206Heo2776 Nullification of Registration (Trademarks)

Park Young-young

Seoul

Patent Attorney

Patent Attorney derivatives

1. panty of a stock company;

Seoul

Representative Director;

2. 주식회사 팬택앤큐리텔

Seoul

Representative Director;

[Defendant-Appellant]

September 28, 2006

October 26, 2006

1. The decision made by the Intellectual Property Tribunal on February 27, 2006 by the Intellectual Property Tribunal on the case No. 2634 shall be revoked.

2. The costs of lawsuit are assessed against the Defendants.

The order is as set forth in the text.

1. Reasons for the trial ruling of admitting a request for invalidation of service mark registration by the Defendants;

[Evidence] Evidence Nos. 1, 2, and 97

A. Plaintiff’s registered service mark and content of the comparable service mark (1) Plaintiff’s registered service mark

(1) : PAECH 2 Number: No. 118590

(3) Date of application / Date of registration: October 24, 2003 / July 11, 2005

(4) Designated service business: Development financing business, financial investment intermediary business, venture capital business, investment financing business, investment appraisal business, insurance appraisal business, stock market business, financial appraisal business [Class 36 categories of service business], technical research business, technical brokerage business, technical transaction brokerage business, intellectual property registration license business, intellectual property consulting business, patent attorney business, lawyer business, copyright management business, patent property value appraisal business, technology value assessment business [the type of service business, machinery design business, research and development agency business among the designated service business] (the type of service business is revoked on December 28, 2005] (2) comparative service mark 1

(1) Composition: Date of application / Date of registration / Number of registrations: April 27, 1991 / September 15, 1992 / Date of registration for renewal of the duration of trademark rights. (3) Date of registration for renewal of the duration of trademark rights: December 24, 2002

(4) The obligee of registration: Defendant panty

(5) Designated service business: Export and import agency business [the classification of service business category No. 35, the classification of service business category No. 112, the classification of the former service business (amended by the Ordinance of the Ministry of Trade, Industry and Energy No. 83, Feb. 23, 1998; hereinafter the same shall apply], goods brokerage business, trade brokerage business [the classification of service business category No. 36], telecommunications machinery and equipment leasing business [the classification of service business category No. 38], environmental pollution prevention business [the classification of service business category No. 40], telecommunications lecture business, sports back-up business [the classification of service business category No. 41], computer organization and program development business, and machinery design business [the classification of service business No. 42]. 3].

(1) Composition

(2) Date of application / Date of registration / Number of registration: April 27, 1991 / September 15, 1992 / The date of trademark right renewal registration. The date of trademark right renewal registration: December 24, 2002>

(4) The obligee of registration: Defendant panty

(5) Designated service business: Export and import agent business [Class 35 classified as service business], goods brokerage business, trade brokerage business [Class 36 classified as service business], telecommunications machinery, apparatus and lease business [Class 38 classified as service business], environmental pollution prevention business [Class 40 classified as service business], telecommunications lecture business, sports supporting business [Class 41 classified as service business], computer organization and program development business, machinery and design business [Class 42 classified as service business];

B. The Defendants filed for a registration invalidation trial on the ground that the Plaintiff’s registered service mark falls under subparagraphs 4, 6, 10, 11, and 12 of Article 7 of the Trademark Act because the Plaintiff’s registered service mark is identical or similar to the registered service mark, which is the Defendant panch Co., Ltd. based on earlier application, and its designated service business is also identical or similar to the same and similar to the designated service mark, or is likely to cause mistake or confusion as to the source of designated service as compared to the well-known and well-known Defendants’ trade name and comparative service mark.

(2) On February 27, 2006, the Korean Intellectual Property Tribunal deliberated on this case as the case No. 2005Da2634, and rendered a trial ruling accepting the Defendants’ request for invalidation of the registration on the ground that the Plaintiff’s registered service mark may cause confusion with the designated service business of the Defendants which are remarkably recognized among consumers at the time of application ( October 24, 2003) constitutes Article 7(1)10 of the Trademark Act.

2. Summary of the plaintiff's ground for revocation

A. In a trial proceeding, the registration of “ machine design business, research and development agency business” alleged as identical and similar to the designated service business of the comparable service mark among the designated service business of the registered service mark was cancelled, and the Defendants did not constitute an interested party entitled to file a petition for a registration invalidation trial under Article 71(1) of the Trademark Act.

