[1] Validity of a decision on cancellation of trademark registration, and whether infringement of trademark rights committed prior to the final and conclusive decision on the trial (affirmative)

[2] The purpose of limiting the effect of a trademark consisting solely of a mark indicating, in a common way, the ordinary name of the goods under Article 51 subparagraph 2 of the former Trademark Act, and the standard for determining whether a specific trademark has become a common name of the designated goods or a public trademark

[3] The meaning of "a trade name under Article 51 subparagraph 1 of the former Trademark Act shall be indicated in a common way in the common use of the trade name," and whether the effect of a trademark right where a corporate company omits a part of its trade name when it indicates the kind of company's trade name (affirmative with qualification)

[4] The case affirming the judgment of the court below holding that the defendants' use of "TAENAM SPSX" or "TAEM SPSX" is merely an abbreviation of trade name, not an indication of trade name itself, and it cannot be seen as an abbreviation of trade name

[1] Even if there are grounds for cancellation of registration under Article 73 (1) 3 of the Trademark Act, the right to the registered trademark is held until a trial becomes final and conclusive, and if a trial decision revoking the trademark registration becomes final and conclusive unlike the time a trial decision to invalidate the registration becomes final and conclusive, the trademark right is extinguished only in the future from the time the final and conclusive decision becomes final and conclusive (Article 73 (7) of the Trademark Act). Thus, even if a trial decision to revoke the registration of the registered trademark becomes final and conclusive, it does not affect whether

[2] Article 51 subparagraph 2 of the former Trademark Act (amended by Act No. 7290 of Dec. 31, 2004) limits the effect of a trademark consisting solely of a mark indicating in a common way the ordinary name of goods is a name of a specific kind of goods, and thus it is generally used. Therefore, in essence, allowing a specific person to exclusive use of the trademark because of the lack of distinguishability of goods from the ordinary name of goods of a specific kind. Thus, the purpose of this trademark is to ensure that it does not affect the effect of a trademark right in a common way even if the trademark is registered by a specific person, and whether a trademark is a trademark consisting of a common name or common use of the designated goods, it shall be determined in accordance with the actual transaction situation of the goods in that country, and it shall be determined with careful consideration as to whether it constitutes exceptional cases where it is necessary to sacrifice the interests of the trademark right holder and the interests of general consumers under the business reputation of the trademark.

[3] According to the main sentence of Article 51 subparagraph 1 of the former Trademark Act (amended by Act No. 7290 of Dec. 31, 2004), a trademark indicating his trade name or the well-known abbreviation of his trade name in a common way shall not have the effect of a registered trademark right unless it is used for the purpose of unfair competition after the registration of establishment of the trademark right was made, and "the trade name shall be indicated in a common way," and "the trade name shall be expressed in a common way," without a special distinctive character, such as a unique letter, color, or design letter, and it shall be premised on the premise that the trademark can be viewed as a trade name and the ordinary consumer can be recognized as a trade name. Thus, if a company has omitted the part indicating the company's type while indicating its trade name, unless it is widely known, it shall not be deemed that the company's trade name is used in a common way, and even if it is merely an abbreviation of the trade name, it shall not have the effect of the trademark right.

[4] The case affirming the judgment of the court below holding that the defendants' use of "TAENAM SPSX" or "TAEM SPSX" is merely an abbreviation of trade name, not an indication of trade name itself, and it cannot be seen as an abbreviation of trade name

[1] Articles 73(1)3, 73(7), and 93 of the Trademark Act / [2] Articles 6(1)1 and 51 subparag. 2 of the former Trademark Act (amended by Act No. 7290 of Dec. 31, 2004) / [3] Article 51 subparag. 1 of the former Trademark Act (amended by Act No. 7290 of Dec. 31, 2004) / [4] Article 51 subparag. 1 of the former Trademark Act (amended by Act No. 7290 of Dec. 31, 2004)

[1] Supreme Court Decision 96Do1122 delivered on October 25, 1996 (Gong1996Ha, 3495)/ [2] Supreme Court Decision 92Hu414 delivered on November 10, 1992 (Gong1993Sang, 113), Supreme Court Decision 2002Da6876 delivered on January 24, 2003 (Gong2003Sang, 711)// [3] Supreme Court Decision 97Hu2927 delivered on January 18, 200 (Gong200Sang, 484), Supreme Court Decision 200Hu3708 delivered on March 23, 2001 (Gong201Sang, 1052)

Defendant 1 and one other

Defendants

Seoul Central District Court Decision 2005No1007 Decided June 22, 2005

All appeals are dismissed.

