Co., Ltd. (Korean Patent Attorney Han-soo et al., Counsel for the defendant-appellant)

Future Mamp Co., Ltd. (Patent Attorney Han-tae, Counsel for defendant-appellant)

January 13, 2011

1. The decision made by the Intellectual Property Tribunal on October 18, 2010 on the case No. 2010Da336 is revoked.

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

The same shall apply to the order.

1. Basic facts

A. The registered trademark of this case

1) Marks:

(2) Date of application/registration date/Renewal of registration/Renewal of registration: October 28, 1999/ October 26, 200/ October 15, 2010/No. 4797288)

3) Trademark right holder: Plaintiff

4) Designated goods: “The identification and engine medicine, a lecture, a mouth, an oral audience dose medicine, an ambassadorrology medicine, an immunologyrology medicine, an anti-exploitation medication, an anti-productive medicine, a non-exploitation medicine, a non-explosionr medicine, a pharmacological cand, a clateral engine medicine, a allebrology medicine, an albrology medicine, and an albsing medicine” in Chapter 5 of the classification of goods.

(b) a challenged mark;

1) Marks:

2) User: Defendant

3. Goods using: Drug (raw materials of drugs);

4) An explanatory note of the challenged mark prepared by the defendant: It is as shown in the attached Form.

C. Details of the instant trial decision

1) On February 11, 2010, the Defendant asserted that the challenged mark falls under the main sentence of Article 51(1)1 of the Trademark Act as a trademark indicating the Defendant’s trade name in a common way, and that the mark and the goods using the mark are different from the mark and the designated goods of the instant registered trademark, and thus, do not fall under the scope of the right, and filed a claim for a trial to confirm the scope of the right.

2) After examining the above case of appeal as 2010Da336, the Korean Intellectual Property Tribunal rendered a trial decision on October 18, 2010 on the ground that “The mark subject to confirmation falls under “a mark indicating one’s trade name in a common way,” and the Defendant cannot be deemed to have used it for the purpose of unfair competition, and thus falls under Article 51(1)1 of the Trademark Act, and thus does not fall under the scope of the right of the registered trademark of this case.”

[Grounds for recognition] Evidence Nos. 1 through 3, the purport of the whole pleadings

2. Summary of the parties' arguments

A. The plaintiff

The challenged mark is similar to the registered trademark of this case, and it is used for the purpose of unfair competition in order to gain unfair profits by taking advantage of the credibility of the registered trademark of this case widely known to the drug industry as well as pharmacy industry after the registration of the establishment of the registered trademark of this case. Accordingly, since the challenged mark belongs to the scope of the right of the registered trademark of this case, the decision of this case, which different conclusions, is unlawful.

B. Defendant

The mark subject to confirmation is not similar to the registered trademark of this case because the mark and the goods used are different from the mark and the designated goods of the registered trademark of this case, and it falls under “a mark indicating one’s trade name in a common way,” and it cannot be deemed that the defendant used it for the purpose of unfair competition, and thus constitutes the main text of Article 51(1)1 of the Trademark Act. Therefore, the challenged mark does not fall under the scope of the right of the registered trademark of this case, and thus, the trial decision of this case as

3. Determination on the legitimacy of the instant trial decision

A. Whether the challenged mark is similar to the registered trademark of this case

1) Whether the mark is similar

The registered trademark “” of this case is a non-pre-unregistered trademark, and it is merely a combination of three parts and is merely a part of three parts, and thus it seems to be called as a whole, since it is natural sign.

On the other hand, the part of the " " "," which is the challenged mark, is merely an expression of the type of the company and thus has no distinctive character. It is recognized that "," which is the remaining part, is a combination of the part "," which is commonly used for consumers, and this part does not form a new concept through that combination, and therefore, it cannot be deemed that it is indivisible to the extent that it is not natural in the trade.

