In a case where a prior notification of a ground for rejection was not made at the time of examination of a trademark application, but the ground for rejection was not made at the time of the decision to reject the application, whether the grounds for rejection should again be notified of the ground for rejection pursuant to Articles 81 and 23 of the former Trademark Act in a trial proceeding against the decision to reject the application (affirmative in principle), and whether a request for rejection may be dismissed on the ground that the ground for rejection is justifiable in the outcome of the decision to reject the application based on other grounds for rejection, without notifying the grounds for rejection pursuant to the aforementioned provisions (negative)

According to Articles 23 and 81 of the former Trademark Act (wholly amended by Act No. 14033, Feb. 29, 2016; hereinafter the same), if an applicant intends to make a decision of refusal at the examination stage of a trademark application, he/she shall notify the applicant of the grounds for rejection prior to the examination. In a trial procedure of the Intellectual Property Tribunal against the decision of refusal, an applicant or claimant notified the applicant of the grounds for rejection prior to the notification of the grounds for rejection. Upon receipt of the foregoing provision, an applicant or claimant may submit a written opinion on the grounds for rejection notified within the period for submission, and may resolve the grounds for rejection by amending the matters indicated in the grounds for rejection. Even if the grounds for rejection were to be notified in advance at the examination stage, such grounds constitute “other grounds for rejection” in a trial procedure against the decision of rejection, and thus, the applicant or claimant is obliged to give the applicant an opportunity to submit a written opinion and make a new notification of the grounds for rejection pursuant to Article 81 of the former Trademark Act and notify the applicant of the grounds for rejection in advance.

Articles 23 (see current Article 55) and 81 (see current Article 123) of the former Trademark Act (wholly amended by Act No. 1403, Feb. 29, 2016)

Angrad Esar (NDRE SA) (Patent Attorney Park Jong-won et al., Counsel for the defendant-appellant)

The Commissioner of the Korean Intellectual Property Office

Patent Court Decision 2017Heo2215 decided July 6, 2017

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

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

1. According to Articles 23 and 81 of the former Trademark Act (wholly amended by Act No. 14033, Feb. 29, 2016; hereinafter the same), if a claimant intends to make a decision of refusal at the examination stage of a trademark application, he/she shall notify the applicant of the grounds for rejection. In a trial proceeding conducted by the Intellectual Property Tribunal against the decision of refusal, the applicant or claimant notified the applicant of the grounds for rejection in advance. Upon receipt of the notification of the grounds for rejection under the foregoing provisions, the applicant or claimant may submit a written opinion on the grounds for rejection notified within the submission period, and may amend and resolve the grounds for rejection upon receipt of the request. Even if the applicant or claimant notified the grounds for rejection in advance at the examination stage, if the grounds for rejection did not appear as the grounds for rejection in a trial proceeding against the decision of rejection, such grounds constitute “other grounds for rejection” in a trial proceeding, and thus, the applicant or claimant is entitled to notify the applicant of the grounds for rejection under the provisions of Article 281 of the former Trademark Act of the grounds for rejection and the grounds for rejection.

2. The reasoning of the lower judgment and the record reveal the following facts.

A. With respect to the instant international registration application trademark and service mark (international registration number omitted), the Korean Intellectual Property Office examiner notified the provisional rejection on the ground that the mark falls under Article 7(1)7 of the former Trademark Act and the designated goods and service business are similar to the prior registered trademark 1 through 11, and thus, it cannot be registered on the ground that the trademark falls under Article 7(1)7 of the former Trademark Act. Accordingly, the Plaintiff submitted an amendment to delete “comman Management” in conflict with the designated service business of the designated goods and service business of the prior registered trademark and service mark of this case, and submitted a written opinion to the effect that the prior registered trademark 1 through 5, 7, or 11 is not similar to the instant international registration trademark, service mark and mark. However, the Korean Intellectual Property Office examiner rejected the application on the ground that “the prior registered trademark 1 through 5, 7, or 11 is similar to the instant international registration application trademark, service mark and the instant designated goods and service business, and thus cannot be registered on the ground that it falls under Article 7(1)7(7(7)7 of the former Trademark Act.”

B. In filing a petition for an appeal against the foregoing decision of refusal with the Intellectual Property Tribunal, the Plaintiff made an amendment to delete all the designated goods and services that conflict with the designated goods and services of the prior registered trademark 1 through 5, 7 or 11 among the designated goods and services of the trademark and service marks of the instant international registration, and the said amendment included “comman Management” in the designated service business. Since then, the Plaintiff submitted to the Intellectual Property Tribunal a written opinion stating that “the foregoing amendment included “comer’s “comed assets management” in the designated service business.” Since it was an error, the Plaintiff’s assertion that “comer’s correction is excluded.”

C. The Intellectual Property Tribunal, without notifying the Plaintiff of the grounds for rejection as to the 6th of the prior registered trademark, dismissed the request for adjudication on the ground that “comman management” in the designated service business of the instant international registration application trademark and service mark was identical or similar to the prior registered trademark 6 and the mark and designated service business constituted Article 7(1)7 of the former Trademark Act.

D. The Plaintiff asserted that the instant trial decision was erroneous in the course of rendering no opportunity to submit a written opinion while filing a lawsuit seeking revocation of the trial decision on the instant case. However, the lower court dismissed the Plaintiff’s claim on the ground that the grounds for rejection related to the pre-registered trademark 6 constituted the Plaintiff’s grounds for submission of a written opinion and for correction.

3. Examining the above facts in light of the legal principles as seen earlier, even if “the Asset Management” in the designated service business of the application trademark or service mark of this case was given an opportunity to present opinions on the grounds for rejection, the Plaintiff’s amendment to delete “the Asset Management” of the designated service contrary to Article 7(1)7 of the former Trademark Act, which is identical or similar to “the prior registered trademark 6,” at the examination stage, the examiner of the Korean Intellectual Property Office did not consider “the grounds for rejection related to the prior registered trademark 6 at the time of the decision of refusal as the grounds for rejection,” and did not consider “the grounds for rejection regarding the prior registered trademark 6 at the time of the decision of refusal,” and the Intellectual Property Tribunal did not consider “the grounds for rejection regarding the designated service business of the application trademark or service mark of this case as the grounds for rejection of the prior registered trademark 6 and did not present an opportunity to present an opinion to the Intellectual Property Tribunal pursuant to Article 7(1)7(1)7 of the former Trademark Act.”

4. Therefore, the lower court determined that there was no procedural error in the instant trial decision, thereby adversely affecting the conclusion of the judgment by misapprehending the legal doctrine on notification of grounds for rejection at the trial stage, and the allegation in the grounds of appeal assigning this error is with merit. The Supreme Court Decision 2015Hu1997 Decided March 24, 2016 cited by the lower court differs from the instant case, and thus, is inappropriate to be invoked in the instant

5. Therefore, without further proceeding to decide on the remaining grounds of appeal, 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 Ahn Jae-chul (Presiding Justice)