205Heo954. Nullification of registration (Trademarks)

1. National Bank of Korea;

Seoul

Representative Director;

Manager;

2. Korea Exchange Bank;

Seoul

Representative Director;

Manager;

3. Han Bank;

Seoul

Representative Director;

4. Jeju Bank;

Jeju

Representative Director;

5. Daegu Bank;

Daegu

Representative Director;

Manager;

6. The Busan Bank of Korea;

Busan

Representative Director;

7. Jeonbuk Bank;

Jeonju City

Representative Director;

New Bank Co., Ltd. (former Trade Name: Cho Jae-Hy Bank)

Seoul

Representative Director;

[Defendant-Appellee] Plaintiff 1 and 1 others (Law Firm Mai, Attorney Choi Han-won, Counsel for defendant-appellee)

Modrified, Kim Ho

Law Firm Barun, Attorneys Lee Young-young, et al.

tin, scopic species

Korea Financial Branch Co., Ltd.

Seoul

Representative Director;

Attorney Cho Young-hoon, Counsel for the defendant-appellant

Patent Firm Dan Patent Attorney Lee Dong-soo et al.

Patent Attorney Lee Jae-soo

Law Firm Dr. Law Firm Dao, Attorneys Hah upper, Lee Jin-hoon

May 23, 2007

July 11, 2007

1. The decision made by the Intellectual Property Tribunal on October 31, 2005 on the case No. 892 shall be revoked.

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

The order is as set forth in the text.

1. Basic facts

(a) Details of the trial decision;

The plaintiffs asserted that the registration should be invalidated on the ground that the registered service mark of this case constitutes a trademark with no distinctive character simply combining common master names of "Korea" and "bank" under Article 6 (1) 3, 5, and 7 of the Trademark Act, and that the registered service mark of this case has no distinctive character, and that it falls under either Article 6 (1) 3, 5, and 7 of the Trademark Act, and that the expression that the public should freely use is exclusive, thereby forcing consumers or competitors to exercise more attention, and that it may cause confusion as to the quality of service by transmitting information related to the relationship between the service provider and the consumer, and that it falls under Article 7 (1) 4 and 11 of the Trademark Act, respectively, and the registered service mark of this case constitutes a service mark that has a new concept of "Korea bank," and that it does not fall under the order of this case as stated in Article 7 (1) 1 and 4 of the Trademark Act.

B. The composition of the instant registered service mark : Woori Bank (2) filing date / the registration decision date / the registration number / The designated service business on March 27, 2002 / December 24, 2003 / The designated service business under (3) of No. 9500 on December 24, 2003: Banking business, international financial business, international financial business, loan business, credit card business, loan financing business, credit card issuance business, guarantee business, credit card issuance business, credit card service business, trust business, bill exchange business, travel check issuance business, electronic banking business, securities business, securities brokerage business, investment financing business, installment sales business, installment financing business, money exchange financing business, intermediary financing business, lottery ticket issuance business, financial assessment business, financial consulting business, financial consulting business, financial bond purchase information business, loan financing agency business, loan financing business, loan financing business, loan financing business, loan financing business, loan financing business, loan financing business, loan financing business, loan financing business, securities purchase business, loan financing agency business, loan financing agency business, loan financing business, loan financing business, loan financing business, loan financing business, loan financing business, loan business, trust business, loan business

[Ground for Recognition: Facts without dispute]

2. Determination on the defense prior to the merits

A. Whether the plaintiffs are interested parties

The defendant asserts that the plaintiffs are not interested parties entitled to file a petition for the invalidation trial of the registration of this case, since there is no intention to use the registered service mark of this case, the interested parties entitled to file a petition for the invalidation trial of the registration of this case may oppose their rights because the registered service mark which is the subject of the petition for the invalidation trial is in force, or the registered service mark provides the same kind of service as the registered service mark designated by them, and thus there is a direct interest in the extinction of the registered service mark (refer to Supreme Court Decisions 9Hu1331 delivered on June 29, 201, 2001, 201Hu584 delivered on August 21, 201, etc.). The plaintiffs' assertion that "the above registered service mark of this case is not likely to be used in our bank's own trade name or service mark as the advertising mark of this case," and the purport of the whole arguments as to "the above registered service mark is not likely to be used in our trade name or service mark as the advertising mark of this case."

B. Whether there is no interest in the lawsuit

The Defendant asserts to the effect that the registered service mark of this case is not registered as his own service mark on the ground that the defendant can immediately re-register the registered service mark on the ground that the registered service mark of this case became well-known and thus, even if the judgment of registration invalidation becomes final and conclusive, the plaintiffs cannot register it as their own service mark on the ground that it acquired its distinctiveness by use, and therefore, the plaintiffs cannot deny the interests of adjudication or lawsuit solely for the reasons such as the defendant's assertion

3. Whether the registered service mark of this case is distinctive

(a) Whether the composition itself has distinctiveness;

According to Article 6 (1) 7 of the Trademark Act, a service mark whose business it is impossible for consumers to distinguish which service is indicated shall not be registered as a service mark. This is to say that even if a service mark does not fall under subparagraphs 1 through 6 of the same paragraph, it is impossible to distinguish one’s own service mark from another’s service mark, that is, in itself, it is not appropriate to distinguish one’s own service mark from another’s service mark, or to use it for all persons, and thus it is not appropriate to distinguish one’s own service mark from the other’s service mark. Whether a service mark is a service mark with special distinction or not shall be determined objectively by taking into account the concept that the service mark carries, the relation with the designated service business, and the circumstances of the trade society (see, e.g., Supreme Court Decisions 2004Hu912, May 25, 2006; 96Hu979, Feb. 28, 1997).

