The case holding that the registered trademark " " " constitutes Article 7 (1) 12 of the former Trademark Act, as the registered trademark " was applied or registered for unjust purposes in order to obtain unjust profits with the aim of making the pre-use trademark " not registered domestically."

The case holding that Article 7 (1) 12 of the former Trademark Act (amended by Act No. 8190 of Jan. 3, 2007) is applicable to the case where the pre-use trademark " " was recognized as indicating the goods of a specific person among foreign consumers with regard to the key for genetic diagnosis at the time of the application of the registered trademark "," and both trademarks are similar as a whole in the case where the similarity between appearance and name is so high that consumers may confuse the source of goods if they are used for identical or similar goods, and thus, the registered trademark is applied for and registered for unjust purpose in order to obtain unjust profits by means of concluding that the pre-use trademark is not registered in Korea.

Article 7 (1) 12 of the former Trademark Act (amended by Act No. 8190 of Jan. 3, 2007)

Plaintiff (Attorney Kim Jong-ju, Counsel for the plaintiff-appellant)

Defendant (Attorney Lee Jae-chul, Counsel for defendant-appellant)

December 17, 2008

1. The plaintiff's claim is dismissed.

2. The costs of lawsuit shall be borne by the Plaintiff.

The decision made by the Intellectual Property Tribunal on April 29, 2008 on the case No. 2007Da1126 is revoked.

1. Basic facts

(a) Details of the trial decision;

On May 4, 2007, the Defendant filed a petition for a registration invalidation trial against the Plaintiff on the instant registered trademark as indicated below B.

After the Korean Intellectual Property Tribunal examined the above case on April 29, 2008 as the case No. 2007Da1126, the registered trademark of this case was clearly recognized as indicating the goods of a specific person at home and abroad. The registered trademark of this case is similar to the pre-use trademark of this case and filed an application and registered for unlawful purposes and constitutes invalidation under Article 7 (1) 12 of the Trademark Act.

B. The registered trademark of this case

(1) Date of application/registration date/registration number: July 5, 2005/ January 4, 2007/ 692490

(2) Marks:

(c) Designated goods: Key for genetic diagnosis (category 5 of the classification of goods);

(4) Trademark right holder: plaintiff

C. First Used Trademark

(1) Marks:

(2) A product: a product for medical diagnosis, including a gene extraction key;

(c) Users: Defendant;

[Grounds for Recognition] No dispute

2. Issues;

The key issue of the instant case is whether the instant registered trademark falls under Article 1(1)9, 11, or 12 of the former Trademark Act (amended by Act No. 8190, Jan. 3, 2007; hereinafter the same).

3. Whether the registered trademark of this case falls under Article 7 (1) 12 of the Trademark Act

A. Legal provisions

According to Article 7 (1) 12 of the former Trademark Act, "a trademark which is identical or similar to a trademark which is recognized as indicating goods of a specific person by domestic or foreign customers, and is used for unjust purposes, such as obtaining unjust profits or inflicting losses on the particular person" cannot be registered. The purport of the trademark is that a trademark which is recognized as a trademark of a specific person by domestic or foreign consumers is not registered domestically, and thus, it does not allow registration of an owner of a well-known trademark by causing damage to the well-known trademark right by causing damage to the intangible value of the well-known trademark, such as business credibility or customer attraction, or impeding the business in the Republic of Korea of the owner of the trademark right, or by using the trademark which is used for the purpose of obtaining unjust profits by using such imitate trademark.

Therefore, in order for a registered trademark to fall under the above provisions, it should be clearly known that the trademark compared to the registered trademark is indicating the goods of a specific person between domestic or foreign consumers, i.e., the trademark in comparison with the registered trademark should be identical or similar, and the applicant for the registered trademark should have applied for and registered the registered trademark for unlawful purposes, such as seeking to obtain unfair profits or causing damage to the right holder of the trademark compared thereto

B. Whether the pre-use trademark is well-known

In order to fall under Article 7(1)12 of the former Trademark Act, a trademark of another person compared with the registered trademark must be clearly recognized as indicating the goods of a specific person between domestic or foreign consumers at the time of filing an application for the registered trademark, and whether it falls under this shall be determined based on the period of use, method, mode, scope of use, etc. of another person’s trademark, or whether it is objectively widely known under the ordinary social norms or transaction circumstances (see Supreme Court Decision 2005Hu70, Jul. 13, 2006)

The following facts are recognized in full view of each description of Eul 2 to 54 evidence (including the relevant number) and the overall purport of the pleading:

(1) A company established in Germany on November 29, 1984, the Defendant produced and sold prior analysis samples and technologies and products related to pre-explosion and molecular diagnosis, and used pre-use trademarks for the product since 1987.