Therefore, since the request for the invalidation trial by the defendants was rejected under Article 77 of the Trademark Act and Article 142 of the Patent Act, the trial decision contains an error of law by misunderstanding the legal principles as to the interested parties under Article 71 (1) of the Trademark Act.

B. The comparative service marks and the Defendants’ trade names are neither well-known nor well-known service marks or trade names.

The registered service mark of the Plaintiff is not applied or registered by imitateing the comparable service mark, but is not used for illegal purposes.The registered service mark is not likely to cause mistake or confusion as to the source of the designated service due to the difference between the comparable service mark and the designated service mark.

Therefore, the Plaintiff’s registered service mark does not constitute grounds for invalidation of registration under Article 7(1)4, 6, 7, 9, 10, 11, and 12 of the Trademark Act.

3. Summary of the defendants' grounds to maintain the trial decision

A. The registered service mark constitutes a service mark that is biased to well-known and well-known defendants’ reputation, and thus constitutes “service mark that is likely to disturb the public order or good customs” under Article 7(1)4.

B. The registered service mark constitutes “registered service mark” under Article 7(1)6 of the Trademark Act, which includes either the trade name or its abbreviation.

C. The registered service mark is similar to the comparable service mark and the designated service, so it constitutes a service mark which is identical or similar to another person’s registered service mark by earlier application as provided by Article 7(1)7 of the Trademark Act and used for the designated service identical or similar to that of the designated service.

D. Registered service marks constitute “service marks similar to the comparable service marks of Defendant Cpanty Co., Ltd., Ltd., which are remarkably recognized by consumers as indicating goods of others” under Article 7(1)9 of the Trademark Act.

E. The registered service mark constitutes “service mark” that is likely to cause confusion with the business of the Defendants, which is recognized remarkably among consumers under Article 7(1)10 of the Trademark Act.

F. The registered service mark constitutes “service mark” under Article 7(1)11 of the Trademark Act, which is likely to mislead or mislead consumers as to the quality of the designated service business.

G. The registered service mark is a service mark identical or similar to the comparative list, which is recognized as indicating a specific person’s designated service business by domestic or foreign consumers, under Article 7(1)12 of the Trademark Act, and constitutes “service mark used for unjust purposes, such as obtaining unfair profits by taking advantage of the well-knownness of the comparative service mark, or causing losses to the Plaintiff.”

4. Whether the Defendants are interested persons under Article 71(1) of the Trademark Act

An interested person who can file a petition for a trial on the invalidation of service mark means a person who has a direct interest in the extinction of a registered service mark as it uses or currently uses a service mark identical or similar to the registered service mark (Supreme Court Decision 2002Hu1256 Decided May 14, 2004).

The mark of the registered service mark is similar to the mark of the comparable service mark as seen below, and is identical and similar to “ machine design business, computer organization and program development business” among the designated service business of the designated service business designated at the time of application for the registered service mark, and the designated service business of the comparable service mark, and the Defendants are interested parties who use the service mark identical or similar to the registered service mark and are entitled to file a petition for a trial for invalidation of registration under Article 71(1) of the Trademark Act.

The Plaintiff asserts that, in a trial proceeding, the Defendants do not constitute an interested party who can file a petition for a registration invalidation trial, since the registration of the “ machine design business, research and development agency business,” alleged as identical and similar to the designated service business of the comparable service mark, among the designated service business of the registered service mark.

According to Gap evidence 2, among the designated service business of the registered service mark, the registration of " mechanical design business, research and development agency business" identical and similar to the designated service business of the defendants among the designated service business of the registered service mark was in progress.

12. Although the fact was revoked on 28. 28., it is recognized that "an adjudication for invalidation of registration may be filed even after the trademark right is extinguished" under Article 71 (2) of the Trademark Act, it cannot be deemed that the above designated service part was cancelled during the adjudication procedure and thus, the legal interest in the dispute over the invalidation and invalidation of the registered service mark has ceased to exist. Therefore, the plaintiff's above assertion is without merit.

5. In order for the registered service mark to be considered as a service mark that is likely to disrupt the public order or good customs as stipulated in Articles 7(1)4 and 2(3) of the Trademark Act as to whether the registered service mark falls under Article 7(1)4 of the Trademark Act, the act of using the registered service mark without permission, as if it intentionally imitates another person’s mark and registers or uses it in order to take advantage of the reputation of the wellknown other person’s service mark or trade name, etc., should generally be contrary to good customs such as fair business practices or business ethics (Supreme Court Decision 2004Hu592 Decided April 14, 2006).