However, the Defendant asserts that the term “Memamp” constitutes the Korean language page of “Medine” and “Phmacy” consisting of the English language “medine” and “cediPhm” with the meaning of “medical, pharmaceutical, etc.,” and that there is no distinctiveness regarding pharmaceutical products, etc. However, the Defendant asserts that there is no distinguishability regarding pharmaceutical products, etc., as the English language word “Charm” in the form of “CediPhm” are more familiar to ordinary consumers, such as “mar farm, salm, salm, and salm,” and even if the parts constituting “Membook” form English language related to pharmaceutical products, etc., even if they contain the English language related to pharmaceutical products, it cannot be seen that the entire “Membook”, a combination of these parts, constitutes an indivisible combination, and thus, it cannot be accepted as the Defendant’s assertion that there is no distinctive character related to pharmaceutical products, etc., thus, cannot be accepted.

Thus, the challenged mark can be simplifiedly abbreviationd only with the "distinctive" part that can be separately observed and distinctive, and if abbreviationd, the trademark of this case and the challenged mark are the same as the trademark of this case, and eventually, the trademark of this case and the challenged mark are similar as a whole.

2) Whether goods are similar to designated goods

The designated goods of the registered trademark of this case, “scopic institutional medicine,” etc., are “wholly manufactured in a certain form so that all manufacturing processes can be completed and finally administered to the human body.” On the other hand, “raw materials medicine”, which is goods using the challenged mark, is used in the manufacture of complete medicine as materials manufactured by synthetic, fermentation, extraction, etc. or by combinations thereof (see subparagraph 1 (k) and (n) of attached Table 2 of the Enforcement Rule of the Pharmaceutical Affairs Act).

However, both complete medicine and raw materials correspond to “pharmaceuticals” under the Pharmaceutical Affairs Act (see Article 2 subparag. 4 of the Pharmaceutical Affairs Act), and in principle, they may be manufactured, sold, or imported after obtaining certain permission or filing a report pursuant to the Pharmaceutical Affairs Act (see Chapter V of the Pharmaceutical Affairs Act). As such, as shown in evidence No. 9-1, No. 2, and No. 36 of the Pharmaceutical Affairs Act, there are many cases where a pharmaceutical company manufactures and sells them together (see, e.g., evidence No. 34-1 through No. 3 of the Evidence No. 34, Defendant also sells complete medicine as well as complete medicine).

However, while the complete medicine was mainly sold to a pharmacist, while the medicine was sold to a drug at a pharmacy by a pharmacist, it is different in that the drug was manufactured by the manufacturer, or sold to another pharmaceutical company, and was not directly sold to the patient. However, under the Pharmaceutical Affairs Act, a pharmacist may directly manufacture the complete medicine at a pharmacy or a large hospital clinic within a specific scope (see Article 41 of the Pharmaceutical Affairs Act, Articles 16 through 20 of the Enforcement Rule of the Pharmaceutical Affairs Act, and Articles 16 through 20 of the Pharmaceutical Affairs Act). For this purpose, the medicine may be sold directly to a pharmacist, etc. In fact, as indicated in subparagraphs 1 through 6 of Article 10-3 of the Pharmaceutical Affairs Act, the medicine is distributed in small amount of medicine as indicated in subparagraphs 1 through 4 of Article 10 (see Articles 8-1 through 8 of the Pharmaceutical Affairs Act). However, according to each of subparagraphs 1 through 50g and 4g of Article 10-2 of the Pharmaceutical Affairs Act (see, e.g., Supreme Court Decision 200g., supra).

On the other hand, even if the raw materials are manufactured as complete medicine, their use and efficacy do not change fundamentally (see evidence 1, No. 33-1, No. 6). For example, among the raw materials of the Defendant sales, it is manufactured with an outer skin medicine such as a specific concentration's solution, semen, stoves, fishing agents, and stoves, and then used for disinfection of stoves, images, etc.

As seen earlier, as examined, as multiple drugs and raw materials are subject to regulation under the Pharmaceutical Affairs Act, there are many cases where manufacturers and sellers coincide with each other, and distribution channels overlap, such as sales through drug wholesalers, and large hospitals or pharmacists are also consumers or traders, and there is no fundamental difference in use and efficacy. In light of the foregoing, two products should be deemed as similar.