In this case, the registered service mark of this case is commonly used as a personal name, i.e., ‘Korean mother', ‘Korea' or ‘B' as it is merely a combination of the above service marks in daily life, and is widely used by all people in the possession or affiliation of the subject matter such as ‘Korean company', ‘Korean school', and ‘N', and it is widely used by all people in the comprehensive sense that they can simply indicate a certain relationship with themselves. As can be seen as 'Korean bank' as its employees or customers', it is the most general expression that is widely used in all goods and service businesses, and 'the name of the designated service business' and 'the name of the designated service business' and 'the name of the designated service business', 'the name of the Korean bank' as well as 'the name of the designated service business', 'the name of the Korean bank' and 'the name of the designated service business', 'the name of the designated service business', 'the name of the designated service business' and 'the name of the designated service business', '.

Whether the function of advertisement and publicity is emphasized, the Banking Act, etc. provides for the restriction on the use of the name of "bank" or the supervision by the Financial Supervisory Commission on banking business, or the use of any word with weak distinctiveness as a bank name does not change even if the general tendency of domestic banking business is different. Thus, the registered service mark of this case is a service mark that does not distinguish consumers as provided in Article 6 (1) 7 of the Trademark Act in relation to the designated service business from whom it indicates the service business.

In regard to this, the defendant asserts that the registered service mark of this case has distinguishability in light of the circumstances where a number of service marks containing the expression "us" have already been registered, as well as the special distinction with the meaning of "the trademark is clearly more excellent than the ordinary one as the registration requirements of the trademark or service mark". However, the special distinction used as the registration requirements of the trademark or service mark is another expression of distinguishability, and it is not used in addition to the registration requirements of the service mark. The existence of the registration eligibility of the service mark should be determined individually in relation to the designated service business, and the registration examples of other service marks cannot be the grounds for the registration of the specific service mark (see Supreme Court Decision 2005Hu339, May 12, 2006, etc.). Thus, the above assertion is without merit.

B. Whether a trademark is distinguishable from its use (1) Article 6(1)7 of the Trademark Act means that even a service mark that does not fall under Article 6(1)1 through 6 of the same Act cannot be registered. Thus, even if a mark appears to have no special distinction from its own concept or relationship with the designated service business objectively when examining the situation of its use, it is deemed that the applicant’s use of the mark shows that consumers or traders indicate services related to whose business it is, barring any special circumstance, the mark does not constitute a service mark with no special distinction under Article 6(1)7 of the Trademark Act, and as a result, it does not interfere with obtaining registration of the service mark, and it does not necessarily mean that Article 6(2)7 of the same Act does not include a similar service mark, and thus, it cannot be seen as being applied to the service mark (see, e.g., Supreme Court Decision 205Hu397, May 12, 2006).

(2) In light of the overall purport of the pleadings in this case, the Defendant was a company that incorporated the above light bank into a subsidiary on January 4, 1999 and was launched as a Korean Financial Group on April 2, 2001 after it was merged into the light bank with the previous commercial bank on April 2, 2001. After the name of the subsidiary was changed into the bank on May 20, 2002, the Defendant used the designated service marks such as “Korea Bank”, “Oori Bank”, “Korea Bank”, “Korea Bank”, “Korea Bank”, and “Korea Bank,” and “Korea Bank” in its service business (including the designated service business). However, the Defendant used the service marks such as credit business, guarantee, guarantee, bond-issuance, insurance bond-issuance, travel-type, travel-type, travel check-type, online check-type, etc. from among the designated service businesses.

The defendant's 6th anniversary of its financial and economic value-added business, 70 billion won or more, 1.7 billion won or more, 200 billion won or more, 30 billion won or more, 60 billion won or more, 200 million won or more, 30 billion won or more, 60 billion won or more, 40 billion won or more, 60 billion won or more, 60 billion won or more, 2000 won or more, 30 billion won or more, 60 billion won or more, 60 billion won or more, 60 billion won or more, 60 billion won or more, 70 billion won or more, 60 billion won or more, 70 billion won or more, 60 billion won or more, 70 billion won or more, 60 billion won or more, or 106 billion won or more, 60 billion won or more, 60 billion won or more,

C. Sub-decision

Therefore, the registered service mark of this case shall be null and void by Article 71 (1) 1 of the Trademark Act as it has no other distinctive character as provided by Article 6 (1) 7 of the Trademark Act without examining the other grounds for registration invalidation of the plaintiffs' assertion.

4. Conclusion

Therefore, the decision of this case with different conclusion is inappropriate, and the plaintiffs' claim of this case seeking its revocation is justified and it is so decided as per Disposition.

Judges Lee Ki-taik

Judges Oh Jin-jin

Judges Kim Tae-tae