In this case, there is no evidence to acknowledge that the Plaintiff imitated the mark and used the registered service mark in order to take advantage of the Defendants’ trade name and the reputation of the comparative service mark, etc., so the above assertion by the Defendants is without merit.

6. Whether the Plaintiff’s registered service mark falls under Article 7(1)6 of the Trademark Act or Article 7(1)6 and Article 2(3) of the Trademark Act provides that “the service mark containing the name, trade name or trade name, portrait, signature, seal, seal, pen name, pen name, or its abbreviation may not be registered as a service mark.”

그러나 원고의 등록서비스표인 “ PATECH " 이 피고 주식회사 팬택의 영문 회사명인 “ PANTECH ” 과 피고 주식회사 팬택앤큐리텔의 영문 회사명인 “ PANTECH & CURITEL " 의 전부를 포함하는 서비스표가 아니라 그 중 일부만을 포함하는 서비스표임은 그 자체로 명백하고, 원고의 등록서비스표인 “ PATECH " 이 피고들 상호의 약칭이라고 인정할 만한 아무런 증거가 없다 .

Therefore, the plaintiff's registered service mark does not fall under Article 7 (1) 6 of the Trademark Act.

7. Whether the Plaintiff’s registered service mark constitutes Article 7(1)7, 9, and 12 of the Trademark Act

(1) Whether a mark is similar between the registered service mark and the comparable service mark

The registered service mark is a English language trademark made by combining PAT's ‘PAT' and 'TECHOLGY'. The comparative service mark 1 is a letter trademark with PNTH' and the comparative service mark 2 is a letter trademark with 'PNTH' and the comparative service mark 2 is a letter trademark with 'panty' in Korean.

Since the registered service mark is a sign, it cannot be compared with the concept of the comparable service mark.

However, the registered service mark is similar to the comparable service mark 1 and English letters, and the overall word structure is similar to PATH 'PA 'PA - TEC - - It can cause confusion only because it is merely N' from 'N' in comparison service 1 -NT - TEC - It can cause confusion.

In addition, if a registered service mark is named as "house-based", it is the same as the beginning part and the last negative part of the comparable service mark and the comparable service mark, so the two service marks are very similar and similar.

Therefore, since registered service marks and comparative service marks are similar to the overall, objective, and separation, the marks of two service marks are similar. (2) Whether the designated service business is similar between the registered service marks and the comparative service marks should be determined according to the general transaction norms in consideration of the nature and content of the service provided, the means of provision, the place of provision, the scope of the service provider and consumers, etc. (Supreme Court Decision 2000Hu2156 Decided July 12, 2002).

The Plaintiff, as a patent attorney, provides financial and patent-related services at the request of individual customers who found the patent-related office in the course of operating the patent-related office. On the other hand, Defendant companies mainly advertise mobile phones produced and produced through mass media against the general public, who is not individual customers, sell them through an agency established across the country, and carry out follow-up services related to the sale of mobile phones and other research and surveys incidental to the manufacture and sale of mobile phones.

Therefore, considering the nature, contents, means, place of provision, provider of service and consumer scope of such service, it is judged that two designated service businesses are not similar in terms of transaction norms.

B. Therefore, the registered service mark is not similar to the comparable service mark, and thus does not fall under Article 7(1)7 of the Trademark Act.

Meanwhile, the above assertion by the defendants that the registered service mark falls under Article 7 (1) 9 and 12 of the Trademark Act is premised on the fact that the registered service mark is similar to the comparative service mark, but as long as the registered service mark and the comparative service mark are deemed not similar, the plaintiff's above assertion is without merit without any need to examine the remainder of the service mark.

8. Whether the Plaintiff’s registered service mark falls under Article 7(1)10 of the Trademark Act

A. Legal principles on the requirements for application of Article 7(1)10 of the Trademark Act

Article 7 (1) 10 and Article 2 (3) of the Trademark Act provide that service marks that may cause confusion with another person's business which are recognized remarkably among consumers shall not be registered.

In this case, the service mark used for another person's goods or business, which is remarkably recognized among consumers, is so-called a well-known service mark (known service mark), and refers to not only the service mark is widely known to traders or ordinary consumers, but also to have superior status in comparison with other service marks by obtaining good quality from customers or ordinary consumers due to the high quality of the designated service business. In addition, whether a service mark constitutes a well-known service mark under Article 7 (1) 10 of the Trademark Act shall be determined by taking into account the period, method, mode, and manner of using the service mark, as well as whether it is objectively widely known under the general social norms, and the standard of judgment is the time of applying for the registered service mark (see Supreme Court Decision 97Hu3975, 3982, Feb. 26, 199).