3) Sub-determination

Therefore, since the marks of the challenged mark and goods using the challenged mark are similar to the marks of the trademark of this case and the designated goods, the challenged mark is deemed similar to the registered trademark of this case.

B. Whether the effect of trademark right is restricted under Article 51 (1) 1 of the Trademark Act

1) Whether a trademark constitutes “a trademark indicating one’s trade name in a common way”

"A trademark which is the challenged mark" is a trademark indicating the defendant's trade name in a flat letter without a special design, and thus constitutes "a trademark indicating one's trade name in a common way" under the main text of Article 51 (1) 1 of the Trademark Act.

2) Whether “the purpose of unfair competition” exists

A) Determination criteria

The proviso of Article 51(1)1 of the Trademark Act provides that even if a trademark indicating one’s trade name in a common way is “a trademark indicating one’s trade name,” the effect of the trademark right is not restricted in cases where the trademark is used for the purpose of unfair competition after the establishment of the trademark right is registered. Here, “the purpose of unfair competition” refers to the purpose of obtaining unfair profits by using the credit of the registered trademark right holder, and the fact that the trademark was known as a registered trademark is insufficient to deem the same purpose solely for the mere fact that the trademark was known that it was a registered trademark. In addition, the subjective circumstance such as the motive for selecting the trademark on the part of the infringer, whether the trademark was known of the infringed trademark, and the similarity of the trademark, the credit standing of the infringed trademark, similarity of business purpose and the regional identity of business activities, and the actual use status of the infringer’s trademark (see, e.g., Supreme Court Decision 95Hu804, Nov

B) the facts of recognition

The following facts may be recognized by adding up the whole purport of the pleadings to each entry of Gap evidence Nos. 4 through 7, 12 through 32, 34, and 38 (including each number):

(1) The Plaintiff, a company established on October 18, 1993, operated the type of business on October 25, 1993, with the marketing of pharmaceutical products, medical supplies, etc. At the time of opening the business, the Plaintiff changed the trade name into “Korea Mampco Co., Ltd.” on August 23, 1999, and re-converted the trade name as of March 27, 2009 to “Dampco.”

(2) From 194 to 1999, the Plaintiff advertised the business of arranging pharmaceutical personnel, arranging pharmacy management consulting, providing pharmacy management consulting, providing pharmacy computer information system, etc. through a number of medical professionals including pharmaceutical public opinions and medicine newspapers, and the Local Pharmaceutical Association newsletter, etc., and opened a Korean Medical Research Society with respect to pharmacists at least 100 times nationwide under the support of the Korean Medical Association and the Korean Medical Association for the promotion of pharmacy management.

(3) In 197, the Plaintiff was introduced into the Yonhap News Articles as the largest pharmacy chain company with 970 member pharmacies, and was also introduced as a representative pharmacy chain company providing various pharmaceutical services related to pharmacy management even in the medical fields, such as pharmacy newspapers, pharmaceutical newspapers, and health newspapers. In 2001, the member pharmacies increased to 1300. The member pharmacies use the name “Membook” in their trade names.

(4) Since its establishment, the Plaintiff made a sales of approximately KRW 30 billion in the year 2001. Moreover, as advertising expenses, KRW 20 million in the year 1999 and KRW 800 million in the year 2000 were disbursed as advertising expenses, and KRW 2.3 billion in the sum from 1993 to 2009 was disbursed from 199 to 2009.

(5) Since its establishment, the Plaintiff supplied not only pharmacy management-related services to its member pharmacies, but also pharmaceutical products, quasi-drugs, functional health foods, pharmacy expendable products, etc. In particular, the Plaintiff also sells pharmaceutical products manufactured by another pharmaceutical company as a salesperson. Such drugs (so called “private bandandand” products) indicate one’s trade name and the English trademark of “merpla”.