(2) The Defendant received product innovation in 2003 from the Frost& Sulivan, and the sales of products or services using pre-use trademarks (including affiliates) were about 260 million US dollars in 2001, 2000, 2980,000 US dollars in 2002, 351 million US dollars in 2003, 380,000 US dollars in 2004, and 80 million US dollars in 2004. The sales of RNA and DNA refining occupy about 80% in the global market.

(3) The Defendant spent 6,660,000 US dollars in 2001, 5,1330,000 US dollars in 2002, 3,660,000 US dollars in 203, and 4,3770,000 US dollars in 204. The Defendant continuously punished the advertisement by means of Nurur, Scibi Tnikim, which is a scientific magazine (at least 146 times in total from 2003 to 5 July 2005, which is the filing date of the instant registered trademark).

(4) The Defendant registered pre-use trademarks with 12 countries, including Germany, Japan, Australia, the United States, France, and Switzerland prior to the filing of the instant registered trademark, and currently registered 22 domain names, including QIGEM, KIGEN.COM, and QIGEN.

In full view of the above facts, it can be sufficiently recognized that the pre-use trademark was recognized as indicating the defendant's goods among foreign consumers, such as Germany, in relation to the key for genetic diagnosis at the time of the application for the trademark of this case.

C. Whether the registered trademark of this case is identical or similar to the pre-use trademark

In determining similarity of a trademark, the similarity of a trademark should be determined by observing the appearance, name, and concept of the trademark as a whole and separately, and thereby causing misconceptions or confusions as to the origin of the goods. The text of the registered trademark of this case and the pre-use trademark of this case cannot be compared with the concept as a lighting, so the appearance and name should be prepared.

First, in comparison with the pre-use trademark " "," among the pre-use trademarks, five letters, excluding the first letters, are the same and similar.

Next, in comparison with the name, the registered trademark of this case is deemed to be the "KIKO" or "KIKO halog," and the pre-use trademark is deemed to be the "KIKO", "KIKO halog," or "quihalog," and if the pre-use trademark is unfavorable as ①, the name of both trademarks is identical, and even if the pre-use trademark is unfavorable as ②, it is similar to that of the pre-use trademark, and thus, it is highly similar.

Therefore, both trademarks are similar as a whole because they can confuse the source of goods if they are used on the same or similar goods with a strong similarity of appearance and name.

D. Whether the registered trademark of this case was filed and registered for an unlawful purpose

"Unlawful purpose" under Article 7 (1) 12 of the former Trademark Act is an applicant's internal deliberation intent, and it shall be presumed whether the subject trademark is identical or similar to the subject trademark, whether the subject trademark is a highly creative trademark, whether the applicant of the registered trademark and the right holder of the subject trademark have negotiations surrounding the trademark, whether the applicant of the registered trademark have prepared the business using the registered trademark in detail, whether the applicant of the registered trademark has prepared the business using the registered trademark, whether the designated trademark and the subject trademark (use) are identical or similar to the goods of the registered trademark or economic relation, and whether the transaction situation is actual.

According to the above evidence, at around 2003, the Plaintiff developed and sold the Defendant’s product and the pre-use trademark as a substitute product with recognition at the time of developing the key for genetic diagnosis, which is the designated goods of the instant registered trademark. The Plaintiff sent to the Defendant a certificate indicating that, around February 2007, the Defendant established a branch office within the Republic of Korea to expand the sales of the product and, upon being aware that the Defendant intended to establish a branch office and to attach the pre-use trademark extremely similar to the instant registered trademark, would cause misconception and confusion about the source of the product, and that the Plaintiff demanded the Defendant to pay USD 1 million in return for the use of the pre-use trademark in Korea on April 2007.

In addition to the above facts, the registered trademark of this case and the products designated (use) with the registered trademark of this case require specialized knowledge and the market size is narrow, and the defendant's related market share is very high to recognize the pre-use trademark, and the registered trademark of this case is very similar to the pre-use trademark. In full view of the fact that the registered trademark of this case is not registered in Korea, it can be recognized that the registered trademark of this case was applied and registered for unjust purposes in order to gain unjust profits by unfairly taking advantage of the credit and reputation incorporated into the pre-use trademark without permission, by putting the pre-use trademark

(e) Conclusion

Therefore, the registered trademark of this case falls under Article 7 (1) 12 of the former Trademark Act.

4. Conclusion

Therefore, without examining the remaining issues, the registered trademark of this case should be invalidated pursuant to Article 71 (1) 1 of the former Trademark Act, and the trial decision of this case is legitimate based on this conclusion. Thus, the plaintiff's claim seeking revocation is unfair and dismissed.

Judges Kim Jong-soo (Presiding Judge)