Amar (Attorney Lee Byung-ho et al., Counsel for the plaintiff-appellant)

Master Pharmaceutical Co., Ltd. (Patent Attorney Choi Jae-chul, Counsel for the plaintiff-appellant)

October 8, 2004

1. The decision made by the Intellectual Property Tribunal on June 14, 2004 on the case No. 2003Da1969 shall be revoked.

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

The same shall apply to the order.

1. Basic facts

[Evidence: Evidence No. 1, 2, 5 through 8, 11]

A. The registered trademark of this case

(a) Registration number: No. 546524;

(2) Date of application/registration: January 7, 2002/ April 30, 2003

(3) Marks:

(4) Person entitled to registration: Defendant

(5) Designated goods: Category 5 of goods classified under Article 6(1) of the Enforcement Rule of the Trademark Act (hereinafter referred to as “the category of goods”); Category 1 goods of the attached Table 1 of the Trademark Act (hereinafter referred to as “the category of goods”)

(b) Preregistered trademarks;

(i) the Prior Registered Trademark 1

(a) Registration number: No. 531785;

(B) Date of application/registration: July 9, 2001/ October 7, 2002

(C) Marks:

(D) Person Entitled to register: Cloulous Drug Corporation

(e) Designated goods: “Eth of the product categories listed in the attached Table 1 of Article 6(1) of the former Enforcement Rule of the Trademark Act (amended by the Ordinance of the Ministry of Commerce, Industry and Energy No. 146 of Dec. 24, 2001) (hereinafter “the product classification”)” in Article 6(5) of the Product Classification in the attached Table 1 of the former Enforcement Rule of the Trademark Act (hereinafter “the product classification”).

(ii) the Prior Registered Trademark 2

(a) Registration number: No. 185156;

(B) Date of application/registration date/Renewal registration date: July 6, 1988/ December 13, 1989/ February 15, 2000

(C) Marks:

(d) Person holding the right of registration: Scropha stropha strophacenabama

(e) Designated goods: “Treatitis” in Chapter 1 of the previous category of goods, and “bloods, typines, saccines, rainfalls, lectures, Amino acids, Ambassadors, Ambassadors, intestines, intestines, intestines, intestines, intestines, intestines, and veterinary medicine” in Chapter 5 of the previous category of goods.

(iii) Priorly registered trademark 3

(a) Registration number: No. 300370;

(B) Date of application/registration: April 9, 1993/ October 21, 1994

(C) Marks:

(라) 등록권리자 : 헨켈코만디트게젤샤프트아우프악틴

(E) Designated goods: “The local removal agents, gys removal agents, salting agents, chemical reagents, corrosion control agents, and sterilization agents” in Chapter 10 of Article 6(1) of the former Enforcement Rule of the Trademark Act (amended by Ordinance of the Ministry of Trade, Industry and Energy No. 83 of February 23, 1998) (hereinafter “former classification of goods”).

(iv) the Prior Registered Trademark 4

(a) Registration number: No. 300381;

(B) Date of application/registration: April 9, 1993/ October 21, 1994

(C) Marks:

(라) 등록권리자 : 헨켈코만디트게젤샤프트아우프악틴

(e) Designated goods: Chapter 10 of the classification of the previous products of the Gu “local removal agents, gye removal agents, salting agents, chemical reagents, influorants, influorants, fluorants,”

(v) the preregistered trademark 5

(a) Registration number: No. 376805;

(B) Date of application/registration: April 2, 1996/ September 30, 1997

(C) Marks:

(d) Person entitled to registration: Sporid-Spolym (Ausland)

(e) Designated goods: Category 10 of the goods of the Gu "the medicines for the prevention and treatment of dental infections, medicines for the prevention and treatment of dental diseases, medicines for the treatment of oral diseases, dental stability medicines, and medicines for the terminal boundary"

C. Details of the instant trial decision

The plaintiff filed a petition for a trial on invalidation of registration against the defendant pursuant to Article 71 (1) 1 of the Trademark Act by asserting that the registered trademark of this case, similar to the prior registered trademark, may cause mistake and confusion as to the source of goods if both trademarks are used together. The plaintiff filed a petition for a trial on invalidation of registration pursuant to Article 71 (1) 1 of the Trademark Act by asserting that the registration should be invalidated, and the Korean Intellectual Property Tribunal deliberated on it as 2003Da1969 on June 14, 2004 and dismissed the plaintiff's petition for a trial on the following grounds.