(6) Meanwhile, from around 1989, the Defendant, a company established by converting a personal company engaged in the same drug distribution business into a corporation on February 16, 200, and operated the type of business as at the time of its incorporation with the manufacture, wholesale, etc. of raw materials. The first trade name was “Dong Ho medicine Co., Ltd............, after the registration of the instant registered trademark, the trade name was changed to “Maico Co., Ltd.., Ltd......., as of April 2, 2001.”

(7) After changing the trade name, the Defendant received a warning from the Plaintiff to prohibit the use of the mark “merpla” several times. At that time, more than 20 companies, including “merpla”, received a similar warning from the Plaintiff, and most of them changed the trade name.

(8) On June 7, 2003, the Defendant filed an application for trademark registration on a trademark containing a component part of the challenged mark, but rejected the application on July 19, 2004 on the ground that the trademark is identical or similar to the instant registered trademark, etc.

(9) The Defendant sells not only raw materials but also all drugs as drug wholesalers.

C) Determination

According to the above facts, at the time of the Plaintiff’s change of trade name on April 2, 2001, the mark “merplamp” used in Korean or English in its trade name, trademark, service mark, etc. is widely known in the Republic of Korea as the mark of the Plaintiff’s business operation, etc. in the pharmaceutical industry including the pharmacy at the time of the Plaintiff’s change of trade name. However, it is unclear whether the Plaintiff used the mark “merplamp” before the change of the Defendant’s trade name to the designated goods of the instant registered trademark. However, considering that the Plaintiff’s “merpl” mark was widely known in the pharmaceutical industry, and the Plaintiff supplied the drugs, etc. to the pharmacy, it appears that the goods were related to the Plaintiff in the pharmaceutical industry at the time of the change of the Plaintiff’s trade name. Therefore, even though the instant registered trademark consisting of “merplamp” in Korean is about a pharmacy-related drug, not a pharmacy-related service, it is reasonable to deem that the Plaintiff’s reputation and reputation of the Plaintiff’s products from the Defendant’s credit industry at the time of the change of trade name.

On the other hand, the Defendant appears to have been well aware of the Plaintiff’s mark of “mempim”, as it runs a drug distribution business for a long time prior to the change of the name or personal business at the time of the registration of the instant trademark. Nevertheless, in light of the fact that the Defendant changed the trade name from “Mempim Co., Ltd.” to “Mempim Co., Ltd.,” which is entirely different from the original trade name after the registration of the instant trademark, and changed the trade name to “Mempim Co., Ltd.,” which is entirely different from “Mempim Co., Ltd.,” and furthermore, unlike other companies, the Defendant did not change the trade name despite receiving the Plaintiff’s warning, as well as was rejected even after the application for registration of a trademark similar to the trade name, it is reasonable to deem that there was a purpose of gaining unfair profits by taking advantage of

On the other hand, the defendant asserts that there is no objective of unfair competition since the location of the headquarters of the plaintiff and the defendant differs from the City/Do. However, since the mark of the plaintiff's "Mamp" can be seen as widely known in the drug-related industry nationwide, and the plaintiff's business as well as the defendant's business such as wholesale business is ordinarily carried out in an area outside the location of the headquarters, the fact that the location of the headquarters of the plaintiff and the defendant differs from the location of the headquarters of the city/Do does not interfere with the defendant's purpose of unfair competition. Therefore, the defendant'

Ultimately, the defendant uses the challenged mark for the purpose of unfair competition after the establishment of the trademark of this case is registered. Thus, the trademark of this case shall have the effect of trademark of this case to the challenged mark.

C. Sub-committee

Therefore, since the challenged mark is similar to the registered trademark of this case and the trademark of this case is not restricted by Article 51 (1) 1 of the Trademark Act, the trademark right of this case belongs to the scope of the right of the registered trademark of this case. Therefore, the decision of this case that different conclusion is unlawful.

4. Conclusion

Therefore, the plaintiff's claim seeking the revocation of the trial decision of this case is reasonable, and it is so decided as per Disposition with the assent of all participating Justices.

[Attachment]

Judges Kim Jong-hwan (Presiding Judge)