Plaintiff (Patent Attorney Park Young-young, Counsel for the plaintiff-appellant)

Defendant

August 21, 2015

1. The plaintiff's claim is dismissed.

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

The decision made by the Intellectual Property Tribunal on May 19, 2015 on the case No. 2014Da1671 shall be revoked.

1. Basic facts

A. Registered service mark of this case

1) Registration number/filing date/registration date: (Registration No. 1 omitted)/ February 25, 2008/ October 25, 2008

2) Composition:

3) Designated service business: A physical therapy business referred to in Chapter 44, physical therapy business, hospital business, pathology business, urology clinic business, non-urcology clinic business, urcology clinic business, postnatal care business, sex surgery business, urcology and surgery business, pharmacy business, drug preparation business, outpatient service business, remote medical service business, medical clinic business, clinic business, Lee non-humanology business, urcology treatment business, oriental medicine therapy business, oriental medicine clinic business, oriental medicine clinic business, oriental medicine clinic business, oriental medicine clinic business, and oriental medicine therapy business;

4) Service mark right holder: Defendant

(b) A prior registered service mark and prior used service mark;

(i) Prior registered service mark 1 (A evidence No. 3)

A) Registration number / filing date / registration date / registration date / registration date / registration date: (registration number 2 omitted) / January 18, 1995/ April 4, 1905

B) Composition:

(C) Designated services:

-the pharmaceutical research business, the medical research business, the adult disease research business, the male medical research business, the female academic research business, the classification of service categories 42;

-medical service, hospital service, oriental medical clinic service, pathology service, health examination service, sanatorium service using the Internet, health consultation service using the Internet, health consultation service using the Internet, vertebrate pressure service, physical therapy service, and clinical medical service, classified into service categories 44;

D) Service mark right holder: Plaintiff

(ii) Prior registered service mark 2 (A evidence No. 4)

A) Registration number/filing date/registration date/registration date/registration date: (registration number 3 omitted)/ April 28, 1993/ January 17, 1995/ April 4, 2005

B) Composition:

(c) Designated service business: Medical service business of Category 4, Han medical service business of Category 4, classification of service business;

D) Service mark right holder: Plaintiff

(iii) Prior registered service mark 3 (A evidence No. 5)

A) Registration number/filing date/registration date/registration date/registration date: (registration number 4 omitted)/ April 28, 1993/ January 18, 1995/ April 4, 2005

B) Composition:

(C) Designated services:

- Pharmaceutical research business of Category 42 classified by service industry

-medical services, oriental medical hospital services, video medical treatment services using the Internet, health consultation services using the Internet, health consultation services, physical therapy services, clinical, health examination services, pathology services, spinal pressure services, and sanatoriums services, classified into service categories 44;

D) Service mark right holder: Plaintiff

(iv) a prior-use service mark (Evidence A 6, A 9, 10)

(A) Composition:

(b) Services of use: Oriental medicine clinic, oriental medicine hospital, oriental medicine clinic, oriental medicine clinic, oriental medicine clinic, and oriental medicine clinic;

C) User: The plaintiff or the Self-Medical Foundation

C. The procedural background

1) On July 11, 2014, the Plaintiff filed a petition for a trial for invalidation of registration (No. 2014Da1671) with the Intellectual Property Act on the ground that the registered service mark of this case is similar to the registered service mark widely and well-known and well-known prior to the filing of the application, and is used for an unlawful purpose that the Defendant intended to gain unjust profits or intended to cause damage to the Plaintiff, and thus, constitutes a ground for invalidation of registration under Article 7(1)11 and 12 of the Trademark Act.

2) On May 19, 2015, the Korean Intellectual Property Tribunal dismissed the Plaintiff’s appeal on the ground that the instant registered service mark does not fall under Article 7(1)11 and 12 of the Trademark Act in relation to the prior registered service mark as the mark does not correspond to the prior registered service mark.

[Ground of recognition] Facts without dispute, Gap evidence 1 through 6, Gap evidence 9, 10, the purport of the whole pleadings

2. Summary of the parties' arguments

A. The plaintiff's ground for revocation of the trial decision of this case

The registered service mark of this case is likely to deceive consumers because the registered service mark of this case is similar to the registered service mark or prior-use service mark, which was known and well-known and well-known prior to its application, and it constitutes grounds for invalidation of registration under Article 7(1)11 and 12 of the Trademark Act, since it is used for an unlawful purpose of obtaining unjust profits or causing damage to the Plaintiff.

Therefore, the trial decision of this case, which has different conclusions, should be revoked in an unlawful manner.

B. Defendant’s assertion

The registered service mark of this case is not similar because the registered service mark of this case differs from the registered service mark of prior use, the service mark of prior use, the external appearance, name, and concept, and thus, it does not constitute grounds for invalidation of registration under Article 7(1)11 and 12 of the Trademark Act in relation to the relation between the registered service mark of prior use and the service mark of prior use without any need to examine any other point.

