In a case where Party A filed a claim for a trial to confirm the scope of passive rights of the challenged mark “” against Party B, which does not fall under the scope of protection of the registered service mark, the case holding that the challenged mark does not fall under the scope of protection of the registered service mark on the ground that the registered service mark and the challenged mark are not similar and there is no possibility that ordinary consumers or traders may mislead and confuse the source of the service business.

In a case where Gap filed a claim against the holder of the right to use the registered service mark “” to confirm the scope of protection of the registered service mark “,” which does not belong to the scope of protection of the registered service mark, the case holding that the part of the challenged mark “” in the registered service mark “Korea” refers to the abbreviation of “Korea” and “Korea,” which is a conspicuous geographical name,” and “new news that is not well known to the general public,” and the part of the registered service mark “Korea,” which is a Korean negative figure of “news,” cannot be seen as being the combination of news, and thus, in determining the similarity of two marks, it is difficult to recognize the distinctiveness as being “new news or current news report in the Republic of Korea,” and thus, the part of the challenged mark should be compared only to the part other than the registered service mark in determining the similarity of the two marks, and thus, it is difficult to see that general consumers or traders are not likely to mislead or confuse the source of the registered service mark, and thus, it does not constitute an inappropriate mark or confusion with the public interest.

Articles 2(3), 51(1) (see current Article 90(1)), and 75 (see current Article 121) of the former Trademark Act (wholly amended by Act No. 1403, Feb. 29, 2016)

Korean News Agency (Patent Attorney Lee Jae-soo, Counsel for defendant-appellant)

Korean News Newspapers (Patent Attorney Kim Young-young, Counsel for the defendant-appellant)

July 14, 2017

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 February 17, 2017 on the case 2016Da1273 shall be revoked.

1. Basic facts

A. The Plaintiff’s registered service mark (A) of this case

1) Date of application/registration date/registration number: November 8, 2010/ February 20, 2012 (registration number omitted)

2) Composition:

3. Designated service business: Books publishing business referred to in Chapter 41, online electronic books and magazines publishing business (exclusive for reading), online electronic publication business (exclusive for reading), news publishing business, news news reporting service business, educational information provision business, educational information brokerage business, language and private teaching institutes management business, photographing business, event holding agency business, competition support and entertainment, entertainment facility supply business, online game service business, electronic entertainment business, holiday camping and entertainment service business, and personal publication business;

B. The defendant's mark subject to confirmation (a evidence No. 3)

1) Composition:

2. Service business using news services: Internet news, newspaper publishing, publishing, video, and broadcasting and communications.

C. Details of the instant trial decision (Evidence A3)

1) On May 17, 2016, the Defendant filed a petition for confirmation of the scope of rights against the Plaintiff, the holder of the instant registered service mark “ ” and the instant registered service mark “ ” on the grounds that the distinctive character cannot be recognized by combining the instant registered service mark “ ” and the instant registered service mark “ ” with a conspicuous geographical name and technical mark or ordinary name, and it is not similar in all when comprehensively observing both marks as an essential part. For the foregoing reason, the term “Korea News without distinctive character” constitutes not only Article 51(1)2 and 3 of the former Trademark Act (wholly amended by Act No. 1403, Feb. 29, 2016; hereinafter “former Trademark Act”) but also Article 51(1)1 of the former Trademark Act (amended by Act No. 14033, Feb. 29, 2016; hereinafter “former Trademark Act”). Accordingly, the mark subject to confirmation falls under Article 51(1)1 of the former Trademark Act and thus, does not fall under the scope of rights of the registered service mark.

2) The Korean Intellectual Property Trial and Appeal Board deliberated on the above case in 2016Da1273. On February 17, 2017, the part of the registered service mark of this case "Korea News" is merely a combination of "Daehan" which is a conspicuous geographical name and "news" which appears only to the extent of the ordinary name of the designated service business or the provision of services, and thus, it cannot be deemed that the registered service mark of this case was acquired distinctiveness even at the time of the registration of the registered service mark of this case. Since the registered service mark of this case cannot be deemed to have been acquired even at the time of the decision of this case, it cannot be an essential part of the mark in determining the scope of protection of the registered service mark of this case. Since the figure part which can be deemed as the essential part of the registered service mark of this case is different from that of the registered service mark of this case, the mark subject to confirmation is not completely similar to the registered service mark of this case and does not belong to the scope

2. Determination on the legitimacy of the instant trial decision

A. The plaintiff's assertion

The phrase “Korea News” in the registered service mark of this case is, in itself, distinguishable or acquired distinctiveness by use at the time of the decision of this case, and as a result, the registered service mark of this case may be abbreviated as Korea News.

