[1] Criteria for determining whether a registered trademark which is the subject of a request for a invalidation trial constitutes a trademark that is likely to deceive consumers under Article 7(1)11 of the former Trademark Act and the time of such determination (=the time of determining the registration of the registered trademark) / In such case, the standard to determine that “a person is aware of a specific person’s trademark or goods” and whether such a legal principle also applies to a service mark under Article 2(3) of the former Trademark Act (affirmative)

[2] In a case where the issue was whether Gap corporation’s trademark “,” “,” and “,” constitutes Article 7(1)11 of the former Trademark Act in relation to Eul’s registered service mark “,” the case holding that it is reasonable to deem that Gap corporation’s prior use marks were known to the extent that it could be recognized as a trademark of a specific person at least to consumers or traders in domestic general transactions prior to the date of decision on the registration of the above registered service mark

[1] In order for a trademark to be subject to a request for a registration invalidation trial to constitute a trademark that is likely to deceive consumers as prescribed by Article 7(1)11 of the former Trademark Act (wholly amended by Act No. 14033, Feb. 29, 2016; hereinafter “former Trademark Act”), other trademarks compared to the registered trademark or designated goods (hereinafter “pre-use trademark”) or products using such trademark should not be always recognizable, but at least if a trademark or products are used by consumers or traders in general transactions in the Republic of Korea, it should be known to the extent that it can be perceived as a trademark or products of a specific person. The determination should be based on the time of determining the registration of the registered trademark. In this context, in order to be recognized as a “trademark or product of a specific person,” the determination of whether a pre-use trademark has been recognized as a trademark of a specific person should be made always throughout the country, but should be made objectively based on the use period, method, mode and scope of use of the trademark, etc. in light of social norms.

[2] In a case where the issue is whether Gap corporation’s trademark “,” “,” and “” falls under Article 7(1)11 of the former Trademark Act in relation to Eul’s registered service mark “,” the case holding that Gap corporation’s prior use mark was known to the extent that it can be perceived as a trademark of a specific person at least for general consumers or traders in domestic business transactions until the date on which the registration of the above registered service mark was decided, considering various circumstances, such as the use period, method, and mode of the above prior use mark, the degree of advertising and public relations about the prior use mark, media report details, increase and decrease in sales, and perception of the same industry

[1] Article 7(1)11 of the former Trademark Act (wholly amended by Act No. 14033, Feb. 29, 2016) / [2] Article 7(1)11 of the former Trademark Act (wholly amended by Act No. 14033, Feb. 29, 2016)

[1] Supreme Court Decision 2004Hu1304 decided Jul. 28, 2006 (Gong2006Ha, 1567) Supreme Court Decision 2006Hu3113 decided Jun. 28, 2007 (Gong2007Ha, 1193)

Plaintiff (Law Firm currently, Attorneys Choi Gi-ray et al., Counsel for the plaintiff-appellant)

[Defendant-Appellee] The Securities and Exchange Act (Patent Attorney Lee Jin-chul, Counsel for defendant-appellee)

Patent Court Decision 2018Heo8395 Decided September 6, 2019

The judgment below is reversed, and the case is remanded to the Patent Court.

The grounds of appeal are examined.

1. If a trademark subject to a request for a registration invalidation trial is likely to mislead consumers as prescribed by Article 7(1)11 of the former Trademark Act (wholly amended by Act No. 14033, Feb. 29, 2016; hereinafter “former Trademark Act”), it should be known to the extent that it can be perceived as a specific person’s trademark or goods if it is a trademark or goods in domestic ordinary transactions at least if it is a specific person’s trademark or goods, and such determination ought to be based on the time of determining the registration of the registered trademark (see, e.g., Supreme Court Decisions 2004Hu1304, Jul. 28, 2006; 2006Hu313, Jun. 28, 2007; 2006Hu313, Jun. 28, 2007). In light of social norms, it should be objectively determined whether the trademark is used by the prior-use trademark or service mark to the extent that it is objectively known to consumers.

2. A. Review of the reasoning of the lower judgment and the evidence duly admitted by the lower court reveals the following circumstances.

1) On September 20, 2001, prior to the establishment of the Defendant, Nonparty 1 registered the business of online information provision business with the name of “weckh school,” and Nonparty 2, the Defendant’s spouse, and Nonparty 1’s representative director, began to engage in the business of buying and consulting and lending in full name from July 2005 to the same name. The prior-use marks consisting of Nonparty 1’s spouse and Nonparty 2, the Defendant’s representative director, have been used as marks indicating the source of the above service business from that time.

