[1] The standard for determining whether the goods using the pre-use trademark are “a trademark likely to mislead consumers” under Article 7(1)11 of the Trademark Act where the goods using the pre-use trademark are limited to specific materials or use among the designated goods of the registered trademark

[2] Where a user Gap corporation of the pre-use trademark " " " filed for a registration invalidation trial against Eul corporation entitled to registration of the registered trademark " " " on the ground that the registered trademark constitutes Article 7 (1) 11 of the Trademark Act, the case affirming the judgment below holding that the registered trademark does not constitute a trademark which is likely to mislead consumers

[3] The meaning and contents of "a trademark itself or a trademark used for goods" under Article 7 (1) 4 of the Trademark Act refers to "a trademark whose meaning and contents are likely to be contrary to the good customs that is the ordinary moral sense of ordinary people or to harm public order."

[1] In order to constitute a trademark where the registered trademark is likely to deceive a consumer as defined in Article 7(1)11 of the Trademark Act, it must be known that the pre-use trademark or goods used in comparison with the registered trademark or the designated goods are to the extent that it can be recognized as a specific person’s trademark or goods if the registered trademark or goods are known to a consumer or a trader at least in general transactions in Korea at the time of the decision to register the registered trademark. Here, whether the pre-use trademark or goods used in the pre-use trademark are known to a certain extent in general transactions in Korea refers to an objective situation in which the general consumer should be recognized according to the transaction circumstances in terms of the standard, and if goods used in the pre-use trademark are limited to specific materials or use among the designated goods of the registered trademark, the relation with the designated goods without such restriction should be sufficiently considered to the extent that the pre-use trademark can be excluded from the registration of all designated goods without such restriction

[2] In a case where Gap corporation of the pre-use trademark " " " filed a petition for a registration invalidation trial against Eul corporation entitled to registration of the registered trademark " " " on the ground that the registered trademark falls under Article 7 (1) 11 of the Trademark Act, the case affirming the judgment below which held that since the designated goods of the registered trademark " "non-metallics, bricks (except cements), non-metallics, and concrete files," which are generally used widely, the pre-use trademarks or products used in comparison with the registered trademark, are known to the extent that they can be perceived as a trademark or product of a specific person at the time of the decision to register the registered trademark, the designated goods of the registered trademark or products similar to the pre-use trademark should be the transaction market of the registered trademark, and among them, the goods of the specific materials such as the period and method of sale of the goods using the pre-use trademark, sales of the goods using the pre-use trademark, the number of products using the pre-use trademark, the number of the registered goods in the entire market, etc. are not known to the domestic consumers or consumers at the time of the registered trademark.

[3] Article 7(1)4 of the Trademark Act provides that trademark registration shall not be granted where the meaning and contents of a trademark itself or the trademark which, if used in goods, are contrary to the good customs of the general public or is likely to disturb the public order. The above provision is a provision established for the purpose of not granting a right as a registered trademark to the trademark in the case of the trademark itself which constitutes the trademark itself contrary to good customs or public order. In a case where the act of using the trademark violates good customs such as fair goods distribution order or international trust and morality by deviating from the purpose or function of the trademark system, which serves as the maintenance of business reputation of the trademark users and the protection of the interests of consumers, it is difficult to deem that the act of using the trademark violates the above provision of Article 7(1)4 of the Trademark Act, on the premise of the freedom to choose a trademark, and that the trademark itself violates the principle of earlier registration that recognizes an applicant for trademark registration as being based on the freedom of trust and good faith or public order, and thus, it is difficult to recognize that the trademark itself violates the above provision of trademark registration or service mark without permission.

[1] Article 7 (1) 11 of the Trademark Act / [2] Article 7 (1) 11 of the Trademark Act / [3] Article 7 (1) 4 of the Trademark Act

[1] Supreme Court Decision 2006Hu3113 decided Jun. 28, 2007 (Gong2007Ha, 1193)

Jeju Co., Ltd.

Transmission Industry, Inc.

Patent Court Decision 201Heo3445 decided July 1, 2011

The appeal is dismissed. The costs of appeal are assessed against the plaintiff.

The grounds of appeal are examined (to the extent of supplement in case of supplemental appellate briefs not timely filed).

1. As to the ground of appeal on Article 7(1)11 of the Trademark Act

If a registered trademark is likely to deceive a consumer as defined in Article 7(1)11 of the Trademark Act, the pre-use trademark or goods used thereof, compared to the registered trademark or the designated goods, should be known to the extent that it can be recognized as a trademark or goods of a specific person, at least in general transactions in Korea at the time of the decision to register the registered trademark. Here, whether the pre-use trademark or goods used thereof is known to a certain extent in general transactions in Korea, refers to an objective situation in which the general consumer is recognized according to the transaction circumstances (see Supreme Court Decision 2006Hu3113, Jun. 28, 2007). If goods used by the pre-use trademark are limited to materials or use of specific designated goods among the designated goods of the registered trademark, the determination of whether the pre-use trademark or goods used by the pre-use trademark are recognized as a trademark or goods of a specific person to the extent that the pre-use trademark can be excluded from registration as a whole without such restriction should be made in full consideration of the relationship with the designated goods without such restriction.

