[1] Where the other party's trademark is a registered trademark, whether the other party's trademark belongs to the scope of his/her right (negative) and the standard point of time to determine whether the other party's trademark is unlawful and whether the other party's trademark has legal requirements

[2] A trademark within the scope of identity with the mark "(a)" after an adjudication is rendered

The case holding that "in the case of registration, (a) a mark does not have a profit to seek the revocation of a trial decision which held that (a) a mark falls under the scope of rights of the registered trademark because it is inappropriate to seek the confirmation that the mark falls under the scope of rights of the registered trademark."

[1] The confirmation of the scope of a right to a trademark is confirmed based on the registered trademark that a non-registered trademark does not actively or passively belong to the scope of the right to the registered trademark. Therefore, even if the trademark of the other party is identical or similar to the prior registered trademark of the other party, it cannot be asserted that the other party's trademark belongs to the scope of the right to the registered trademark even if it is identical or similar to the petitioner's prior registered trademark, but the other party's trademark cannot be asserted the invalidation until the judgment on invalidation becomes final and conclusive according to the procedure prescribed in the Trademark Act, but a petition seeking confirmation that the other party's registered trademark belongs to the scope of his/her right to the registered trademark is inappropriate. Meanwhile, a petition seeking confirmation that the other party's registered trademark belongs to the scope of the right to the registered trademark shall be determined based on the law and fact-finding situation at the time of the decision. In principle, the determination of illegality of a trial decision by the Intellectual Property Tribunal shall be made based on the determination based on the facts that occurred only after the trial decision was rendered.

[2] A trademark within the scope of identity with the mark "(a)" after an adjudication is rendered

The case holding that "in the case of registration, (a) a mark does not have a profit to seek the revocation of a trial decision which held that (a) a mark falls under the scope of rights of the registered trademark because it is inappropriate to seek the confirmation that it falls under the scope of rights of the registered trademark "."

[1] Article 75 of the Trademark Act, Article 27 of the Administrative Litigation Act / [2] Article 75 of the Trademark Act

[1] Supreme Court Decision 92Hu605 delivered on October 27, 1992 (Gong1992Ha, 3302) Supreme Court Decision 98Hu1921 delivered on May 8, 2001, Supreme Court Decision 99Hu2211 delivered on April 12, 2002

UNNS Co., Ltd. (Law Firm Hanyang Patent, Patent Attorney Kim Young-chul et al., Counsel for the defendant-appellant)

Pacific Co., Ltd. (Law Firm Dakel, Attorneys Kim Young-chul et al., Counsel for the defendant-appellant)

December 18, 2003

1. The instant lawsuit shall be dismissed.

2. Litigation costs shall be borne by the plaintiff.

The decision made by the Intellectual Property Tribunal on July 1, 2003 on the case No. 2002Da3009 shall be revoked.

1. Basic facts

In full view of the whole purport of the pleadings, the following facts can be acknowledged in the statement Nos. 1 and 2.

A. Registered service mark of this case

(a) Registration number: No. 129799;

(2) Date of application / Date of registration: September 4, 1985 / September 2, 1986 (registration for renewal of February 18, 1997)

(3) Marks

(4) Person entitled to registration: Defendant

(5) Designated service business: Bobrushes, brushes, brushes, clean oil refinings, shampoos and prinses, tax amount, medicinal shampoos, pharmaceutical brushes, powder brushes, and chemical equipment brushes [Attached 13 of the former Enforcement Rule of the Trademark Act (amended by the Ordinance of the Ministry of Trade, Industry and Energy No. 83 of Feb. 23, 198)]

(a) The mark;

(1) Marks:

(2) Goods used: earth and sand, mar, cream, e.g., e., e., e.g., e., e.

C. Details of the instant trial decision

(A) The defendant (a) can be called 'SP △△' only by 'SP △△△', and the mark is identical in the name, title, and concept of 'SPA', a single part of the registered trademark of this case, and the goods using the mark are similar to the designated goods of the registered trademark of this case, and thus, the Korean Intellectual Property Trial and Appeal Board (the Korean Intellectual Property Trial and Appeal Board) requested an affirmative trial to confirm the scope of the right of the registered trademark of this case. On July 1, 2003, the Korean Intellectual Property Trial and Appeal Board (the Korean Intellectual Property Trial and Appeal Board) reviewed it as 202Da309

D. Summary of the grounds for the instant trial decision

The registered trademark of this case can be seen and observed separately from the figure part and the letter part, and the (Ga) mark can also be separated and observed as ‘SP △△△' part and ‘SP △△' part, and among them, the above part can be referred and conceptualized as ‘SP △△'. Thus, both trademarks are identical trademarks with their names and concepts, and 'SPA' cannot be deemed as marks indicating the general nature of the designated goods of the registered trademark of this case or trademarks with a conspicuous geographical name. In addition, goods using the designated goods of the registered trademark of this case are similar goods with their use, quality, shape, consumers, and place of sale. Accordingly, (Ga) marks belong to the scope of the right to the registered service mark of this case.

2. The party's assertion as to the legitimacy of the trial decision of this case

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

(1) The lawsuit of this case shall be dismissed on October 31, 2003 inasmuch as the trademark "(a) which is identical to the mark (hereinafter referred to as "non-party registered trademark") was registered on October 31, 2003 and the defendant's claim for the confirmation of the scope of right has no interest in confirmation.

(2) The mark (a) does not fall under the scope of the right of the instant registered trademark for the following reasons.

