200Hu10810. Nullification of registration (Trademark)

Phphone Elopacle B.V. (Non Bicycle I B.V.)

Patent Firm (with Limited Liability)

Patent Attorney in charge and three others

Belgium sports Co., Ltd.

Law Firm Gael, Attorney Doz.

[Defendant-Appellee]

Patent Court Decision 2018Heo9237 decided May 29, 2020

January 14, 2021

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

The grounds of appeal are examined.

1. Prior final and conclusive adjudication and the judgment of the court below

A person shall be appointed.

In light of the fact that it is difficult to regard it as well-known and well-known trademark, the registered trademark of this case

A person shall be appointed.

Inasmuch as it cannot be readily concluded that an application was filed for the purpose of forcing an agency contract or for the purpose of impairing the reputation of the pre-use trademark, a trial decision was rendered to the effect that it does not fall under Article 7(1)12 of the former Trademark Act (amended by Act No. 8190, Jan. 3, 2007; hereinafter the same shall apply) (Supreme Court Decision 2012Da172, Aug. 19, 2013). The above trial decision became final and conclusive around that time as the parties did not object thereto (hereinafter referred to as "prior final and conclusive trial decision").

B. The court below determined that the registered trademark of this case cannot be deemed to fall under Article 7 (1) 12 of the former Trademark Act even if based on the evidence newly submitted in the instant trial decision, and thus, the above evidence constitutes evidence identical to the evidence of the prior final and conclusive trial decision, which is not sufficient to reverse the conclusion of the prior final and conclusive trial decision, and ultimately, the instant petition for a trial was based on the same facts as the prior final and conclusive trial decision and evidence, and thus, is not allowed.

2. Judgment of the Supreme Court

A. Relevant legal principles

1) “The same evidence” under Article 150 of the Trademark Act, which provides for the principle against double Jeopardy, includes not only the evidence such as the evidence of the final and conclusive trial decision, but also the evidence which has not been sufficiently able to reverse the trial decision. Therefore, in a case where the evidential evidence to reverse the conclusion of the final and conclusive trial decision is newly submitted, it cannot be said that it violates the principle against double Jeopardy (see, e.g., Supreme Court Decision 2004Hu42, Mar. 11, 2005

2) Article 7(1)12 of the former Trademark Act provides that trademark registration shall not be granted for unlawful purposes, such as obtaining unjust profits or inflicting harms on a specific person, which is identical with or similar to a trademark which is recognized as indicating goods of a specific person by customers in the Republic of Korea or abroad. The purport of the above provision is that a trademark which is recognized as a trademark of a specific person among consumers in Korea or in foreign countries is not to inflict damage on an owner of a trademark right by means of obstructing the business in the Republic of Korea of the owner of a trademark right, or is used for the purpose of obtaining unjust profits by using the trademark which is used for unjust profits by registering and using the trademark which is recognized as a trademark of a specific person.

In order to fall under the above provisions, a trademark of a specific person shall fall under the well-known trademark, and an applicant for a trademark shall use the trademark identical or similar to the well-known trademark of a specific person for unlawful purposes. Whether a trademark of a specific person falls under the well-known trademark is a standard for the period of use, method, mode, scope of use, etc. of the trademark, and whether it is objectively widely known under the social norms or social norms. Whether an unlawful purpose is determined shall be comprehensively taken into account the degree of well-known, well-known or creativeness of a specific person; the trademark of a specific person and the applicant’s trademark; the degree of the same and similarness of the trademark; the existence and content of negotiations surrounding the trademark between an applicant and a specific person; whether the applicant prepares for business using the registered trademark; whether the applicant prepares for business using the registered trademark; whether goods are identical or similar to goods; and whether there is an economic relation with the trademark; etc.

B. Review of the reasoning of the lower judgment and the record reveals the following circumstances.

A person shall be appointed.

A person shall be appointed.

Ro E. E. E. E. E.S.(Cervitio S.A.) (the plaintiff takes over E.S. on February 17, 2012; hereinafter referred to as “the plaintiff” without distinguishing E.S. and the plaintiff for convenience) are attached to the bicycle manufactured by E.S., and products attached with pre-use trademarks are sold in high prices in many countries including the United States and Canada in the world including the United States and Canada since 1996.

A person shall be appointed.

section 1.

