[Plaintiff-Appellee] Plaintiff 1 and 3 others (Patent Attorney Ba-won, Counsel for plaintiff-appellee)

Seoul High Court Decision 200Na14487 delivered on August 1, 200

August 17, 2012

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 March 8, 2012 on the case No. 1943 shall be revoked.

1. Basic facts

A. The registered trademark of this case

1) Date of application/registration date/registration number: April 20, 2005 / January 18, 2006 ( omitted of a trademark registration number)

2) Composition:

3) Designated goods: fluorescent fluorites for the primary use of Class 3 of the classification of goods, laundry electric prevention agents, washing fluorial agents, fluorial fluorials, triines, tampers, curines, strings, nutrition cream, hedgings, grhosomes, hair coloring agents, hacker coloring agents, Arabics, general painting, mincs, mincs, mincs, chrops, colorings, shreshings, shreshing, shreshing, shreshing, breshing, breshing, quidine, bresh, shresh, shreshing, shreshing, shreshing, shreshing, shreshing substance, shreshing, shreshing, shreshing-making, shreshing substance- treatment, sh-type, shing type, shshing, shshshshshing, shshshsh.

B. Details of the instant trial decision

1) On August 17, 2011, the Defendant filed a claim against the Plaintiff, a trademark right holder, for the cancellation of the registration of the instant registered trademark (hereinafter “designated goods related to the instant request for the cancellation”) on the ground that “the instant registered trademark was not used in Korea for not less than three consecutive years prior to the date of the instant request for the cancellation of registration, without justifiable grounds, on the grounds that “the instant registered goods” among the designated goods were not used in Korea for three consecutive years prior to the date of the instant request for the cancellation (hereinafter “designated goods related to the instant request for the cancellation”).

2) On March 8, 2012, the Korean Intellectual Property Tribunal rendered the instant trial ruling citing the Defendant’s request on the grounds that the Plaintiff failed to prove that there were justifiable grounds for not using the instant registered trademark in the Republic of Korea within three years before the date of the request for a trial or not using it within three years before the date of the request for a trial.

[Ground of recognition] Facts without dispute, Gap evidence Nos. 1 and 2, the purport of the whole pleadings

2. Key issue of this case

The key issue of this case is ① a claim for the cancellation trial of this case only for the part of the designated goods belonging to the similar scope among the designated goods of the registered trademark of this case. Even if the request for cancellation trial of this case was accepted, the defendant cannot use the trademark identical or similar to the registered trademark of this case or obtain trademark registration, so the defendant cannot obtain trademark registration, and ② even if the defendant has already requested a cancellation trial of registration on the part of the designated goods of this case before the request for cancellation trial of this case was made, the defendant requested for the cancellation trial of this case as to the part of the designated goods of the registered trademark of this case (Korean Intellectual Property Tribunal No. 201Da525 of the Korean Intellectual Property Tribunal). The claim of this case is whether it should be dismissed in violation of the legislative intent of Article 73(4) of the Trademark Act, which is the provision on reduction of the burden of proof of trademark holder

3. Whether the trial decision of this case is legitimate

A. Whether a request for cancellation of the instant case has a benefit in filing a request for adjudication

As to whether a request for cancellation of a trademark falls under the interests of a request for adjudication, Article 73(3) of the Trademark Act provides that "if there are two or more designated goods of the registered trademark, a request for cancellation trial may be made on some designated goods," and there is no separate provision that a request for cancellation trial is to be made on the same or similar designated goods group. ② According to Article 10(3) of the Trademark Act, since the classification of goods is not limited to the category of goods, even if all the designated goods of the registered trademark of this case fall under Class 3 of the category of goods, it cannot be concluded that the remaining designated goods of this case fall under Class 3 of the category of goods are similar to each other. ③ The system for cancellation of a trademark non-use falls under the promotion of the use of the trademark, while it includes a restrictive meaning on the non-use trademark. Thus, even if the request for cancellation of a trademark of this case is accepted, it cannot be seen that the defendant can not request the cancellation trial on the designated goods of this case after the request for cancellation of trademark registration of this case.

B. Whether the request for cancellation of this case goes against the purpose of legislation under Article 73 (4) of the Trademark Act

On March 11, 2011, the defendant filed an appeal for the cancellation of the trademark of this case against the plaintiff who is a trademark right holder of the trademark of this case 2.2. The defendant did not use the registered trademark of this case 2.2. The defendant's appeal for the cancellation of the trademark of this case 2.2. The defendant's appeal for the cancellation of the trademark of this case 1.2. The plaintiff's appeal for the cancellation of the trademark of this case 2.2. The plaintiff's appeal for the cancellation of the trademark of this case cannot be seen as "the plaintiff's appeal of this case 2.2.0 .0 .0 . . . . . 2. . . . . . . . 2. . . . . . . . . . . . 2. . . . . . . . . . . 'the plaintiff's appeal of this case . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 2. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .). . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .................. ........................

Article 73 (1) 3 of the Trademark Act provides that a trial on revocation of a trademark may be requested on the ground that the registered trademark has not been used in the Republic of Korea for at least three years, and Article 73 (3) of the Trademark Act provides that a trial on revocation of a trademark may be requested on some designated goods if at least two designated goods of the registered trademark exist. However, where a trial on revocation of a trademark is requested on the ground that the registered trademark has not been used for at least three years under paragraph (4) of the same Article, a trial on revocation of a trademark may not be exempted unless the respondent proves that at least one of the designated goods related to a trial on revocation of the registered trademark has been properly used in the Republic of Korea within three years before the date of the request for a trial on revocation, the trademark right holder shall not be exempted from the revocation of the trademark registration on the designated goods related to a trial on revocation of the registered trademark. In the event that a trial is requested on several designated goods at the same time in consideration of such provision, all the designated goods subject to the request for a trial on revocation of the trademark is considered as a single request on the whole.

A request for the cancellation trial of this case is different from a separate request for the cancellation trial of this case. In addition, even if the designated goods related to a separate request for the cancellation trial of this case are different from the separate request for the cancellation trial of this case, the defendant bears the burden of proof against the owner of the trademark right of this case only if he proves that the use of the trademark of this case goes against the purpose of legislation of 1 (in particular, any trademark other than the designated goods subject to the separate cancellation trial of this case) out of the designated goods related to the separate request for the cancellation trial of this case, and the defendant bears the burden of proof against the owner of the trademark right of this case (Article 7).

C. Sub-decision

Ultimately, the Plaintiff did not make any assertion or evidence as to the fact that at least one of the designated goods related to the instant request for revocation trial was domestically used or used within three years prior to the date of the request for revocation trial. Thus, the revocation of the trademark should be revoked pursuant to Article 73(1)3 of the Trademark Act as to the designated goods related to the instant request for revocation trial.

4. Conclusion

Thus, the decision of this case is legitimate as the conclusion is consistent with this, and the plaintiff's claim for revocation is dismissed.

Judge Dok water (Presiding Judge)