In a case where Gap corporation, the user of the pre-use trademark consisting of "AMS School", filed a petition for a registration invalidation trial against Eul, the trademark right holder of the registered trademark consisting of "AMS", as designated goods, and filed a petition for a registration invalidation trial against Eul, the trademark right holder of the registered trademark consisting of "AMS", the case holding that where the registered trademark is used for designated goods, the trademark is likely to mislead or confuse general consumers as to the origin of the goods, and thus, it is likely to mislead consumers.

In a case where: (a) Company A, the user of the pre-use trademark consisting of the pre-use trademark “AMS school”, filed a request for a registration invalidation trial against Company B, the trademark holder of the pre-use trademark “A” as designated goods; and (b) the Korean Intellectual Property Trial and Appeal Board accepted Company A’s claim, the case held that the pre-use trademark is used for approximately one year and seven months, and the entire period of use cannot be deemed to have long; (c) although the pre-use trademark is used for approximately one year and seven months until the decision of registration and the smartphone user who installed AMS PP app by the date of the decision of registration and the number of schools applying for AMSP services, etc., the pre-use trademark is known to the extent that it is already recognized as a trademark of a specific person; and (d) the appearance of the pre-use trademark in comparison with the pre-use trademark is referred to as “AMS school” and conceptualized as a whole; and (d) the designated goods of both trademarks (use goods) are likely to be used by consumers as designated goods; (e.)

Article 7 (1) 11, 12 of the Trademark Act

Plaintiff (Law Firm Min, Attorneys Choi Min-young et al., Counsel for the plaintiff-appellant)

AMMcom Co., Ltd. (Law Firm Rate, Attorney Park Jong-min, Counsel for the defendant-appellant)

July 17, 2015

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 October 23, 2014 by the Intellectual Property Tribunal on the case No. 2512 shall be revoked.

1. Basic facts

A. The registered trademark of this case

1) Date of application/registration decision/registration date/registration date/registration number: June 28, 2012/ May 29, 2013/ May 30, 2013 (registration number omitted)

2) Composition:

(iii) Designated goods: A computer software for mobile telephone (to be received), applied software for smartphones (to be received), and smartphone software (to be received), classified into category 9 of goods;

4) Trademark right holder: Plaintiff

B. First Used Trademark

1) Composition: AIMS School;

(ii) Goods using: Smartphone display cases, etc.

3) Users: Defendant

C. Details of the instant trial decision

1) On September 13, 2013, the Defendant filed a petition for a trial for invalidation of registration with the Intellectual Property Tribunal against the Plaintiff, stating that “The registered trademark of this case is identical to the pre-use trademark (used goods) known to consumers or traders as indicating the Plaintiff’s goods, and its designated goods (used goods) shall be also applied for and used for an unlawful purpose, and thus, the registration shall be invalidated pursuant to Article 7(1)4, 9, and 12 of the Trademark Act.”

2) On October 23, 2014, the Intellectual Property Trial and Appeal Board rendered the instant trial ruling accepting the above request on the ground that “The instant registered trademark constitutes Article 7(1)12 of the Trademark Act, since it was filed with unlawful purposes, such as taking advantage of the high-quality image of the pre-use trademark owner and obtaining unfair profits, the instant registered trademark falls under Article 7(1)12 of the Trademark Act.”

[Reasons for Recognition] Unsatisfy, Gap 1 and 2 evidence, the purport of the whole pleadings

2. Summary of the parties’ assertion

A. The plaintiff

1) In the instant trial proceeding, the Defendant asserted only the grounds for invalidation under Articles 7(1)4 and 7(1)9 of the Trademark Act, and thereafter asserted the additional grounds for invalidation under Article 7(1)12 of the Trademark Act at the latest. The Korean Intellectual Property Trial and Appeal Board did not dismiss the above additional claims by the Defendant, but rendered the instant trial decision that accepted the above additional claims by the Defendant without giving the Plaintiff an opportunity to resist against the Plaintiff. As such, the trial proceeding by the Korean Intellectual Property Trial and Appeal Board is erroneous in the misapprehension of the principle of equality between the parties and the fairness of the trial.

2) The pre-use trademarks did not have been perceived as indicating goods of a specific person among domestic consumers at the time of application for and decision on registration of the instant registered trademark, and it cannot be said that there was an unlawful purpose to the Plaintiff in the process of application and registration of the instant registered trademark. Thus, the instant registered trademark does not fall under both Article 7(1)11 and 12 of the Trademark Act.