Therefore, the trial decision of this case, which concluded as above, is legitimate.

3. Whether the registered service mark of this case constitutes Article 7(1)1 and 12 of the Trademark Act

A. Whether the mark is similar

1) In order for the instant registered service mark to fall under Articles 7(1)1 and 7(1)12 of the Trademark Act, a mark with the prior registered service mark or the prior used service mark should be identical or similar. Thus, the marks of both sides of the registered service mark are similar.

2) The parties’ relevant arguments

A) The plaintiff's assertion

In the name, both service marks are the same as “self-living.” In concept, the registered service marks of this case include both “self-living” and “self-living” as “self-living,” and “self-living,” which are the main parts of the pre-registered service marks and pre-registered service marks. Both service marks contain the concept of “self-living,” and thus are extremely similar in terms of concept. In appearance, both of them include both “self-living,” which is the main parts of the pre-registered service marks, and “self-living,” which is the registered service marks of this case.

Therefore, both service marks are similar as a whole.

B) Defendant’s assertion

Self-help is a word with the concept of “sarn’s sarn’s sarn’s sarn’s sar, sarn’s sarn’s sarn’s sarn’s sarn’s sarn’s sarn’s sarn’s sarn’s sarn’s sarn’s sarn’s sarn’s sarn’s sarn’s sarn’s sarn’s sar

Therefore, the registered service mark of this case is not similar because it differs from the prior-registered service mark or prior-use service mark, which is called and conceptualized as “self-living,” and its appearance, concept, and title are all different.

3) The judgment of this Court

A) Criteria for determination

Whether a service mark is similar or not should be determined depending on whether there is a concern for ordinary consumers or traders to mislead or confuse the origin of the service mark in the transaction of the designated goods by objectively, comprehensively, and separately observing the external appearance, name, and concept of the service mark. In addition, the combined service mark consisting of two or more letters shall be in principle determined by the appearance, name, or concept arising from the entire text constituting the service mark. However, if it is deemed that the service mark can be located only on the sole basis of the essential part, the similarity of the service mark may be determined by the name or concept that can be separated or extracted from the essential parts, and even if there exists a similar part between the compared service marks, if there is no possibility of separation or confusion of the source as a whole, or when it is clearly observed as a whole, at the time of the overall observation of the source (see, e.g., Supreme Court Decision 200 after 205Hu2586, Feb. 26, 2005).

B) Specific determination

(1) External appearance

The instant registered service mark “,” and the registered service mark “,” “,” “,” “,” and “registered service mark” are different from the number of characters and the constituent characters, and their appearance are not similar.

(2) Concepts

The registered service mark of this case is not registered in the Korean language, etc., but is used as "self-living" such as "self-living with one's own force" and "self-living". The term "the beginning" is often used as a beer, such as a beer, swelth, and swelth, and as a whole, is interpreted as "swelth".

A prior-registered service mark 1 is interpreted as “self-living” within the meaning as seen earlier. A prior-registered service mark 2, 3, and prior-registered service mark 2, and prior-registered service mark 2, and prior-registered service mark 2, and prior-registered service mark 3 can be conceptualized solely by “her own child” without distinctiveness and “her own child” omitted.

As seen above, “self-help” refers to a so-called “self-help” as it means a so-called “self-help,” and “self-help” refers to “the state, etc. of self-help,” and thus, the concept is not similar.

(3) The title;

The registered service mark of this case is named as “self-help,” and is named as a three-dimensional term, and is short, and does not contain any part having weak distinctiveness or non-distinctive character, and is not referred to as a whole and is not merely an abbreviationd part.

Prior-registered service mark 1 refers to “self-living.” Prior-registered service mark 2, 3, and prior-registered service mark 2, and prior-registered service mark 2, and prior-registered service mark 5, or 6, are relatively long as the name “self-help” or “self-medical hospital of oriental medicine”. Among them, “her own” and “her oriental medical hospital” do not have distinctiveness by indicating a designated (use) service, and thus, can only be called “self-living”.

While “self-support” and “self-support” are the same as in the preceding two directions, “self-support” are the same as in the first two directions; however, “self-support” added to the first three directions; “the first” as in the first three sections; and “the first” as in the last stage of the addition is relatively clear and are not similar in the entirety, and thus, the name is not similar.

(4) Total result of preparation

Ultimately, both service marks are not similar because their appearance, concepts, and names are different.

(b) Results of the review;

As seen above, the instant registered service mark is not similar to the prior registered service mark or the prior used service mark, and thus, it does not fall under Article 7(1)11 or 12 of the Trademark Act in relation to the relation between the prior registered service mark and the prior used service mark or the prior used service mark.

4. Conclusion

Therefore, the decision of this case, which dismissed the plaintiff's registration invalidation trial on the registered service mark of this case, is legitimate, and the plaintiff's claim seeking its revocation is dismissed as it is without merit. It is so decided as per Disposition.

Judges Jeong Jong-young (Presiding Judge)