[1] The case holding that the registered trademark and the pre-use trademark are not similar to the pre-use trademark “BG” in a case where Company A filed for a trial for invalidation of trademark registration on the ground that the registered trademark “” of Company B is similar to the pre-use trademark “BG” known to the extent

[2] In a case where Company A filed for a trial on invalidation of trademark registration on the ground that the pre-use trademark “BG”, which is known to the extent that the registered trademark “ B” was recognized as a trademark or product of Company A, constitutes Article 7(1)9 of the Trademark Act, the case affirming the judgment below holding that the pre-use trademark cannot be deemed as a well-known trademark

[3] In a case where Company A filed a petition for a trial to invalidate trademark registration on the grounds that Company B’s registered trademark “” falls under Article 7(1)11 of the Trademark Act, the case holding that the registered trademark cannot be deemed as falling under the possibility of causing mistake or confusion between Company A’s pre-use trademark “BG” and the source of goods

[1] Article 7 (1) 9, 11, and 12 of the Trademark Act / [2] Article 7 (1) 9 of the Trademark Act / [3] Article 7 (1) 11 of the Trademark Act

Suwon Written Co., Ltd. (Law Firm, Kim & Lee LLC et al., Counsel for the defendant-appellant)

Mel A Multi- brand Holdings, Inc. (Patent Attorney Kim Chang-soo et al., Counsel for the defendant-appellant)

Patent Court Decision 2010Heo920 decided July 14, 2010

The appeal is dismissed. The costs of appeal are assessed against the plaintiff.

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

1. On the first ground for appeal

The similarity of a trademark shall be determined depending on whether there is a concern for ordinary consumers or traders to mislead or confuse the origin of the designated goods in the transaction of the designated goods by observing the appearance, name, and concept objectively, comprehensively, and externally, and on the basis of the direct perception that ordinary consumers or traders feel about the trademark. Thus, even if there is a similar part between the compared trademarks, if there is little possibility that the trademark can be separated or recognizable, and if it can avoid confusion of the source clearly when observing the whole part, it shall not be deemed a similar trademark (see, e.g., Supreme Court Decisions 81Hu29, Jun. 8, 1982; 2008Hu1739, Sept. 11, 2008).

In light of the above legal principles and records, the registered trademark of this case (registration No. 766697) composed of the designated goods such as cBG and the “BCG” as “BG,” which is easily understood by ordinary consumers or traders, is a group that combines “GEN” with “BB” without being maintained by “BCB,” and the composition of “BCG” among them is not unique compared to other parts. Thus, the composition or appearance of the registered trademark of this case is likely to occur, and it is also known that the pre-use trademark composed of “BG” such as “BG,” is a kind of female product, and the pre-use trademark consisting of “BCG” as “BG,” which is a common trademark of both trademarks. Therefore, it is reasonable to view that ordinary consumers or traders simply refer the registered trademark of this case to “BCG” parts only or concept it does not mean the trademark of this case.

Thus, since the registered trademark of this case is referred to as the "non-chronation" as a whole, it is distinguishable from the pre-use trademark, which is referred to as the "non-chronation", and is considerably different from its appearance, and in terms of the concept, it is not possible to compare each other, and as a whole, it is difficult to view that general consumers or traders are likely to mislead or confuse the source of goods.

In the same purport, the conclusion of the court below that the registered trademark of this case and the pre-use trademark are not similar is correct, and there is no error in the misapprehension of legal principles as to the similarity of trademarks.

2. On the second and fourth points

A. As well-known trademark under Article 7 (1) 9 of the Trademark Act, in order to exclude the trademark registration of another person, it is necessary for consumers or traders to widely recognize that the trademark is used for the trademark of another person. Specifically, the issue of whether the trademark is widely known or not should be the criteria for the use, supply, period, method, mode, quantity, scope of use, scope of transaction, etc. of the trademark, or whether it is objectively widely known under the ordinary social norms (see Supreme Court Decision 93Hu268 delivered on January 25, 1994, etc.).

Examining the reasoning of the judgment below in light of the above legal principles and records, it is just to conclude that the pre-use trademark constitutes a widely recognized well-known trademark beyond the extent that it can be perceived as a trademark of a specific person between domestic consumers or traders at the time of applying for the trademark of this case, and there is no error in the misapprehension of legal principles as to the determination of well-knownness or in violation of the rules of evidence, as

B. In order to fall under Article 7(1)12 of the Trademark Act, an applicant for a trademark should use the trademark identical or similar to a trademark recognized as indicating the goods of a specific person for unlawful purposes. The purport of the above provision is to prevent damage to the right holder of the trademark, or not allow a trademark used for the purpose of obtaining unfair profits by using such imitated trademark, by preventing the business in the Republic of Korea of a trademark right holder, which is recognized as indicating the goods of a specific person by a third party, by registering and using the trademark which is recognized as indicating the goods of a specific person in the Republic of Korea or among consumers in the Republic of Korea or abroad. On the other hand, whether there is an unlawful purpose under the above provision should be determined based on comprehensive consideration of the degree of recognition or creativity of the trademark of a specific person, degree of the same or similar nature of the trademark of a specific person, the existence and content of the trademark negotiations between the applicant and the specific person, the relationship between the parties, whether the applicant specifically prepares for business using the registered trademark, whether goods are identical or similar, or economic relation with the goods, and circumstances at the time of the registered trademark (see, etc.).

In order to fall under Article 7 (1) 12 of the Trademark Act, the court below erred in determining that the pre-use trademark should be a well-known trademark beyond the degree recognized as indicating the goods of a specific person among domestic or foreign consumers. However, in light of the above legal principles, it cannot be readily concluded that the defendant applied for the trademark of this case for unlawful purpose by imitateing the plaintiff's pre-use trademark, and therefore, the court below decided that the registered trademark of this case does not fall under Article 7 (1) 12 of the Trademark Act, and there is no error in the misapprehension of legal principles as to the above provisions of the Trademark Act which affected the conclusion

3. On the third ground for appeal

If a registered trademark is likely to mislead consumers as defined in Article 7(1)11 of the Trademark Act, it shall be known that the pre-use trademark or the goods used thereof compared to the registered trademark or the designated goods are not necessarily well-known, but at least in general transactions in the Republic of Korea to the extent that it can be recognized as a specific person's trademark or goods if the trademark or goods are used in the same or similar goods with the pre-use trademark, and in such a case, if there are special circumstances to believe that a trademark identical or similar to the pre-use trademark is being used by the right holder of the pre-use trademark to the extent that it is being used or not used for the goods identical or similar to the goods in question, it shall be deemed that there is a concern for consumers to mislead or confuse the source, and on the other hand, whether it is likely to mislead consumers shall be determined at the time of the decision to register the trademark (see, e.g., Supreme Court Decision 2001Hu3187, Mar. 11, 2004).

In light of the above legal principles and records, the plaintiff's pre-use trademark was known to the extent that it could be recognized as a specific person's trademark or goods at the time of the decision to register the registered trademark of this case, and further, the evidence submitted by the plaintiff alone cannot be deemed to have reached the well-known trademark. However, as seen earlier, the registered trademark of this case and the pre-use trademark of this case are not similar to the registered trademark of this case, and there are no special circumstances to believe that the registered trademark of this case is being used by the right holder of the pre-use trademark. Thus, the registered trademark of this case cannot be viewed as a trademark

The decision of the court below to the same purport is correct, and there is no error in the misapprehension of legal principles as to the latter part of Article 7 (1) 11 of the Trademark Act as alleged in the grounds of

4. Conclusion

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.

Justices Jeon Soo-ahn (Presiding Justice)