B. Defendant

1) Even before the defendant explicitly asserts the grounds for invalidation under Article 7 (1) 12 of the Trademark Act, it shall be deemed that the parties have given adequate opportunity to state their opinions on the issues under Article 7 (1) 12 of the Trademark Act, such as whether the prior use trademark has the awareness and illegality purposes. Thus, it shall not be deemed that there was an error of impairing the principle of equality between the parties to the trial decision of this case or the fairness of the hearing.

2) The pre-use trademark was recognized as indicating the defendant's goods among domestic consumers at the time of application for registration and decision of registration. The registered trademark of this case and the pre-use trademark of this case are identical to the registered trademark of this case and the mark and the designated goods (used goods). The plaintiff applied for the trademark of this case for unlawful purpose, such as causing damage to the defendant or getting a good of the defendant's reputation. Thus, the registered trademark of this case constitutes both Article 7 (1) 11 and 12

3. Whether the trial decision of this case violated the procedure

A. Facts of recognition

The following facts may be acknowledged by taking into account the overall purport of the pleadings in each entry in Gap 3, 12, Eul 1, and 2 (including each number; hereinafter the same shall apply), or there is no dispute between the parties, or by considering the whole purport of the pleadings:

1) On September 13, 2013, the Defendant submitted to the Intellectual Property Tribunal a written request for a registration invalidation trial against the instant registered trademark, and on November 28, 2013, the Defendant submitted an amendment to the purport that “the instant registered trademark falls under Article 7(1)9 of the Trademark Act because the Defendant’s prior use trademark and emblem are similar to the Defendant’s prior use trademark and the designated goods are identical to those of the designated goods, and the registered trademark falls under Article 7(1)9 of the Trademark Act, as it was filed after reporting and copying the articles concerning the prior use trademark, and is filed for the purpose of hindering the Defendant’s business or taking advantage of the Defendant’s reputation.”

2) On December 26, 2013, the Plaintiff submitted a written reply to the Intellectual Property Tribunal to the effect that “the prior-use trademark cannot be deemed to be a trademark known prior to the filing of the instant registered trademark, and the instant registered trademark is not a trademark for which an article related to the prior-use trademark was reported and copied, and thus does not fall under both Article 7(1)4 and 9 of the Trademark Act.”

3) On January 25, 2014, the Intellectual Property Tribunal issued a notice of scheduled completion of the trial to the Plaintiff and the Defendant that “if it is necessary to submit additional data as there is an expected completion date of the trial on March 2014, the Patent Tribunal,” and on February 25, 2014, the Defendant submitted an additional written opinion to the effect that “the instant registered trademark constitutes both Article 7(1)4 and 9 of the Trademark Act” to the Intellectual Property Tribunal on February 25, 2014.

4) On October 9, 2014, the Defendant submitted only a written opinion without any additional evidence, asserting that “The registered trademark of this case was copied the pre-use trademark which was recognized as indicating the goods of a specific person prior to the filing of the application, and thus falls under Article 7(1)12 of the Trademark Act, since it was filed for an unlawful purpose.” The written opinion was served on the Plaintiff on October 15, 2014.

5) On October 20, 2014, the Intellectual Property Trial and Appeal Board sent a notice of closure of trial to the Plaintiff and the Defendant on October 20, 2014, and subsequently accepted the Defendant’s request for a trial on October 23, 2014 on the ground that “the instant registered trademark constitutes Article 7(1)12 of the Trademark Act.”

B. Specific determination

As seen above, as seen in the above facts, the Defendant asserted only the invalidation grounds under Article 7(1)4 and 9 of the former Trademark Act in the trial proceedings for the registration invalidation trial, and further asserted the invalidation grounds under Article 7(1)12 of the Trademark Act on October 9, 2014, and the Korean Intellectual Property Tribunal rendered the instant trial ruling that accepted the above additional assertion on October 23, 2014 without submitting the Plaintiff’s written opinion, etc. against the said additional assertion.

However, the Defendant did not assert new facts or submit additional evidence at the time of submitting the written opinion on October 9, 2014, and appears to have otherwise asserted only the applicable provisions of the existing facts and within the scope of evidence submitted. Furthermore, even before the Defendant explicitly asserts grounds for invalidation under Article 7(1)12 of the Trademark Act, the issue is whether the pre-use trademarks were known to the two parties regarding Article 7(1)4 and 9 of the Trademark Act, and whether the Plaintiff applied for the reproduction of the pre-use trademarks is already at issue, and thus, it can be deemed that the Plaintiff had been given the opportunity to substantially state the Plaintiff’s opinion regarding the requirements for application of Article 7(1)12 of the Trademark Act, such as the existence of the recognition and wrongful purpose of the pre-use trademarks. Furthermore, even if the Defendant’s written opinion delivered on October 9, 2014 from the instant trial decision on October 15, 2014 to the effect that the Plaintiff had no additional opportunity to present his/her opinion for defense other than the Defendant’s previous written opinion.

