[1] Whether the affirmative confirmation of the scope of a trademark subject to confirmation, which is another person’s “registered trademark,” is legitimate (negative), and in such case, whether the trademark subject to confirmation is included in the “mark subject to confirmation of a registered trademark,” which is a transactional norm and is modified to the extent that it does not impair the identity of the trademark (affirmative)

[2] The case holding that in case where foreign companies Gap, which have the right to use the registered trademark " " "," which is used in the cosmetic management process contained in the cosmetic No. 3 of the classification of goods, filed a claim for the confirmation of the scope of active confirmation of the right that the challenged mark belongs to the scope of rights of his own registered trademark since the challenged mark is identical or similar to Eul's registered trademark "," the case holding that since the challenged mark is identical to Eul's registered trademark "," the above claim for a confirmation of the scope of rights is unlawful as it seeks confirmation that Eul's registered trademark belongs to the scope of rights of Eul

[1] The confirmation to confirm the scope of a trademark right is confirmed based on a registered trademark that the mark subject to confirmation falls under the scope of the right of the registered trademark or does not fall under the scope passively. Thus, even if the mark subject to confirmation is identical or similar to the registered trademark of the claimant, the confirmation to confirm the scope of a trademark right of another person’s “trademark subject to confirmation” is unlawful as it denies the validity of the right registered outside the registration invalidation procedure. In this case, “mark subject to confirmation of a registered trademark” includes not only the trademark identical to the registered trademark, but also the trademark whose identity is modified to the extent that it does not infringe the identity of the trademark as a distinctive mark in light of the transaction norms. Even if the trademark subject to confirmation is combined with the English and its simply translitating Korean, it is recognized as identical to the registered trademark, as long as a new concept is created through the combination of Korean language as well as the concept perceived from the meaning of the English language itself.

[2] In a case where foreign companies Gap, which have the trademark right of the registered trademark " " "," which is used in the cosmetic management process contained in the cosmetic No. 3 of the classification of goods, filed a claim for the confirmation of the scope of the right to use the trademark " "," which is identical or similar to his/her registered trademark, the case holding that the challenged mark falls under the scope of the right to request the confirmation of the scope of the registered trademark "," since the combination of "B's registered trademark "," which is not a form of omitting the part of Korean music in the trademark "," but a new concept was not created due to the combination of "B's registered trademark "," but it is an identical trademark with the registered trademark of Eul in light of trade norms, and the goods using the challenged mark "I", which are goods using the challenged mark, are identical with the registered trademark of Eul, and thus, it constitutes an unlawful scope of the right to request the confirmation of the scope of the right to request the confirmation of the registered trademark, which is identical or similar to the registered trademark of Eul.

[1] Articles 34(1)7 and 121 of the Trademark Act / [2] Articles 34(1)7 and 121 of the Trademark Act

[1] Supreme Court Decision 92Hu605 Decided October 27, 1992 (Gong1992, 3302), Supreme Court Decision 2013Hu2316 Decided March 27, 2014

Rawls (Patent Attorney Choi Young-chul, Counsel for the defendant-appellant)

Non-Ampi Co., Ltd. (LLC, Attorneys Kim Jong-hwan et al., Counsel for the plaintiff-appellant)

Patent Court Decision 2018Heo1264 decided September 21, 2018

The lower judgment is reversed. The trial decision rendered by the Intellectual Property Tribunal on November 14, 2017 on the case No. 1614 is revoked. The total costs of the lawsuit shall be borne by the Plaintiff.

The grounds of appeal are examined.

1. The confirmation of the scope of a trademark right is confirmed based on the registered trademark that the non-registered mark falls under the scope of the right of the registered trademark or does not fall under the scope passively. Thus, even if the mark subject to confirmation is identical or similar to the registered trademark of the claimant, the affirmative confirmation of the scope of a trademark right of another person’s “registered trademark” results in denying the effect of the right registered other than the registration invalidation procedure (see, e.g., Supreme Court Decisions 92Hu605, Oct. 27, 1992; 2013Hu2316, Mar. 27, 2014). In such cases, the term “mark subject to confirmation of a registered trademark” includes not only the trademark identical to the registered trademark but also the trademark whose common sense of transaction does not harm the identity of the trademark. Even if the trademark subject to confirmation is simply combined with the English trademark and its meaning is not identical to the registered trademark itself, it appears to be a combination with the new concept of the registered trademark or the new concept of transaction.

2. We examine the above legal principles and records.

A. The Defendant’s mark subject to the confirmation is “” and the products using the mark are “synites, damps, and bombanes with the ingredients of allugic acid.” The Defendant’s registered trademark (trademark registration number omitted) is “” applied on July 12, 2016 and registered on April 24, 2017, and the designated goods are “the 10th-class medical pen, medical instruments, medical instruments, injectings, and bomblers.”

B. The challenged mark consists of “Revi business” in English text, and the Defendant’s registered trademark is identical to the trademark subject to verification and the Defendant’s registered trademark is identical to the Defendant’s registered trademark, and the Defendant’s trademark is identical to that of the Defendant’s trademark in Korean language “riba” in this segment. The challenged mark is in the form of omitting the part of the Defendant’s registered trademark in Korean, but the combination of “riba” in Korean does not create a new concept, but appears to be referred to as “riba” ordinarily to ordinary consumers or traders, and thus, constitutes a trademark identical to the Defendant’s registered trademark.

C. In light of the following circumstances revealed by the record, “the primary substance of the product using the challenged mark,” which is the product of the challenged mark, constitutes “the product which is identical in terms of medical lusium, lusium, and lusium” among the designated product of the Defendant’s trademark, and “the product which is identical in terms of transaction norms.”

(1) Medical or imposed ciller is a charge for injection or inserting in oil or spats, etc., which accounts for 90% of the total curbine market as a alurgic composition.

(2) The Defendant uses the goods of the challenged mark in the form of a clunculine improvement scheme of allugic acids, blunic agents, and shotobane agents, which are goods using the challenged mark.

(3) Of the designated goods of the Defendant’s registered trademark, the term “medical filterer, brusor” was first put on the NICE No. 11 of the Product Classification, which came into effect on January 1, 2017. Before that, the said products were registered with the designated goods as “gel for cremation used in the beauty art management process contained in the injection machine” in Chapter 3 or 5 of the Product Classification.

(4) The goods are common in their quality, use, shape, method of use, distribution route, and the nature and transaction of the goods such as suppliers and consumers.

D. If so, the challenged mark is identical to the Defendant’s registered trademark, and thus, the instant petition for a trial is unlawful as it seeks confirmation that the Defendant’s registered trademark falls under the scope of the right of the instant registered trademark.

E. Nevertheless, without dismissing the instant request for a trial, there was an error by the Korean Intellectual Property Trial and Appeal Board, which rejected it, and the lower court also determined that the challenged mark falls under the scope of the right of the instant registered trademark. Thus, the lower court erred by misapprehending the legal doctrine on the lawful requirements for the confirmation of the scope of right, thereby adversely affecting the conclusion

3. Therefore, without examining the remaining grounds of appeal, the lower judgment is reversed without further proceeding to decide on the remainder of the grounds of appeal. Since the Intellectual Property Tribunal is sufficient to directly decide this case, the decision rendered by the Intellectual Property Tribunal as to the case No. 2016Da1614 on November 14, 2017 is revoked, and the total costs of the lawsuit are borne by the losing party. It is so decided as per Disposition by the assent

Justices Kwon Soon-il (Presiding Justice)