According to the reasoning of the judgment below, the court below, after compiling the adopted evidence, found the facts as stated in its reasoning, determined that since the "pre-use trademark " "" or its products are widely used as the designated goods of the registered trademark of this case (registration number omitted), "nonmetallics, bricks (except cements), nonmetallics, and concrete files," which are the designated goods of the registered trademark of this case (registration number omitted), were used widely. Thus, in order to determine whether the products used in the pre-use trademark " " " or its products are known to the extent that they can be perceived as a trademark or goods of a specific person at the time of the decision to register the registered trademark of this case, the designated goods of the registered trademark of this case or similar goods of this case should be considered as the transaction market of the goods of the specific materials narrowly limited to those of the registered trademark of this case. In light of the period and method of sale of the goods using the pre-use trademark of this case, sales, the weight of the goods used in the entire designated goods market, the number of advertisements, etc., the trademark number, etc., the plaintiff's or consumers at the registered trademark of this case.

In light of the above legal principles and records, the above fact-finding and judgment of the court below are just, and there is no error in the misapprehension of legal principles as to Article 7 (1) 11 of the Trademark Act as alleged in the grounds of appeal.

2. As to the grounds of appeal on Articles 7(1)9 and 7(1)2 of the Trademark Act

If a registered trademark falls under Article 7(1)9 of the Trademark Act, the pre-use trademark, compared with the registered trademark, must be widely known among domestic consumers (see, e.g., Supreme Court Decision 91Hu301, Nov. 22, 1991). In order to fall under Article 7(1)12 of the same Act, the pre-use trademark should be recognized as indicating the goods of a specific person between domestic or foreign consumers. Whether it falls under the above should be determined at the time of application for the registered trademark (see, e.g., Supreme Court Decision 2010Hu2322, Jul. 14, 2011).

Examining the reasoning of the judgment below in light of the above legal principles and records, since the pre-use trademark is not recognized as a trademark of a specific person by domestic consumers or traders at the time of the decision to register the trademark of this case, there is no room to recognize it as a trademark of a specific person at the time of the filing date of the pre-use trademark of this case, and thus, it is just to determine that the registered trademark of this case does not fall under Article 7 (1) 9 and 12 of the Trademark Act, and there is no error of law such as misunderstanding of legal principles as to Article 7 (1) 9 and 12 of the Trademark

3. As to the ground of appeal on Article 7(1)4 of the Trademark Act and Article 103 of the Civil Act

A. Article 7(1)4 of the Trademark Act provides that trademark registration shall not be granted for a trademark “where the trademark itself or the trademark is used for goods, the meaning and content that the trademark user would be contrary to the good customs that is the ordinary moral sense, or likely to disturb the public order.” The above provision is a provision established for the purpose of not granting the right to the trademark as a registered trademark in the case of the trademark itself which constitutes the trademark itself contrary to the good customs or public order. In a case where the act of using the trademark violates good customs such as fair goods distribution order or international trust and morality by deviating from the purpose or function of the trademark system, which is to maintain the business reputation of the trademark user and protect the interests of the consumers, it is difficult to deem that the act of using the trademark violates the above provisions of Article 7(1)4 of the Trademark Act, on the premise of the freedom to choose a trademark, and that the trademark itself goes against the good customs or public order, and thus, it does not appear that the trademark composition itself goes against the good customs or public order of another person’s trademark without permission or its reputation.

In light of the above legal principles and records, the registered trademark of this case is composed of only the Korean language "Songk" and its composition or contents to users when used in goods, and it cannot be deemed that the meaning and contents to users are contrary to good customs or likely to undermine public order. Thus, the registered trademark of this case was extinguished on September 26, 1994, and the registered trademark of this case was extinguished on September 27, 2004. On May 14, 2008, where three years and seven months have passed thereafter, the defendant applied for and registered the registered trademark of this case with the registered trademark of this case, which was identical or similar to the registered trademark of this case, and then filed a complaint against the plaintiff who acquired the right to the registered trademark of this case from the non-party 1 through the non-party 2, such circumstance alone does not constitute a violation of Article 7 (1) 4 of the Trademark Act. This part of the judgment below did not err in the misapprehension of legal principles as to the registered trademark of this case, as otherwise alleged in the ground of appeal.

B. In addition, the grounds for invalidation of trademark registration are stipulated in the Trademark Act, and the application, registration, and use of the trademark of this case violate Article 103 of the Civil Act in relation to the plaintiff, as alleged in the grounds for appeal (see Supreme Court Decision 2005Hu2656, Aug. 25, 2006, etc.). Thus, the ground for appeal that there exists a ground for invalidation of the trademark of this case against Article 103 of the Civil Act cannot be accepted.

4. Conclusion

Therefore, the appeal is dismissed, and the costs of appeal are assessed against the losing party. It is so decided as per Disposition by the assent of all participating Justices.

Justices Kim Nung-hwan (Presiding Justice)