In full view of these circumstances, it cannot be deemed that there was an error of impairing the principle of equality of the parties or the fairness of the hearing, as alleged by the Plaintiff.

4. Whether it falls under Article 7 (1) 11 of the Trademark Act

(a) Guidance for the pre-use trademark;

1) Facts of recognition

The following facts may be acknowledged either as a dispute between the parties, or as a whole in the entries and images of evidence Nos. 5, 6, 13, 3-18, and 20.

A) The Defendant distributed a smartphone software (AMS) with pre-use trademarks (hereinafter “AMS app”) free of charge. AMS app was installed by students or parents after getting off from their smartphones, and then made it convenient for them to conveniently check various school-related news issues, such as Allim, home correspondence, open space, etc.

B) On October 17, 2011, the Office of Education of Jeollabuk-do sent to schools affiliated with the Office of Education an official door to the effect that “free distribution of application for the exclusive use of elementary and secondary smartphones” is called “the free distribution of application for the use of apps 1) and then sent to schools affiliated with the Office of Education, including Daejeon Metropolitan City Office of Education ( April 3, 201), Gyeonggi-do Office of Education ( June 12, 2012), Gyeonggi-do Office of Education (Seoul Provincial Office of Education), Gyeongnam-do Office of Education ( Office of Education August 8, 2012), Gwangju Metropolitan City Office of Education ( Office of Education, August 9, 2012), Jeonnam-do Office of Education ( Office of Education, August 9, 2012), Gangwon-do Office of Education (Office 7, 2012), Gangwon-do Office of Education (Office Office of Education, etc.).

C) Accordingly, the schools that applied for IMS services to provide school-related information through AIMS app were sent with home communications documents, etc. to their parents. In addition, AIMS app was introduced through a number of press media including each broadcasting and major daily newspapers from April 2, 2012 to May 15, 2013.

라) 또한 피고는 2013. 1. 23.부터 1. 25.까지 서울 코엑스에서 개최된 ‘2013년도 대한민국 교육박람회’에 참가하여 아이엠스쿨 앱을 홍보한 바 주3) 있고, 2012. 12. 14. 법무부 솔로몬로파크, 2013. 4. 3. 사단법인 패트롤맘과 각각 업무협약을 체결하여 이를 통해 아이엠스쿨 앱을 홍보하기도 하였다.

E) As of May 29, 2013, the date of the decision to register the instant registered trademark, the number of smartphone users installed after getting AM-school app through the Google and AM-type app through the Google as of May 29, 2013, is about 4 weeks), 216,406, and around April 2013, the number of national elementary, middle, and high schools applying for the Defendant’s AM-school services is about 1,500.

2) Specific determination

As seen above, the pre-use trademark is used from October 201 to May 29, 201, which was the date of the decision to register the trademark of this case, for about one year and seven months from May 29, 201. However, considering the number of smartphone users who installed AIMS app until the date of the decision to register the trademark of this case, and the number of schools that applied for AIMS services, the office of education, and schools, all of which are interested in children’s education, and the continuous introduction through various media, it should be deemed that the pre-use trademark is known to the extent that the domestic consumers are already aware of the trademark of a specific person at the time of the decision to register the trademark.

3) Judgment on the Plaintiff’s assertion

As to this, the plaintiff asserts that the pre-use trademark is not used for one year since the date of the decision to register the trademark of this case is not indicated. ② The pre-use trademark's official documents submitted by the defendant are not used for trademark since the pre-use trademark is not marked, ③ most of the articles of press submitted by the defendant are hard to recognize publicity effects because they are not connected with the old reader's comments, public sense, and SNS. ④ The high degree of recognition of the pre-use trademark cannot be seen as having increased since the order of priority of the entire smartphone app was very low, and ⑤ the sales amount of the defendant company is merely 10 million won per month. In light of the fact that the pre-use trademark is not known to the extent that it can be recognized as a trademark of the trademark of this case since the decision to register the trademark of this case.

However, this part of the plaintiff's assertion cannot be accepted for the following reasons.

A) Comprehensively taking account of the overall purport of the pleadings in the written evidence Nos. 3, 4, and 11, the Defendant, even before the registration in an official online market on June 2012, even before the IMS app was made, was manufacturing and distributing apps that allow school-related information to be provided to the parents of students. As such, various press media and consumers may recognize that the apps manufactured and distributed as “IMSP” was included in the “IMSP”. Thus, it cannot be deemed that the time at which the commencement of the IMS services was registered in the online market on June 2012.