On the other hand, Article 7(1)10 of the Trademark Act only provides that “it may cause confusion with another person’s business, which is recognized remarkably among consumers,” as a requirement for its application, is not the same or similar between the service mark at issue and the well-known mark.

This is a business that is produced and sold using a well-known business mark, etc., even if it is a similar business, it is likely to be mistaken or confused as a product of excellent quality generated from a well-known business owner or affiliated company. Therefore, the service mark that may cause confusion with the well-known business is designed to prevent it from being widely registered beyond the formal similar concept.

Therefore, even if a service mark is not similar to a well-known service mark, if it is easily connected with another person's well-known service mark or designated service business, or if it is deemed to have close relation with another person's designated service business, and it may cause mistake and confusion as to the source of designated service business, such service mark may not be registered under Article 7 (1) 10 of the Trademark Act (Supreme Court Decision 2001Hu2870 Decided May 28, 2002). However, if the composition and designated service business of the well-known mark are different, and there is no concern that the business of using the similar service mark is operated by the person holding the right to the service mark of the well-known mark or a person in special relation with the person holding the right to the service mark of the well-known mark, or in light of the form of business and other circumstances, etc., it is possible to cause confusion and confusion as prescribed in Article 7 (1) 10 of the Trademark Act.

4. 86Hu183 delivered on December 12, 1991, and 90Hu1376 delivered on February 12, 199

B. Whether the comparative service mark constitutes a well-known business mark

On October 24, 2003, which is the filing date of the registered service mark, whether the comparable service mark constitutes a service mark that may cause confusion with another person's business that is remarkably recognized among general consumers.

(1) Facts of recognition

[Evidence] Evidence Nos. 2 through 6, Eul evidence Nos. 8 through 41, Eul evidence Nos. 43, 44, Eul evidence Nos. 75 to 105, and Eul evidence Nos. 106 to 113

① Defendant panty Co., Ltd. was established in March 1991, and from April 1992, from May 1997, the mobile phone (MAMA) terminal was manufactured and sold, and was listed on the Stock Exchange in August 1997, and its capital was approximately KRW 12.4 billion as of January 31, 2003.

피고 주식회사 팬택앤큐리텔은 2001, 4. 9. 설립된 주식회사 현대큐리텔이 2002. 8월에 상호변경된 회사인데, 2002. 7월 중국의 Capital, CEC Telecom사에 이동전화 ( GSM ) 단말기 60만 대를 수출하기로 하는 계약을 체결한 이래 이동전화단말기를 생산, 판매하여 오고 있으며, 2003. 9. 에는 증권거래소에 상장되어 2002. 10. 8. 현재 자본금은 약 748억 원이다 .

1. The defendant 1 panty Co., Ltd. was selected from the Ministry of Trade, Industry and Energy in June 1994 as a promising advanced technology enterprise, obtained the certification from the Korea Efficiency Association (Quality Management System) in May 1999, and obtained the certification of TL 9000 (Quality Management System for Information and Communications Equipment Industry) in October 2002.

피고 주식회사 팬택앤큐리텔은 2002년 8월에 중소기업 수출 1위 기업으로 선정되고 , 2002년 10월에 전국에 172개소의 서비스센터를 개설하였다 .

③ 피고 주식회사 팬택의 이동전화 ( CDMA ) 단말기 연간 매출액은 1992년에 27억 원에서 2001년에는 약 3, 860억 원 ( 265만 대 ), 2002년에는 약 5, 460억 원 ( 436만 대 ) 에 이르렀고, 피고 주식회사 팬택앤큐리텔의 이동전화 ( CDMA 및 GSM ) 단말기 연간 매출액은 2002년에 6, 250억 원 ( 370만 대 ) 정도이며, 연간 광고비 지출액은 주식회사 팬택이 2002년에 5억 원, 주식회사 팬택앤큐리텔이 2002년에 59억 원 정도이다 .

④ 수출액은 주식회사 팬택이 1994년 11월에 500만 달러에서 2003년 10월경 약 4억 달러에 이르렀고, 주식회사 팬택앤큐리텔은 2002년에 4억 달러에서 2003년 10월경 약 5억 달러에 이르고 있다 .

⑤ On November 20, 200, the article on the comparable service mark 1 of the Defendant Cpanty Co., Ltd., as well as the article on the comparative service mark 1 of the Defendant Cpanty, was published on several occasions at the same time in the same time, including the same daybook, the Joseon Day, the Korean New Daily, the Korean Culture Day, the Korean Economic Newspapers, the Korean Economic Newspapers, and the Internet news sites, magazines, etc.