D. Summary of the grounds for the instant trial decision

The part "FERRO" of the prior registered trademark 1 has the meaning of "the steel content, steel content," and is widely used in the medicine, and thus becomes an essential part of "TRE" as to the designated goods. The registered trademark of this case and prior registered trademark 1 have different appearance, and prior registered trademark 1 is referred to as "JRO" or "JRO", respectively. Thus, both trademarks are similar trademarks, and prior registered trademark 2 is also referred to as "FERO" of the prior registered trademark, and the designated goods also have weak or weak distinctiveness in relation to "blood, non-saccine, cardiopathy, and cardiopathal disease treatment chemicals," and the remaining parts are not required. Thus, the registered trademark of this case and prior registered trademark 2 are similar to each other, and thus, the trademark of this case and prior registered trademark 3 are different from the registered trademark of this case, and the trademark of this case and the trademark of this case can not be accepted in relation to the designated goods of this case, since the trademark of this case is identical to the trademark of this case 4.

2. Whether the trial decision of this case is legitimate

A. Grounds for revocation of the Plaintiff’s trial decision

The original adjudication did not determine the similarity of the registered trademark of this case and the part "FERRO", which is included in the first or fourth registered trademark, can be separated from other parts and added to the designated goods. The essential part of the trademark of this case and the first or fourth registered trademark of this case is very similar. Since the trademark of this case and the first or fourth registered trademark of this case are very similar, both trademarks are similar to each other, and the designated goods are also similar to each other. Thus, the registration of this case shall be invalidated because the registered trademark of this case falls under Article 7 (1) 7 of the Trademark Act in relation to the first or fifth registered trademark. Accordingly, the adjudication of this case shall be revoked in an unlawful manner.

B. Determination

(1) First, we examine whether the instant registered trademark falls under Article 7(1)7 of the Trademark Act because it is identical or similar to the prior registered trademark 2.

Examining the similarity between the registered trademark of this case and the prior registered trademark 2, the trademark of this case is composed of two parts consisting of the Korean language “franch” and the English text “FO” combination, and the prior registered trademark 2 is composed of “FERDDAL” due to the combination of three parts of English text, and its appearance is less than, but in the name, the trademark of this case is called “franch” at all times by Korean part. The prior registered trademark 2 is distinguishable from each other in appearance, and it cannot be seen that the trademark of this case is completely separated from the two parts, and thus, it cannot be seen that the trademark of this case is completely separated from the two parts, “FOO”, “DUNAL” and “DUNAL”, and it cannot be seen as being completely distinguishable from the two parts, so it is difficult to see that the two parts cannot be seen as being identical to those of the first registered trademark, and thus, the trademark of this case can be seen as being completely distinguishable from the two parts “FOD”.

In light of the fact that the above part of the registered trademark 2, "FER", "FO", "FO", is not a combination of chemical ingredients 8 or FOE, and the above part is not a combination of chemical ingredients 1 or 6, and there are many trademarks including "FERO", the above part of the registered trademark 2 constitutes a mark of very weak nature in relation to the designated goods, and accordingly, it is argued that the remaining part of the designated goods should be compared to the registered goods of this case. Thus, the issue of whether a trademark is a trademark composed solely of a mark indicating the quality, efficacy, and use of the goods stipulated in Article 6 (1) 3 of the Trademark Act, and it is not objectively determined by the Supreme Court on the basis of the concept of the trademark 1 or 2's report on the fact that it is not a combination of raw materials used by the above registered trademark 3's general consumers in light of the common quality, efficacy, and social circumstances of the relevant designated goods.

Furthermore, Class 5, among the designated goods of the designated goods of the registered trademark 2 prior to the designated goods of the instant registered trademark, are all goods belonging to the human body and their use, production and sales channel are identical or overlap. Thus, both trademarks are similar to each other.

Therefore, since the registered trademark of this case and the prior registered trademark 2 are similar to the overall mark and the designated goods are also similar, the registered trademark of this case constitutes Article 7 (1) 7 of the Trademark Act in relation to the two prior registered trademarks.

(2) The Plaintiff asserts that the registered trademark of this case is similar even if compared with the first registered trademark 1, 3, and 5. However, since the first registered trademark 1 is clear that it is registered after the filing date of the instant registered trademark, Article 7(1)7 of the Trademark Act as of the time of application cannot be applied to the first registered trademark. The third and fourth of the first registered trademark are chemical products used for purposes other than those of human body, and their designated goods are mainly manufactured by pharmaceutical companies and sold through pharmacies, etc. for the purpose of preventing and treating human disease, and their designated goods are different from the designated goods of the instant registered trademark of this case. The first registered trademark 5 is similar to each other because the English language “PAO”, which is the mark, can be seen as a large term “spawn” in English language, and thus, it can be easily distinguishable from the first registered trademark of this case as to the origin of the trademark of this case, and it can not be seen that the trademark of this case is clearly different from the third or fourth of the trademark of this case as to the general consumers.

(3) Ultimately, the registered trademark of this case falls under Article 7 (1) 7 of the Trademark Act in relation to the pre-registered trademark 2 and its registration should be invalidated, and the decision of this case is unlawful in conclusion.

3. Conclusion

Therefore, the decision of this case is unlawful, and it is so decided as per Disposition by the assent of all participating Justices.

Judges Lee Jae-hwan (Presiding Judge)