temporary manpower provision assistance business, human resources consultation business, new employees recruitment recruitment service business, data planning business, advertising agency business, advertising agency business, advertising placement business, advertising agency business, advertising promotion business, marketing service business, marketing research business, classification of service categories;

(4) Right holder: Defendant;

(b) A prior registration or service mark;

(1) Prior registered service marks

(A) Date of application/registration date/registration number: January 16, 1999/ April 14, 200/60562

(b) Composition:

(c) Designated service business: Development financing business, international financial business, financial investment intermediary business, guarantee business, new technology venture capital business, loan provision business, capital investment business, mortgage financing business, mortgage purchase business, mortgage collection agency business, investment financing business, factoring service business, installment financing business, installment sales business,

(D) Right holder: Plaintiff

(2) Prior-use service marks

(A) Composition:

(b) Service business using securities: Loaning of funds to small and medium enterprise owners under the Industrial Bank of Korea Act, discount of bills, receipt of deposits, installment savings, issue of securities and other bonds, survey and research on small and medium enterprise, business guidance, etc.

C. Details of the instant trial decision

The Plaintiff filed for a registration invalidation trial against the Defendant in relation to the pre-registered service mark or pre-registered service mark, claiming that the registered service mark falls under Article 7(1)3, 4, 6, 7, and 9 through 11 of the Trademark Act.

After examining it as 208Da787, the Korean Intellectual Property Tribunal rendered the instant trial ruling dismissing the Plaintiff’s request for a trial on the ground that the registered service mark does not fall under Article 7(1)3, 4, 6, 7, and 9 through 11 of the Trademark Act in relation to the prior-use service mark.

[Reasons for Recognition] Evidence Nos. 1 and 2, and the purport of the whole pleading

2. The plaintiff's assertion

Article 7(1)3 of the Trademark Act is applicable to the registered service mark of this case, since it is a mark indicating a nonprofit business of the Plaintiff, a public corporation, or a non-profit public service business, which is identical with a well-known prior-use service mark, and thus falls under Article 7(1)4 of the former Trademark Act (amended by Act No. 8190 of Jan. 3, 2007; hereinafter the same shall apply) since it is a service mark used in violation of Article 8 of the Industrial Bank of Korea Act that provides that no person other than the Industrial Bank of Korea shall use the name of the Industrial Bank of Korea or any other similar name, and Article 7(1)6 of the former Trademark Act constitutes a service mark that contains a well-known Plaintiff’s name, title or trade name, or a prior-use service mark that is its abbreviation, and thus falls under Article 7(1)7 of the Trademark Act, and thus, constitutes a service mark that is identical or similar to a prior-use service mark of the Plaintiff, a well-known or low-known service mark, and thus constitutes a new service mark under Article 7(1)1).

3. Determination

A. Whether it falls under Article 7(1)3, 6, 9 through 11 of the Trademark Act

(1) Legal principles

For the registered service mark of this case to fall under Article 7 (1) 3, 6, 9, and 10 of the Trademark Act, the registered service mark of this case shall be either widely known or well-known trademark at the time of application or decision of whether to register the registered service mark of this case. In order for the registered service mark of this case to fall under Article 7 (1) 11 of the Trademark Act, even if the registered service mark of this case does not know or know at the time of decision of whether to register the registered service mark of this case, it should be known to the extent that it can be recognized as a specific person’s service mark or service business if it is a consumer or a trader in the general transaction of this case at least in Korea.

On the other hand, whether a service mark constitutes a well-known and well-known service mark or a well-known and well-known service mark, even if not, at least, a consumer or a trader in general transactions in Korea is well-known and well-known and well-known and well-known, should be determined by taking into account all the circumstances, including the use period, use, method of use, scope of business, and the actual condition of advertisement propaganda as to the service mark or trade name (see, e.g., Supreme Court Decisions 89Hu2205, Sept. 11, 1990; 2006Hu3526, Feb. 8, 2007).

(2) The degree of acquisition of well-known and well-known service marks

(A) Facts of recognition

The following facts may be acknowledged in full view of the purport of the entire pleadings in each statement of Gap evidence of Nos. 3 through 83 (including the relevant branch numbers):

① From December 1, 1987, the Plaintiff changed the Plaintiff’s English name from “Small and Medium Bank” to “Korea,” and used the English abbreviation “IBK” as the serial number of the check paper issued by the Plaintiff, or as the name indicating the Plaintiff in the credit transaction at the time of credit transaction related to banking business or in correspondence with customers or other banks and cable communications with other banks.