2) From July 2005 to January 19, 2012, the date of the decision to register the Plaintiff’s registered service mark (registration number omitted) of this case (hereinafter “Defendant side”) that was operated by Nonparty 2 (hereinafter “Defendant”) held a large-scale exhibition, theme of which was 23 times in Daegu-gu for a total of six years and six months. The names of the above fairs include the phrase “SACB”, and most of the notices and placards used during the event were marked as “SAB” and the subject of which the said exhibition was held was also marked as “SAB”, and the letters and photographs related to the said EXPO were also posted on the Internet.

3) From 2010 to 2011, the Defendant’s side advertised the above fairs, etc. through Daegu MBC TV and radio. In the above advertisement, the marks consisting of the Korean “New Venture” or “Weding Cool” were used. Among them, TV advertisements were sent in the middle and north area 121 days in 2010, and three times in 20 to 30 seconds each day in 20 days in 201, and the total advertising cost was KRW 77,00,000 in 77 to 30 seconds each day in 20 days in 201, respectively. In addition, the Internet news contents, prior to the above EXPO event, introducing the Defendant as a consulting company in Daegu and Northern area, were also published several cases on the Internet around that time.

4) From 2006 to 2011, a considerable number of married people in the Daegu-Gyeongbuk area used the Defendant’s services through marriage consultation with the Defendant or trading contract with the Defendant. During the same period, the Defendant’s sales have continuously increased every year as KRW 176,519,512 in 206, 2007, KRW 255,392,402 in 277,572,595 in 2008, KRW 26,653,096 in 209, KRW 539,73,823 in 201, KRW 598,591,347 in 2006.

5) Around December 2009, the Defendant’s side has actively engaged in various social activities, such as the agreement on industry-academic cooperation with the Daegu Arts University, the agreement on October 18, 201 with the Daegu Branch of the Korea Health Care Association to cooperate in various health-related projects in the Daegu District, and the agreement on December 201 with the Daegu Arts University.

6) Mans of the employees of the same industry in Daegu and North Korea stated to the effect that prior-use marks were considerably known as Defendant’s source marks in Daegu and North Korea around the date of decision on the registration of the instant registered service mark.

7) If an Internet portal site establishes and searches a “weckh school” as a key page, it is confirmed that the sign was first used from the time when the sign was used to the time of the registration decision of the instant registered service mark, to the time of the registration decision of the instant registered service mark, and most of them are the content that the Defendant’s employees publicize the Defendant’s business or fair holding on the Defendant’s side, or that the Defendant’s employees who used the Defendant’s services and engage in the EXPO expressed their sense of appreciation and rear.

B. Examining the aforementioned circumstances in light of the legal principles as seen earlier, such as the period and method of use of the prior-use mark and the pattern thereof, the degree of advertising and publicity of the prior-use mark, the details of press reports, the increase and decrease in sales, and the perception of the same industry, it is reasonable to deem that the prior-use mark of the Defendant side was known to the extent that it can be recognized as a trademark of a specific person at least to consumers or traders in domestic general transactions around the date of the decision on the registration of the instant registered service mark.

3. Nevertheless, the court below held that the registered service mark of this case does not fall under Article 7 (1) 11 of the former Trademark Act in relation to the prior use mark, on the ground that the prior use trademark is well known to consumers or traders of the designated goods of the registered trademark in the Republic of Korea as a specific person's trademark or goods, and even if the prior use of the prior use trademark is limited to a domestic area, it shall be deemed to be well known when the prior use trademark viewed as a specific person's trademark or goods as a whole when the domestic consumers or traders of the designated goods of the registered trademark were viewed as a specific person's trademark or goods. The prior use mark cannot be deemed to be recognized as a specific person's trademark or goods at the time of the decision on the registration of the registered service mark of this case. In so doing, the court below erred by misapprehending the legal principles on "a trademark likely to mislead consumers" under Article 7 (1) 11 of the former Trademark Act, which affected the conclusion of the judgment. The ground of appeal

4. Therefore, the lower judgment is reversed, and the case is remanded to the lower court for further proceedings consistent with this Opinion. It is so decided as per Disposition by the assent of all participating Justices on the bench.

Justices Park Jung-hwa (Presiding Justice)