B) Comprehensively taking account of the overall purport of the arguments in evidence Nos. 3, 5, 10, 20, and 30, the office of education, etc. sent a public letter to the affiliated schools, along with a notice or application indicating the pre-use trademarks, and attached it. The schools that applied for the IMS-school service also sent family correspondence, etc. to parents, and notified the parents of the IMS-school app. This circumstance seems to have had a significant impact on the consumers’ awareness of pre-use trademarks.

C) Comprehensively taking account of the overall purport of the arguments in the statements Nos. 4, 6, 12-17, the Defendant’s AIM app was reported several times in several times in the broadcast and major daily newspapers prior to the date of decision to register the instant registered trademark. In light of the influence of these media, viewing rate, the number of copies published, the number of web site visitors, the number of news reports, etc., the pre-use trademarks are likely to have been exposed to general consumers, including a considerable number of viewers or readers.

D) As seen earlier, pre-use trademarks were used in relation to the education of smartphone display, and the education of smartphone display market is clearly distinguishable from the other smartphone display market. If the consumers’ floor is based on the educational smartphone display market, the order of priority is significant. (5) If it is confirmed through the AM-school app’s pre-use trademark’s pre-use trademarks and the Internet freezing site, the order of priority can be seen as considerable.

E) As seen above, AMS app, as it was offered free of charge to consumers. In light of the general characteristics of a smartphone app and its transaction environment, etc., more important factors are taken into account in determining whether the pertinent AMD app is a trademark’s recognition rather than its sales. Therefore, it is difficult to readily conclude that the pre-use trademark recognition level is low solely on the ground that the sales amount of AMD App is less than its sales amount.

B. Whether the mark is identical or similar to the mark

In comparison with the pre-use trademark "MS School", the appearance of the registered trademark " " " in this case is the same as that of the pre-use trademark " in Korean and English," and all of them are referred to as "IMS" and referred to as a whole and conceptualized mark, and therefore, it constitutes a similar mark as a whole.

(c) Whether the designated goods are identical;

The designated goods of the registered trademark of this case are computer software for mobile phones (it can be received), application software for smartphones (it can be received), and smartphone software (it can be received), and products using pre-use trademarks are smartphone application cases, etc. The designated goods of both trademarks (used goods) are the same in substance in consideration of the characteristics of the goods or transaction circumstances.

D. Sub-committee

As seen above, as long as the registered trademark of this case is similar to the pre-use trademark and its mark known to the extent that it can be recognized as a trademark of a specific person, and as long as the designated goods (used goods) are substantially the same, it would be likely that if the registered trademark of this case is used on the designated goods, it would cause mistake or confusion to the general consumers as to the origin of the goods. Thus, the registered trademark of this case constitutes Article 7(1)11 of the Trademark Act.

5. Conclusion

Therefore, without examining the remaining points, the registered trademark of this case falls under Article 7 (1) 11 of the Trademark Act and its registration should be invalidated. Thus, the trial decision of this case, which concluded as above, is legitimate, and the plaintiff's claim for revocation is without merit.

Judge Lee Jong-dae (Presiding Judge)

1) At the early stage of the provision of the service, the Defendant made and distributed separate apps by each school that applied for the service, but at that time, various media and consumers were called “AMSP App”, and around June 2012, the Defendant developed a single app that can be applied to all schools and distributed it free of charge.

Note 2) In addition to the introduction through YTN news on April 2, 2012 and April 3, 2012, and January 3, 5, 2013, “IMS App” was respectively introduced on April 3, 2012, in addition to the introduction through YBN news, 1 copy of the KBS news plaza, 2 copy of the KBS news plaza, and 12, respectively. At the same time, the nationwide average viewing rate of each KSBS news program was 7.0%, 12.3%, and 5.4%, respectively. In addition, the IMS app was included in the total viewing rate during the period from April 2, 2012 to May 15, 2013.

3) At the above exhibition, 131 companies participated, and 27,000 visitors.

Note 4) On or after June 23, 2012, the sum of 15,377 users of the e-mail OS smartphones, which he/she received through the Google Play through the Google Play (Gogle Play) and 201,029 users of the e-mail OS smartphones and after August 22, 2012, plus 15,377 users of the e-mail OS smartphones.

5) Even according to the records on the class related to app 15 A-15 app L-based website, submitted by the Plaintiff, “AM-school App” was recorded in the order of priority within 30 pages around May 29, 2013, which is the registration date of the instant registered trademark.