The difference between the method of determining “use of the registered trademark” under Article 73(1)3 and (4) of the Trademark Act and the method of determining whether the challenged mark is used as a trademark in the confirmation of the scope of the trademark right;

The purpose of the trademark registration cancellation trial system due to the non-use is to promote the use of a registered trademark and to impose sanctions on the non-use thereof. As such, the issue is whether a trademark right holder or a licensee can be deemed to have used a registered trademark based on his/her intent to use it as a mark distinguishing from other goods, and whether a general consumer or a trader can recognize it as the origin of goods is not a reason to determine whether the trademark is used. On the other hand, in the trial to confirm the scope of the right to a trademark right, it is decided by whether there is a concern that the effect of the trademark right identical or similar to the trademark in question on the trademark subject to confirmation is likely to mislead or confuse the origin of goods in trade. Thus, if ordinary consumers or traders recognize the trademark subject to confirmation as the design for food, and it is difficult to recognize it as the origin of goods, the challenged mark cannot be deemed to have been used as a trademark.

Articles 73(1)3, 73(4), and 75 of the Trademark Act

Plaintiff (Attorney Shin Young-young, Counsel for plaintiff-appellant)

Defendant (Law Firm Ilsan, Attorneys Lee Jae-soo et al., Counsel for the defendant-appellant)

Patent Court Decision 2012Heo3008 Decided August 24, 2012

The appeal is dismissed. The costs of appeal are assessed against the plaintiff.

The grounds of appeal are examined.

1. The lower court determined that the challenged mark does not fall under the scope of the right of the registered trademark of this case (trademark number omitted), on the ground that it is difficult for ordinary consumers or traders to recognize the challenged mark as a design and to recognize it as the source of goods, and thus, it cannot be deemed as a trademark used by the Defendant.

In light of the records, the judgment of the court below is just and acceptable. Contrary to the allegations in the grounds of appeal, the court below did not err by misapprehending the legal principles on determining the scope of trademark rights, thereby failing to exhaust all necessary

2. Meanwhile, Supreme Court Decision 201Hu4004 Decided May 9, 2012, which pointed out that the judgment of the court below was contrary to the above decision, is related to the case of cancellation trial of trademark registration due to non-use. Since the trademark registration cancellation trial system due to non-use is aimed at promoting the use of a registered trademark and imposing sanctions on non-use, it is problematic whether a trademark right holder or a user can be deemed to have used a registered trademark based on his/her intent to use the trademark as an identification mark of another product, and the determination of whether a general consumer or a trader can be recognized as the origin of a product does not constitute a ground to determine whether the trademark is used. On the other hand, in a trial to confirm the scope of a trademark right, the decision of the court below on the scope of a scope of a trademark right becomes final and conclusive by mistake or confusion about the trademark rights identical with or similar to the trademark mark, and therefore, it cannot be seen that the trademark registration is not recognized as a trademark subject to the judgment of the court below, as a case concerning the use of the origin of goods.

3. Therefore, the appeal is dismissed, and the costs of appeal are assessed against the losing party. It is so decided as per Disposition by the assent of all participating Justices on the bench.

Justices Park Poe-dae (Presiding Justice)