② From around 1987, the Plaintiff issued each year (5,00 copies in 197, 5,00 parts in 1999, 2,500 parts in 2,500 each year, 2,500 parts in 200, and 1,500 parts in 200 each year from 200, and 204) the Korea Trade-Investment Promotion Agency (KOTRA), etc. international financial institutions, such as IMF, overseas branches, IBD, international conferences, etc. used the pre-use service mark as an English abbreviationd name of the Plaintiff. From around 1989 to 196, from 1989 to 196, to 196, 1960 parts in 196, 196, 196, 196, 396, 196, 196, 196, 196, 196, 196, 1996, 1996, 196, 196, 196, 196, 1996.

③ In addition, in the Plaintiff bank, the term “IBK” as the classification code in the book room data, the term “IBK” as the abbreviation of the labor union, “IBK-NET” as the mark in the in-house computer network, “IBK 200 movement” as the name of in-house campaign, “IBK” as the name of in-house campaign member, “IBK” as the name of in-house camp, “IBK” as the name of in-house club, “IBK PC club” or “IBK PEE ECE ECEF group” as the name of in-house club, from March 1997 to December 197, 197, respectively.

④ From June 16, 1998 to March 6, 2001, the Plaintiff advertised the Plaintiff’s bank on 37 occasions in major domestic daily newspapers, such as Joseon Daily, Eastern Daily, Han Winter Newspaper, etc., and indicated “www.ibk.co.K” in the advertisement. From around 1992 to HiTL, the Plaintiff took measures to enter “GOBK” into an external information and communications network, and to access the above external information network with “I.B.K News,” and “I.B.K bulletin Board,” and the number of times of its use on the Internet homepage for 30,000,000,000,000 from 196,000,0000,0000,000,000,000,000,000,000,000,000,000,000,000,000,00.

⑤ During 34 times from August 1991 to September 2002, the Plaintiff published a 34th page “BK” bulletin of the Plaintiff bank, which written the pre-use service mark on the sign and article, and distributed it to the general public for public relations purposes. The Plaintiff published a newspaper of domestic daily newspapers, such as Korean economy, daily economy, internal and external economy, etc., or Korea Hague, Korea, etc., 126 times from November 12, 198 to September 26, 2003 referring the Plaintiff as “IBK” or the Internet homepage address along with the company bank as “www.ibk.co.C.”

6) The Plaintiff used the pre-use service mark on the 1994-1995 Sin Pon Pon Pon Pon Pon Pon Pon Pon Pon Pon Pon Pon Pon Pon Pon Pon Pon Pon Pon Pon Pon Pon Pon Pon Pon Pon Pon Pon Pon Pon Pon Pon Pon Pon Pon Pon Pon Pon Pon Pon Pon Pon Pon Pon

7) The Plaintiff’s subsidiaries used the English name “IBK Capital Corporation” as the English name “IBK Capital Corporation,” and registered and used the domain name “IBK Capital.co., Ltd.” on January 1, 199. This was first registered in Category 36 (No. 41-60562), and the Plaintiff’s other subsidiary companies used the English name “IBKFFFFFFFFFF Corporation” as the English name “IBK Corporation”, and the already used the English name “IBKFF business Corporation” as the English name.

(B) Determination

According to the above facts, it is recognized that from December 1, 1987, the Plaintiff used “IBK” as the Plaintiff’s English abbreviation or service mark, but most of the details of the use were used within the scope of consumers who used documents (documents) for the Plaintiff’s transaction with foreign countries and materials for the Plaintiff’s internal documents or employees or limited scope of consumers. The mode of use was used mainly by corporate banks, which are the Plaintiff’s official Korean language title, and IBK, its English abbreviation, was used as a supplementary or incidental service. Moreover, it is difficult to view that IBK, its English abbreviation, as its main service mark, was used widely and continuously against the general consumers, it is difficult to view that prior use service mark was acquired at the time of application or registration of the instant registered service mark, or that it was known to the extent that it can be perceived as a specific person’s service mark or service business if it was a consumer or a trader in domestic ordinary trade.

