[1] Requirements for becoming a challenged mark in a trial to confirm the scope of a trademark right

[2] The case holding that a trial decision by the Intellectual Property Tribunal which dismissed the request for a trial was unlawful even though the mark subject to confirmation is not specified in the active trial to confirm the scope of a trademark right

[1] Generally, a trial to confirm the scope of a trademark right is a trial to confirm whether a specific trademark (the mark subject to confirmation) mainly falls under the scope of a right of a registered trademark. Due to the characteristics of a trial to confirm the scope of a registered trademark, there is a need for a specific interest to immediately confirm legal disputes. Accordingly, the mark subject to confirmation should be the same

[2] The case holding that the Korean Intellectual Property Tribunal's trial decision dismissing a request for a trial even if it was ordered to correct the description of the challenged mark or dismissed the request for a trial on the grounds that it is not possible to determine whether the scope of the right is attributed to any mark accurately because the description of the request for a trial cannot be confirmed by itself such as the statement of the request for a trial

[1] Article 75 of the Trademark Act / [2] Article 75 of the Trademark Act

Dao-si Co., Ltd. (Patent Attorney Ahn Young-young, Counsel for defendant-appellant)

Practical Tech Co., Ltd. (formerly changed: Real Character Co., Ltd.) (Patent Attorney Jeong Dong-young et al., Counsel for the defendant-appellant)

March 31, 2005

1. The decision made by the Intellectual Property Tribunal on December 20, 2004 on the case No. 1160 dated 2004 shall be revoked;

2. Litigation costs shall be borne by the plaintiff.

Text 1 and Costs of lawsuit shall be borne by the defendant.

1. Basic facts

A. The Plaintiff is the right holder of the instant registered trademark with the following content.

(1) Marks:

(2) Date of application/registration date/registration number: November 21, 1991/ February 3, 1993 (Renewal of February 13, 2003)/No. 258173

(c) Designated goods: Cpanty, compact, spanty, spanty, painting, spande, strawer, twits, tyrese, tpanty spane, panty spande in the context of continuous panty, compacta, spande, etc. (Classification of Goods No. 25)

‘Agricultural-gradation, simplification, gludation, gludation, etc.' (Classification of Goods No. 25, May 14, 2004)

B. The Plaintiff asserted that, similar to the registered trademark of this case, the challenged mark ("INTSA") used by the Defendant on the goods in question may cause mistake and confusion in the origin of the goods, and that it falls under the scope of the right of the registered trademark of this case as a mark being used under the intention to easily recognize the well-knownness of the registered trademark of this case and filed a petition for confirmation of the scope of right.

C. In full view of the contents of the professional language mark related to clothing on December 20, 204 after reviewing it as 2004Da1160, the Korean Intellectual Property Tribunal "INTASI" in relation to clothing, such as horses, constitutes a "satisfism" after Manasty from Manas in textile industry, fashion industry, clothing industry, etc., and a "satisfia of Manas (INLY)" as an organization method in which a pattern or pattern is inserted in a pattern in a pattern such as two horses, etc., and as such, it constitutes "the composition method of the trademark in this case" and "the technical skill of the trademark in this case 90 Ma140 Manasat," and thus, it constitutes "the technical skill of the trademark in this case, 90 Ma10 Manas and the trademark in this case, which is the first 9 Mana's 9 Mana's 9 Mana's 2 Manas Mana 12 Ma.

【Evidences Nos. 1 and 2, and the purport of the whole pleadings

2. Summary of the grounds for revocation of the Plaintiff’s trial decision

A. Whether a trademark constitutes a technical mark shall be determined according to the transaction situation of the relevant goods in Korea. The registered trademark of this case is widely known well-known trademark between major consumers, such as the weekends, etc., which is the designated goods, and its meaning cannot be easily known to ordinary consumers. Nevertheless, the instant trial decision is a professional technical language that can only be known by the “INTRASA” in the English advance, etc., but it is widely used as a method of production or processing in the trade industry related to both horses, since it is widely used to refer to the shape of goods, such as the pattern or pattern of both horses, etc., and thus, it goes against the standard of determination as to whether the trademark falls under the technical mark.

B. Although the mark for which the plaintiff requested confirmation of the scope of rights is identical to the attached Form 1., the trial decision of this case is a technical mark based on the "INTASIA" indicated in attached Form 2. The judgment of this case is erroneous in holding that the challenged mark does not fall under the scope of the right of the registered trademark of this case.

3. Determination on the legitimacy of the instant trial decision

The Defendant asserted to the effect that the Plaintiff’s petition for the confirmation of the scope of rights of the instant case did not confirm the Defendant’s trademark subject to the confirmation, and thus, the Plaintiff’s petition is unlawful.

Generally, a trial to confirm the scope of a trademark right is a trial to confirm whether a certain trademark (the mark subject to confirmation) falls under the scope of a right of a registered trademark, and due to the nature of the trial to confirm the scope of a right. Therefore, the mark subject to confirmation must be the same as the mark actually used or intended to be used.

In this case, the plaintiff filed a claim to confirm the scope of the right of the trademark of this case, as shown in attached Form 1, and only "INTRASI" composed of "INTSA" as "INTSA," which is used for goods. Even if the same "INTSSIA" is used independently or together with other marks (as described in attached Form 2.), there may be cases where the mark is used (as described in attached Table 2.), and depending on each case, the determination of whether the mark falls under the technical mark indicating the production method or processing method of the designated goods and the scope of the right of the registered trademark of this case may vary. The above specification of the challenged mark alone, namely, whether the mark intended to confirm the scope of the right of the trademark of this case is an accurate subject of any mark, or not "INTSASIA" as stated in attached Table 2. If the plaintiff did not independently use the mark in the above case or if it is not found that the mark is used separately or separately from the date for pleading 2.

Thus, in the procedure to confirm the scope of rights of the trademark in this case and the procedure of the trial decision thereof, because the challenged mark is not clearly specified as above, it is not possible to determine whether the challenged mark is the same as the mark that the defendant intends to actually use or use, and whether it falls under the scope of the right of the trademark in this case. Thus, the Korean Intellectual Property Tribunal shall take measures such as ordering the correction of the specification of the challenged mark, and if the challenged mark is not clearly specified, it should have dismissed the plaintiff's request for adjudication on the scope of right. Thus, without taking such measures as above, the decision of this case which judged that the "INTRSIA" displayed on the two-end Stands Standts sold by the defendant refers to the "INTRASA" as shown in attached Form 2, and it is unlawful to determine that the challenged mark falls under the scope of the right of the trademark in this case.

4. Conclusion

Thus, the decision of this case is unlawful since the challenged mark was made in a state where the challenged mark is not specified, and the litigation costs are to be borne by the plaintiff in consideration of the trial decision of this case and the circumstances leading to the lawsuit. It is so decided as per Disposition.

Judges Park Dong-dong (Presiding Judge)