① Since the “SPA” of the instant registered trademark is widely known to the effect that “the hot spring water”, “the hot spring water”, and “the effect of drinking spring water through mineral water” in general trade areas, it is a mark generally indicating the ingredients, efficacy, etc. of raw materials in relation to “SPA” as well as a mark widely known to the general public under a conspicuous geographical name indicating the world’s recreational site in the Belgium, which is well-known as hot spring, so the similarity of two trademarks cannot be determined by comparing the “SPA” and “SP △△△△△△△△△△△△” of the instant registered trademark.

2. (A) The mark's "SP △△△△" cannot be recognized as the "SPA" and even if it is recognized as such, the "SPA" is a conspicuous geographical name and indicates the quality, efficacy, etc. of the goods in a common way as seen in the above paragraph (a). Thus, the effect of the trademark of this case does not extend in accordance with Article 51 (2) and (3) of the Trademark Act.

③ (A) The mark is not divided into “Relax” and “SP △△△△△” and, as a whole, it is the name and concept of “SPA” or “SP △△”, it is not similar to the registered trademark of this case, which is the combined trademark of the shape of trees and the letters of “SPA” and “Sphs.”

(4) Goods using a mark indicating the designated goods (a) of the registered trademark of this case are not similar to each other because their shape, use, sales sector, scope of consumers, etc. are different.

B. Defendant’s assertion

(1) The non-party registered a trademark is a type of trademark "Relax △△△△△, the first letter written in a square figure and the remainder, which is a small letter, and is not identical to the mark (a) and is not immediately identical to the mark (a), and whether there is a benefit to file a claim for the confirmation of the scope of a trademark shall be determined at the time of the trial decision. Thus, the lawsuit of this case cannot be deemed unlawful on the ground that the non-party registered the trademark after the decision of this case.

(2) The registered trademark of this case can be divided into diagrams and letters, and the SPA mark of the letter can not be deemed as a mark that generally indicates the ingredients, efficacy, etc. of the designated goods or a mark that is composed solely of a conspicuous geographical name. (a) The mark is divided into "Relax" and "SP △△△△" and "SP △△△" can be recognized as "SPA", and the mark of this case is similar to the registered trademark of this case and the goods using the mark of (a) mark of this case are similar to the goods using the designated goods of the registered trademark of this case. Thus, the mark of this case falls under the scope of the right of the registered trademark of this case.

3. Determination on the legitimacy of the instant lawsuit

A. Criteria for determination

Since confirmation of the scope of rights to a trademark is confirmed to be that a non-registered trademark falls actively or passive within the scope of the right to the registered trademark, it is unlawful to seek confirmation that the content of the other party's trademark falls within the scope of the right to the registered trademark even if the other party's prior registered trademark is identical or similar to that of the other party's prior registered trademark. However, it cannot be asserted that the other party's trademark falls within the scope of the right to the registered trademark until a final decision on invalidation becomes final and conclusive in accordance with the procedure prescribed in the Trademark Act. Thus, a petition seeking confirmation that the other party's registered trademark falls within the scope of his/her right to the registered trademark is unlawful (see Supreme Court Decision 92Hu605 delivered on October 27, 1992, and, in principle, Supreme Court Decision 90Hu98197 delivered on April 12, 2002). Meanwhile, a petition seeking confirmation that the other party's registered trademark falls within the scope of his/her right to the registered trademark should be determined based on the facts that occurred only after the decision.

B. Facts of recognition

According to the evidence Nos. 42, A43-1 through 3, A44-46 of the evidence, the fact that the trademark right of the above trademark is transferred or registered to the Plaintiff on Nov. 19, 2003, which was after the trial decision of this case was rendered by the non-party registered as the trademark right holder. The fact that the trademark right of the above trademark is transferred or registered to the Plaintiff on Nov. 28, 2003, which was subsequent to the trial decision of this case.

(c) Markets:

Therefore, the non-party registered trademark is a trademark consisting of a combination of figures and letters, and the "Relax △△△△△, a part of the text, is the first letter only, and the remainder is both the small letter and all, and the mark is not at all. Although the figure of the square type is different from the mark (Ga), it cannot be said that the name or concept of the trademark is changed solely on the ground that the figure of the square type is merely a lele that has no distinctive character, and that the size of the letter has not been changed or kept. Therefore, both trademarks should be deemed the same trademark in light of the norm of the trade society.

Therefore, seeking confirmation that the mark falls under the scope of the right of the registered trademark of this case is in substance and there is no interest in confirmation because the mark falls under the active scope of the right that the non-party registered belongs to the scope of the right of the registered trademark of this case. The decision of this case which did not dismiss the claim for confirmation of scope of right on the ground that the non-party registered the registered trademark of this case was not registered at the time of the decision of this case, but it is not unlawful to seek confirmation that the mark falls under the scope of the right of the registered trademark of this case. Accordingly, it is reasonable to view that the lawsuit of this case does not fall under the interest to seek confirmation of the right of the registered trademark of this case where the mark falls under the scope of the right of the registered trademark of this case. Thus, the lawsuit of this case is unlawful (the defendant is not entitled to a confirmation of scope of right of the non-party registered trademark of this case as it becomes invalid immediately, but the plaintiff's claim cannot be asserted to the effect that the trial decision of this case cannot be confirmed by the procedure of trademark registration of this case.

4. Conclusion

Therefore, it is so decided as per Disposition by the assent of all participating Justices.

Judges Of Kimchi (Presiding Judge)