(3) Sub-determination

The registered service mark of this case does not fall under Article 7(1)3, 6, and 9 through 11 of the Trademark Act without the need to examine other requirements, and it does not fall under Article 7(1)3, 6, and 9 through 11 of the Trademark Act, since it is difficult to view that prior-use service mark constitutes a well-known trademark in the Republic of Korea, or that prior-use service mark constitutes a well-known trademark in general transactions in Korea, even if it is not well-known or well-known.

B. Whether Article 7 (1) 4 of the Trademark Act is applicable

Article 8 of the Industrial Bank of Korea Act provides that "no person, other than the Bank, shall use the name of the Industrial Bank of Korea or any other name similar thereto," but the registered service mark of this case, which is composed of "IBK", cannot be deemed to fall under "the Bank or any other name similar thereto" as provided in Article 8 of the Industrial Bank of Korea Act, and it is difficult to regard the use of the service mark as provided in Article 8 of the Industrial Bank of Korea Act, and therefore, the registered service mark of

C. Whether it falls under Article 7(1)7 of the Trademark Act

(1) Whether the mark is identical or similar to the mark

The registered service mark of this case is a character trademark consisting of English persons, such as “”, and the registered service mark is a combination trademark consisting of letters and letters consisting of Korean character “stock companies” and “IBK Capital Corporation” and “IBK Capital Corporation” and “IBK Capital Corporation”, as in “,” respectively.

The pre-registered service mark is distinguishable from the English language and the English language portion in appearance, and not from the composition of a new concept through the combination thereof, and it cannot be deemed as an indivisible combination to the extent that it is natural in the transaction. Thus, the pre-registered service mark can be separated and observed only from the English language part. On the other hand, even in the case of separate observation by the English language part, the Capal is widely used as the word “company”, “company”, “company”, “company”, “company, etc., and there is no or weak distinctiveness in relation to the designated service business, “i.e., the designated service business,” and the pre-registered service mark can be separately observed only with IBK.

If the pre-registered service mark is separated from IBK only and named, that name is the same as the registered service mark of this case, and both marks are similar as a whole.

(2) Whether designated goods are identical or similar to the designated goods

The registered service mark of this case is "enterprise management and organization counseling, personnel management consultation, job placement, employee placement, professional business consultation, business management assistance, business management assistance, business management assistance, job information providing assistance, temporary manpower provision, human resources consulting, new employee recruitment service, data processing, advertising planning, advertising agency, advertising agency, advertising promotion, advertising promotion, advertising design, marketing, marketing, and marketing research business". The registered service mark of this case is "development financing business, international financial investment brokerage business, financial investment business, new technology financing business, loan financing business, capital investment business, mortgage financing business, mortgage collection agency business, investment financing business, credit business, installment financing business, etc." The registered service mark of this case falls under the "business related service business," and the designated service mark of this case falls under the "business related service business, such as company management, etc.," and the designated service mark of this case does not fall under the category of "business related service business, etc.", while the designated service mark of this case does not fall under the category of the service mark of the designated service mark, the designated service mark of this case does not fall under the designated service mark of this case.

The Plaintiff, as a matter of course, includes investment financing business, investment financing brokerage business, new technology venture capital business, etc. among the designated goods of prior registered service marks, includes corporate management and organization consultation business, professional business consultation business, etc. among the designated goods of prior registered service marks. Thus, the Plaintiff asserts that investment financing business, investment financing brokerage business, new technology venture capital business, etc. among the registered service marks of this case and corporate management and organization consultation business, professional business consultation business, etc. among the registered service marks of this case are similar service activities. However, even if the contents of investment financing business, investment financing brokerage business, corporate management and organization consultation business, and professional business consultation business, etc. are included in the contents of new technology financing business, investment financing brokerage business, and new technology venture capital business, etc., it is incidental to the registered service marks of this case without relation to the financial business, etc., as it differs from the details of business or service provision, it is difficult to view that the registered service marks of this case are identical and incidental to the registered service marks of this case, even if there is a close economic relation with the registered service marks of this case.

(3) Sub-determination

Therefore, although the registered service mark of this case and the registered service mark of this case are similar, their designated service business are not similar to each other, and thus, they do not fall under Article 7 (1) 7 of the Trademark Act.

4. Conclusion

Therefore, the registered service mark of this case does not fall under Article 7 (1) 3, 4, 6, 7, 9, and 11 of the Trademark Act, and there is no ground for invalidation of registration. The decision of this case, which is the same conclusion, is legitimate, and the plaintiff's claim for revocation of the decision is dismissed as it is without merit.

Judges Kim Yong-sub (Presiding Judge)