[1] Requirements for determining whether a registered trademark falls under Article 7 (1) 12 of the former Trademark Act, and criteria and method for determining such requirements and time (=the time when the registered trademark is applied)

[2] In a case where the pre-use trademarks user Gap corporation, which made the pre-use trademarks " " " " " " " "" and " " as goods using the main, main, E, E, E, and E, filed a petition for a nullification of registration against Eul, the case affirming the judgment below which held that there exists a ground for invalidation of registration under Article 7 (1) 12 of the former Trademark Act on the above registered trademark

[1] Article 7(1)12 of the former Trademark Act (wholly amended by Act No. 14033, Feb. 29, 2016; see current Article 34(1)13) / [2] Article 7(1)12 of the former Trademark Act (wholly amended by Act No. 14033, Feb. 29, 2016; see current Article 34(1)13)

[1] Supreme Court Decision 2002Hu1362 Decided May 14, 2004 (Gong2004Ha, 1873), Supreme Court Decision 201Hu3896 Decided May 9, 2013 (Gong2013Sang, 1054), Supreme Court Decision 2013Hu2866 Decided March 13, 2014

Plaintiff (Patent Attorney Kim Byung-hee et al., Counsel for the plaintiff-appellant)

Heunwon Co., Ltd. (Patent Attorney Kang Il-soo et al., Counsel for the plaintiff-appellant)

Patent Court Decision 2016Heo9332 Decided April 14, 2017

The appeal shall be dismissed and paid to the plaintiff.

The grounds of appeal are examined (to the extent of supplement in case of supplemental appellate briefs not timely filed).

1. The purport of Article 7(1)12 of the former Trademark Act (wholly amended by Act No. 1403, Feb. 29, 2016; hereinafter the same) is that a trademark recognized as indicating the goods of a specific person by domestic or foreign consumers (hereinafter referred to as “trademark subject to reproduction”) is not registered in the Republic of Korea, and a third party’s registration or use is biased to obtain unfair benefits by taking advantage of the business reputation, etc. contained in the trademark subject to reproduction, or by impairing the value of the trademark subject to reproduction or interfering with the domestic business of the right holder, etc. Therefore, if an applicant intends to use the trademark for the purpose of causing damage to the right holder of the trademark subject to reproduction, he/she shall be recognized as a trademark of a specific person, among domestic or foreign consumers. Determination of whether an applicant for the trademark subject to reproduction is identical or similar to the trademark subject to reproduction, should be made based on the degree of economic recognition of the trademark subject to reproduction between the right holder’s trademark and the designated goods subject to reproduction and the extent of use, etc.

A person shall be appointed.

2. In full view of the admitted evidence, the lower court determined that the pre-use trademarks, as indicated in the judgment, were widely recognized among domestic consumers as marks indicating the Defendant’s air conditioners products, around May 31, 2012, on the following grounds: “cosmetics, cosmetics, shampoos, shampoos, shampoos, handboos, water boos, and garsk for cremation,” etc. as designated goods; and on the basis of the filing date of the registered trademark (registration number omitted) of this case (registration number omitted), which is the date of the application of the registered trademark of this case (registration number omitted). Furthermore, the lower court determined that there was grounds for invalidation of the registered trademark of this case under Article 7(1)12 of the former Trademark Act, considering the degree of personality guidance or creation of the pre-use trademarks; the degree of identical or similar nature of the registered trademark of this case and the developments leading up to the selection of the registered trademark of this case.

Examining the reasoning of the lower judgment in light of the aforementioned legal doctrine and the record, such determination by the lower court is justifiable, and contrary to what is alleged in the grounds of appeal, the lower court did not err by exceeding the bounds of the principle of free evaluation of evidence against logical and empirical rules, or by misapprehending the legal doctrine on Article

3. Therefore, the appeal is dismissed, and the costs of appeal are assessed against the losing party. It is so decided as per Disposition by the assent of all participating Justices on the bench.

Justices Kwon Soon-il (Presiding Justice)