[1] In a case where the registered trademark was not distributed or planned to be distributed domestically at the time of advertising the designated goods, and it was not merely an act of advertising the registered trademark under the pretext of the purpose of avoiding the non-use of the registered trademark, whether it can be deemed that the registered trademark was properly used (negative)

[2] The case holding that in a case where Company A, a trademark right holder of a registered trademark, advertised the registered trademark on the advertisement column of living information paper prior to the date a request for cancellation of trademark registration, and the designated goods at the time were not distributed or have not been scheduled to be distributed normally in Korea, and the advertisement act of Company A was merely made on the pretext of avoiding the cancellation of non-use of the registered trademark, it cannot be deemed that the registered trademark was properly used

[1] Article 73(1)3 and the main text of Article 73(4) of the Trademark Act provide that the revocation of trademark registration shall not be exempted unless a trademark right holder, etc. proves that at least one of the designated goods related to a request for revocation of a trademark registration has been properly used in the Republic of Korea within three years prior to the date of request for a trial. The purport of the provision is to promote the use of the registered trademark and impose sanctions on non-use. In light of the purport of the adjudication system on revocation of trademark registration due to non-use. In light of the purport of the adjudication system, even if an advertisement of the registered trademark was made on the designated goods, it does not mean that the designated goods are being distributed or are expected to be distributed normally in the Republic of Korea, but it does not mean that the registered trademark was properly used if it was done on the pretext

[2] The case holding that in a case where Company A, a trademark right holder of a registered trademark, advertised the registered trademark in the daily life information advertisement column distributed to one unit of Seoul and Gyeonggi-do area five times a week prior to the date a request for cancellation of trademark registration was filed, and the designated goods at the time were not distributed or planned to be distributed normally in Korea, and the advertisement of Company A was merely made in the name of the purpose of avoiding the non-use of the registered trademark, it cannot be deemed that the registered trademark was properly used in Korea within three years prior to the date a request for cancellation of trademark registration was filed

[1] Article 73(1)3 and (4) of the Trademark Act / [2] Article 73(1)3 and (4) of the Trademark Act, Article 520-2(1) of the Commercial Act

[1] Supreme Court Decision 89Hu1240, 1257 decided Jul. 10, 1990 (Gong1990, 1707) Supreme Court Decision 92Hu209 decided Aug. 18, 1992 (Gong192, 2767)

[Defendant-Appellee] Plaintiff 1 and 2 others (Attorney Jung-gu et al., Counsel for defendant-appellee)

Sam Li-d Co., Ltd. (Patent Attorney Ahn Young-young, Counsel for defendant-appellant)

Patent Court Decision 2010Heo4908 Decided January 26, 2011

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

The grounds of appeal are examined.

Article 73(1)3 and the main text of Article 73(4) of the Trademark Act provide that the revocation of trademark registration shall not be exempted unless a trademark right holder, etc. proves that he/she has properly used the registered trademark in the Republic of Korea within three years prior to the date of a request for a trial to revoke the registered trademark. The purport of the provision is to promote the use of the registered trademark and impose sanctions on non-use thereof. In light of the purport of the adjudication system on revocation of trademark registration due to non-use, even if an advertisement of the registered trademark was made on the designated goods, it does not mean that the designated goods are being distributed or are scheduled to be distributed normally in the Republic of Korea, and it does not mean that the registered trademark was properly used if it was engaged in advertising the registered trademark under the pretext of excluding the non-use of the registered trademark (see Supreme Court Decision 92Hu209, Aug. 18, 1992, etc.).

In light of the above legal principles and records, the Plaintiff, a trademark right holder of the instant registered trademark (registration No. 1 omitted), is recognized as having advertised the instant registered trademark in relation to the table of the table of the table of the designated goods, the table of the table of the open space and the table of the open space of the living information market distributed to Guro-gu in Seoul, Geumcheon-gu, and Gwangju-si, on five occasions a week from November 14, 2008 to December 12, 2008, prior to the date of the instant petition for a trial.

However, according to the records, on October 23, 2008, when the plaintiff filed a request for the cancellation of trademark registration due to non-use from the non-party Ya Sports Co., Ltd. on the separate registered trademark (registration No. 2 omitted), the plaintiff advertised the registered trademark of this case on a single basis at the time of the advertisement, and Gap evidence No. 6-1 through No. 3 claiming that the plaintiff is a photograph of "Yag-gu" remaining after the advertisement was sold at the time of the advertisement cannot be known the manufacturing date and the photograph of "Yag-gu". The plaintiff did not submit all the materials related to the manufacture, sale, and tax payment of the above "Yag-gu", as well as any materials related to the plaintiff's basic operation of the company, and the plaintiff established on Oct. 21, 2003, which was dissolved on December 1, 2009 pursuant to Article 520-2 (1) of the Commercial Act.

In light of the above circumstances, it is difficult to view that the designated goods at the time of the Plaintiff’s above advertising act were distributed or planned to be distributed domestically, and therefore, the Plaintiff’s above advertising act is merely a mere fact made in order to avoid the cancellation of the non-use of the registered trademark. Thus, the registered trademark of this case cannot be deemed to have been properly used domestically within three years before the date of the instant request for a trial.

Nevertheless, the court below determined that the registered trademark of this case was properly used in Korea within three years before the date of the request for a trial. In so doing, the court below erred by misapprehending the legal principles as to Article 73 (1) 3 and the main sentence of Article 73 (4) of the Trademark Act, which affected the conclusion of the judgment, and the ground of appeal pointing this out has merit.

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 Lee In-bok (Presiding Justice)