1. Even if there are grounds for cancellation of registration under Article 73(1)3 of the Trademark Act (amended by Act No. 7290 of Dec. 31, 2004; hereinafter the same), the trademark right is held as a right of the registered trademark until the cancellation of registration becomes final and conclusive, and if a trial decision revoking the trademark registration becomes final and conclusive differently from the time a trial decision to invalidate the trademark registration becomes final and conclusive, the trademark right is extinguished only in the future from the time the decision becomes final and conclusive (Article 73(7) of the Trademark Act). Thus, even if a trial decision to revoke the registration of the registered trademark becomes final and conclusive, it does not affect whether the trademark infringement committed prior to the decision becomes final and conclusive (see Supreme Court Decision 96Do122, Oct. 25, 1996)

Therefore, even if the decision of revocation of the registration of the service mark of this case becomes final and conclusive after the defendants' infringement and the registration is revoked, it cannot be deemed that the crime of violation of the Trademark Act has an impact on the establishment of crime. The argument in the grounds of appeal pointing out this error is not acceptable.

2. Subparagraph 2 of Article 51 of the Trademark Act limiting the effect of a trademark consisting solely of a mark indicating, in a common way, the ordinary name of the goods is the name of the goods of a specific kind, and therefore, it is generally used. Therefore, in essence, it is inappropriate to allow a specific person to use the trademark monopolyly and freely, and it is necessary to allow any person to use the trademark regardless of the distinctiveness of other goods. As to such mark, the purpose of the trademark is to ensure that the trademark right does not become effective (see Supreme Court Decision 2002Da6876, Jan. 24, 2003) while indicating, in a common way, the trademark in a common name or common use of the designated goods is determined according to the trade situation of the goods in that country, and whether the trademark is intended to be used shall be determined with careful consideration of whether it constitutes exceptional cases where it is necessary to sacrifice the interests of a trademark right holder and the interests of general consumers by means of business credibility (see Supreme Court Decision 190Hu14, Dec. 14, 1994).

The court below acknowledged the facts in its reasoning based on its adopted evidence, and held that "SPREX", the registered service mark of this case, cannot be deemed to have been generally named, and therefore, the defendants' use of similar "TAENAM SPSX" or "TAESTX" mark cannot be deemed to constitute a case under Article 51 (2) of the Trademark Act. In light of the above legal principles and records, the court below's above fact-finding and decision are just and acceptable, and there is no violation of law as to the interpretation and application of Article 51 (2) of the Trademark Act, as otherwise alleged in the ground of appeal.

3. According to the main sentence of Article 51 subparagraph 1 of the Trademark Act, a trademark indicating one's trade name or a well-known abbreviation thereof in a common way shall not have the effect of a registered trademark right, unless it is used for the purpose of unfair competition after the establishment of the trademark right is registered. Here, "the trade name shall be indicated in a common way," and "the trade name shall be indicated in a common way," without any special distinctive character, such as a unique character, character, color, design character, etc., and it shall be based on the premise that the general consumer can recognize the trade name, unless it is widely known. Thus, if a corporate company omits a part of its trade name while indicating the trade name, it cannot be deemed that the general consumer can recognize the trade name, and it cannot be deemed that the trade name of the company is ordinarily used, and such abbreviation is merely an abbreviation of the trade name, unless it is widely known.

In the same purport, the court below held that the defendants' use of "TAENSex" or "TAENM SPTRTSX" is merely an abbreviation of trade name, not a trademark indicating its trade name itself, and it does not constitute an abbreviation. In light of the above legal principles and records, the above judgment of the court below is just and acceptable, and there is no violation of law as to the interpretation and application of the main sentence of Article 51 (1) of the Trademark Act, as alleged in the grounds for appeal.

Furthermore, the court below held that even if the defendants' act constitutes a case in which they usually use their trade name, the defendants still have the effect of the right to registered service mark of this case under the proviso of Article 51 subparagraph 1 of the Trademark Act since there was an objective of unfair competition. This is merely a family and additional judgment, and it does not affect the conclusion of the judgment even if there is any error as otherwise alleged in the ground of appeal.

4. Therefore, all appeals are dismissed. It is so decided as per Disposition by the assent of all participating Justices on the bench.

Justices Kim Yong-dam (Presiding Justice)