In full view of all the circumstances such as the business period, method and form, annual sales, advertisement method, frequency and contents of the service mark subject to comparison as above, the service mark subject to comparison was deemed to have been a well-known business mark (known service mark) widely known among traders or general consumers around October 24, 2003, which is the filing date of the registered service mark.

C. Whether the registered service mark constitutes Article 7(1)10 of the Trademark Act (1) similar or related to the mark among the two service marks

Considering that the registered service mark and the comparative service mark are similar to the PATECH’s and the panty mark as seen earlier, and their appearance and name are closely related to the composition. (2) as seen earlier, whether the registered service mark and the similar service mark are economically related to the designated service, and whether the designated service mark are not similar to the registered service mark, the two service marks are similar. Thus, as seen earlier, if the designated service mark and the similar service mark are able to attract consumers by taking advantage of the reputation of the famous service mark, it is closely related to the registered service mark and the designated service mark and the designated service mark are not closely related to the designated service business. (3) The designated service mark and the similar service mark are not related to the designated service business in the name of the designated service business entity, and are not related to the designated service business entity, and are not related to the designated service business entity’s external research and development, and (4) the designated service mark and the designated service mark are not related to the designated service business entity’s external research and development, and are not related to the designated service business entity’s.

(3) Therefore, the two service marks are not likely to cause mistake and confusion as to business. Thus, the Plaintiff’s registered service marks do not fall under Article 7(1)10 of the Trademark Act.

9. We examine whether the Plaintiff’s registered service mark falls under Article 7(1)11 of the Trademark Act or whether the registered service mark constitutes “service mark” as provided in the latter part of Article 7(1)11 of the Trademark Act and Article 2(3) of the Trademark Act.

A. Legal principles on the requirements for application of Article 7(1)11 of the Trademark Act

Whether a service mark constitutes “a service mark which is likely to mislead consumers” as above should be determined at the time of the decision to register the service mark as to the application for the registration of the service mark. In order to fall under this, the comparable service mark or its designated service business should not be always known and well-known. However, at least, consumers or traders in general domestic trade can be recognized as a specific person’s service mark or business if the service mark or its designated service business is used in the same or similar designated service business as the comparable service mark. In such a case, if the service mark is used in the same or similar designated service business as the compared service mark, it may cause general consumers to misunderstand and confuse the source of business pursuant to the above provision. If the comparative service mark obtains well-knownness by widely known to the general public other than the trader of the designated service business, the business or similar business as well as the business that has widely known the service mark as well as any other business type, even if it is used in the same or similar service business type.

It can be recognized that a service mark holder of a well-known mark or a person in a special relationship with him/her is produced or sold, and in that case, even if a service mark is used for any business other than the designated service business of the comparable service mark, it may cause consumers to mistake and confuse the source of business (Supreme Court Decision 9Hu2594 delivered on February 8, 200).

B. Whether registered service marks fall under Article 7(1)11 of the Trademark Act (1) or not, the marks between the two service marks are similar to each other as described in the preceding 7. (1).

In addition, at the time of the decision to register the registered service mark on July 11, 2005, the comparative service mark is considered to have been well-known service mark as seen in the preceding 8. B. (2) but as seen in the preceding 8.c. (2) above, there is no competitive or economic relation to the extent that it may attract consumers by taking advantage of the reputation of the well-known service mark among the designated service businesses of the two service marks, as seen in the preceding 8.C. (2).

Furthermore, there is no evidence that there is any special circumstance to believe that the registered service mark is used by the service mark holder of the famous Defendants’ mark in the case where the registered service mark is used for the designated service business identical or similar to the designated service business of the comparable service mark. (3) Therefore, the registered service mark cannot be deemed a service mark that is likely to deceive consumers, and thus, it does not fall under Article 7(1)11 of the Trademark Act.

10. Conclusion

Therefore, the Plaintiff’s registered service mark does not fall under any of subparagraphs 4, 6, 7, 9, 10, 11, and 12 of Article 7(1) of the Trademark Act, and thus, the Plaintiff’s registered service mark is unlawful.

Therefore, since the plaintiff's claim seeking the revocation of the trial decision of this case is well-grounded, it is decided as per Disposition by accepting it.

Judges Cho Jae-ho

Judges Seo Young-gu

Judges Yoon Tae-sik