2018Heo247 Nullification of Registration (Trademark)

A Stock Company

Law Firm Sung (Law Firm Sung, Counsel for defendant-appellant)

Attorney Kim In-soo

B

May 1, 2019

May 31, 2019:

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 September 7, 2018 on the case No. 2017Da1435 shall be revoked.

1. Basic facts

A. The registered trademark of this case

1) Trademark registration number / filing date, registration date: C/D/E

A person shall be appointed.

3) Designated goods: cosmetics for eyebrow, shot, maca, Meak, cosmetics, bathing cosmetics, bath cosmetics, hand-to-saws, cosmetics for skn's care, cosmetics for human body direction-setting (in numbers), social mispers for human body, cliff cosmetics for physical fluids, paints and bloaks, paints and bld cosmetics for handbrows, handbrows, hacks, ebbs, ebbs, cremations, knicks, cremation standards, cosmetics; b. service marks registered on board;

(a) The filing date of the trademark registration number: FI GI H

A person shall be appointed.

(c) Designated service business: Sales business of cosmetics of category 35, and sales agency business of cosmetics of category 35, classified into service business;

4) Person Entitled to register: Plaintiff

C. Details of the instant trial decision

1) The Plaintiff asserted that “The instant registered trademark is identical or similar to the prior registered service mark and concept, and its designated goods and service business are similar, and thus, the Plaintiff falls under Article 7(1)7 of the former Trademark Act (amended by Act No. 1403, Feb. 29, 2016; hereinafter referred to as the “former Trademark Act”) and filed a petition for a trial to invalidate the registration of the instant registered trademark.”

2) After examining the above request for a trial on September 7, 2018, the Korean Intellectual Property Tribunal rendered a decision to dismiss the plaintiff's request for a trial (hereinafter referred to as "the decision of this case") on the ground that "the registered trademark of this case does not fall under Article 7 (1) 7 of the former Trademark Act," on the following grounds: although the registered trademark of this case is partially similar to the registered service mark of this case, there are differences in appearance and concept to the extent that it is clearly distinguishable from appearance, and it is difficult to view it as a similar mark since it is used in the same or similar service business together with the same or similar service business."

【Grounds for Recognition】 The descriptions of evidence Nos. 1, 2, 3, and 4, and the purport of the whole pleadings

2. Summary of the plaintiff's assertion

A person shall be appointed.

Although there is a difference in the name, the concept is identical to ‘natural friendship', and the plaintiff used the name of the plaintiff company as ‘Nure’s English before the filing date of the trademark of this case, and considering such transaction circumstances, if the registered trademark of this case is used together with goods identical with or similar to the designated service business of the prior-registered service mark, there is a risk of misconception or confusion about the source of the goods, and thus both marks are similar. Accordingly, the registered trademark of this case should be deemed to fall under Article 7(1)7 of the former Trademark Act, but the decision of this case is unlawful with its conclusion differently.

3. Whether the registered trademark of this case constitutes Article 7 (1) 7 of the former Trademark Act

A. Criteria for judgment

The similarity of trademarks shall be determined by whether there may be misconceptions or confusions as to the origin of goods in trade, on the basis of an objective, overall, and external perception that ordinary consumers or traders feel the trademark by observing the appearance, name, and concept of two trademarks used for the same kind of goods. Even if one of the external appearance, name, and concept is similar, if it is possible to avoid confusion as to the origin clearly, it cannot be deemed a similar trademark (see, e.g., Supreme Court Decisions 97Hu146, Apr. 24, 1998; 2008Hu1395, Oct. 9, 2008). In addition, considering today’s broad distribution of advertisement, publicity media, telephone, etc., such as broadcasting, etc., in determining the similarity of trademarks, the most important element of the similarity of the trademark after the declaration is 305 after the declaration (see, e.g., Supreme Court Decision 2005Hu575, Oct. 25, 2005).

B. Whether the registered trademark of this case and the prior registered service mark are similar to the registered service mark

1) Whether the mark is similar

A) External appearance

'Nure's 'Friend' is a letter composed of English and line.

A person shall be appointed.

It is a combination mark. Accordingly, both marks are different from each other due to the difference between the existence of a combination of English and Korean and diagrams.

B) Preparation for title:

In light of the level of English propagation in Korea, the registered trademark of this case is naturally named as 'Neman Feman' to ordinary consumers or traders. On the other hand, prior registered service marks may be named as 'the exclusion of nature' according to the Korean text. Accordingly, the name of both marks is different.

C) Preparation for concepts

The registered trademark of this case is linked to the ownership of ‘friend' with the intention of ‘natural'. In light of the level of English distribution in Korea, it seems that ordinary consumers or traders can easily recognize that the registered service mark is ‘natural friendship'. The registered service mark of this case is similar to that of ‘natural' and seems to be regarded as ‘natural friendship' connected to the ownership of ‘natural friendship'. Accordingly, the registered service mark of this case is identical or similar to the registered service mark of this case.

D) According to the above comparison as a result of comparison, although the registered trademark of this case is identical or similar to the prior registered service mark and concept, the name, which is the most important factor in determining the similarity of the text trademark, is different from the name, which is the most important factor in determining the similarity of the text trademark, even in the appearance of the registered trademark.

A person shall be appointed.

In light of the fact that the Plaintiff’s products are searched at the time of entering “nure”s friendccos” into I, which is a search portal site that appears to be intended for foreign consumers or customers (the Plaintiff submitted as reference material on April 22, 2019, No. 17-1, and No. 2). It is difficult to recognize that domestic consumers or traders refer to the service mark as “Neur fren d..................” This is mainly an advertisement or sale of the Plaintiff’s products as a trademark called “nur d................, the Plaintiff submitted as reference material on April 22, 2019).

Therefore, even if both marks are used in a similar product or service business, it is difficult to deem that there is a concern for ordinary consumers or traders to mislead or confuse the source of goods. Ultimately, the instant registered trademark is difficult to be deemed similar to the prior registered service mark.

2) As a result of the review, it is difficult to view the registered trademark of this case as similar to the prior registered service mark and mark, and even without examining the similarity of the designated goods and service business, it cannot be deemed that there exists any ground for invalidation of registration falling under Article 7(1)7 of the former Trademark Act in relation to the prior registered service table.

4. Conclusion

Therefore, the decision of this case that held that the registered trademark of this case cannot be deemed to exist as a ground for nullification of registration under Article 7 (1) 7 of the former Trademark Act is just, and the plaintiff's claim for revocation is dismissed as it is without merit. It is so decided as per Disposition.

The judges of the presiding judge;

Judges Does

Judges Lee Jin-hee

(1) Supreme Court Decision 92Hu2120 Decided July 13, 1993; Supreme Court Decision 96Hu931 Decided February 28, 1997; Patent Court Decision 2005Hu5952 Decided October 21, 2005

Supreme Court Decision 2005Hu3314 Decided March 10, 2006, rejection of trial non-speed) and Patent Court Decision 2009Hu7505 Decided January 14, 2010 (Supreme Court Decision 2009Hu7505 Decided May 27, 2010)

J. 2010Hu517, 2010, 2013 Patent Court Decision 201Hu10303 decided March 3, 201, 201, see, e.g., Supreme Court Decision 2012Hu10303 decided March 21, 20