2) The Plaintiff began to grow up for Trithlon bicycle sales. From 2003, the Plaintiff started to support the professional cryp team. The Plaintiff’s professional cryp team, supported by the pre-use trademarks, has achieved good results in major bicycle competitions, such as riding bicycles attached with the pre-use trademarks, and accordingly, increased the recognition guidance for the pre-use trademarks. From 1996 to 2005, the Plaintiff published a lot of newspapers, magazines, Internet media, etc., including the "Trithrathm," and the "Trithm," and the "proclsting," continuously included the pre-use trademarks, and the articles and advertisements related to the players’ active drugs, including those of the pre-use trademarks. From 203 to 206, the first-use trademarks published the results of the survey and advertisements in various bicycle-related bicycle-related media, including the "Triththm," and the first-use trademarks.

3) The sales revenue from the sale of products affixed with the Plaintiff’s pre-use trademarks increased rapidly since 1996, and the sales revenue amounting to USD 1.1 million per annum in 2004.

4) From around 2002, Nonparty 1 imported and sold bicycle products with pre-use trademarks manufactured and sold by the Plaintiff in Korea. After completing business registration with the trade name "(trade name omitted)" on February 6, 2004, Nonparty 1 imported and sold bicycle products, including bicycles, from the Plaintiff by means of direct operation or agency, etc.

5) On March 16, 2005, Nonparty 1 filed an application for trademark registration of “CerveO” mark with a bicycle, etc. without the Plaintiff’s permission, but on November 28, 2005, the Plaintiff came to know of the fact that the Plaintiff filed the application, and on November 28, 2005, the Plaintiff does not grant the right to register the Cervel trademark under the name of Nonparty 1. Nonparty 1 filed an application for the said trademark on behalf of the Plaintiff, but the said trademark was managed upon entrustment upon the Plaintiff’s request, and thus, the said trademark was transferred to the Plaintiff or the person designated by the Plaintiff. Nonparty 1 applied for trademark registration on January 4, 2006, but the trademark right was extinguished due to the unpaid registration fee on March 6, 2006.

A person shall be appointed.

18. Completion of trademark registration.

7) On March 29, 2012, the Plaintiff filed a petition for invalidation trial against Nonparty 2 on the ground of Article 7(1)12 of the former Trademark Act. However, in light of the recognition guidance of the pre-use trademark, the above petition was dismissed on the ground that the non-exclusive licensee could not be recognized for any unlawful purpose (prior final and conclusive decision). On March 17, 2015, the Plaintiff filed a petition against Nonparty 2 for a trial on the non-use cancellation of the registered trademark of this case. On March 17, 2015, the above petition was dismissed on the ground that Nonparty 1, the non-exclusive licensee, was using the registered trademark of this case. In that process, the Plaintiff became aware of the fact that Nonparty 1 was a relative of Nonparty 2.

C. We examine the above circumstances in light of the legal principles as seen earlier.

Considering the sale period, advertisement, press report details, sales amount, etc. of products using the pre-use trademarks, the pre-use trademarks can be seen as trademarks that are clearly perceived as trademarks of a specific person between the U.S. and Canadian consumers as at March 14, 2006, which are the filing date of the instant registered trademark. In addition, in light of the well-knownness of the pre-use trademarks, similarity between the registered trademark of this case and the pre-use trademarks of this case, the details and contents of concluding contracts between the Plaintiff and Nonparty 1, relationship between Nonparty 1 and Nonparty 2, and the process of filing the instant registered trademark, etc., Nonparty 2 filed an application for the instant registered trademark with the aim of using the trademark for unlawful purposes, such as intending to inflict damage on the Plaintiff, who is the user of the pre-use trademarks. Ultimately, in relation to the relationship between Nonparty 2 and Nonparty 1, the newly presented evidence in this case constitutes evidence that can reverse the conclusion of the prior final judgment that the instant registered trademark does not fall under Article 7(1)1)12 of the former Trademark Act.

D. Nevertheless, the lower court determined that the instant petition for a trial was not permitted on the grounds stated in its reasoning. In so doing, the lower court erred by misapprehending the legal doctrine on Article 7(1)12 of the former Trademark Act and the res judicata doctrine. The allegation contained in the grounds of appeal on this point is with merit.

3. Conclusion

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 Kim Jae-hwan

Justices Park Sang-ok

Justices Lee In-bokon

Justices Noh Jeong-hee