Therefore, the challenged mark, like the registered service mark of this case, should be deemed to be belonging to the scope of protection as a whole similar to the registered service mark of this case. However, the instant trial decision was unlawful since it was judged differently.

B. Whether both marks are similar

However, for the following reasons, the registered service mark “” and the challenged mark “” cannot be deemed identical or similar to each of their external appearance, concepts, and names, and thus there is no concern for ordinary consumers or traders to mislead or confuse the source of service business, and thus, it cannot be deemed as a whole similar mark.

1) First of all, the registered service mark “” consists of the red text and the figure consisting of three shapes of luxulation. However, in the registered service mark of this case, the part of the registered service mark of this case is used in online electronic books and magazines publishing business, news news news reporting business, etc., which is the designated service business, ① the abbreviation of Korean territory, and ② the contents of the English language, “new news that is not well known to the general public” or “news news,” which is the Korean character of “news,” and thus, the part of the registered service mark of this case is combined with the news, which is the Korean character of “Korea,” and it appears to be accepted as the part of the registered service mark of this case, which is a “new news or current news report in the Republic of Korea.”

2) As a result, it is extremely difficult for ordinary consumers or traders that merely express the contents of the instant registered service mark in relation to the designated service business of the instant registered service mark, which is merely a mere expression of the content of the instant registered service mark, to recognize who refers to the service provided in relation to anyone’s business only by the said part of the registered service mark. Therefore, the said part of the instant registered service mark cannot be deemed an essential part because its distinctiveness cannot be recognized. Therefore, in determining the similarity between the instant registered service mark and the challenged mark, only the remaining figure portion except the said part should be compared.

3) However, the challenged mark is a combination of “DHNS” composed of the first head of the English sign on the “DHNS” other than the instant registered service mark and the main parts of the “DHNS,” which is composed of the main parts of the “DHNS,” and the shape of the “DHNS,” which shows a significant difference from the appearance of the instant registered service mark. As a result, when the two marks are comprehensively, objectively, and separately observed, it cannot be deemed as similar to the extent that ordinary consumers or traders are likely to mislead or confuse the source of the service business.

4) As to this, the Plaintiff asserted to the effect that the word “Korea News” among the registered service marks of this case acquired distinctiveness by use at the time of the instant trial decision, since its validity is not restricted by Article 51(1)2 and 3 of the former Trademark Act, the challenged mark belongs to the scope of protection of the registered service mark of this case. However, in light of the facts and circumstances required below, the above assertion cannot be accepted.

A) On February 14, 1995, the Plaintiff was established for the purpose of newspaper publishing business, domestic and overseas news periodical publishing and sales business, etc. Around June 1995, the Plaintiff published a magazine in the month under the title of the "Korea News Agency", which was around June 1995. Since March 19, 2012, the Plaintiff changed its title to the "Korea News Agency" and the "Korea News Agency" as of January 28, 2014. In addition, on September 28, 2005, the Plaintiff registered the business of the online newspaper (www.hhn.co.co.co.k) under the title of the "Internet News Agency", and on December 15, 2014, the Plaintiff provided the Internet newspaper with the title of "Korea News Agency 24," and on December 15, 2014, the Plaintiff provided its business through the Internet News Agency 15.24.

B) However, as seen earlier, the term “Korea News,” which is the common part of the above subparagraphs, is recognized as meaning “new news or current news report in the Republic of Korea,” and it constitutes a technical mark or ordinary name that makes it difficult for ordinary consumers or traders to recognize it as a specific person’s service mark, and its distinctiveness cannot be recognized because it is inappropriate for the public interest to read it in a specific press.

C) Furthermore, according to the statements in Gap evidence Nos. 47-49, 51, 55-57, the average amount of KRW 200 million per annum for 21 years from July 2012 to June 2013, the Plaintiff’s monthly sales number of magazines from July 2012 to June 2013, and for 21 years from June 1995 to June 2016, the Plaintiff’s sales amount of KRW 4,989,479,254, such as Plaintiff’s monthly sales of magazines, advertising fees, etc., was 200 million, and the Plaintiff was in charge of, or supported by, the 16th event, such as the World Stitter Selection for the promotion of self-government. However, it is difficult to deem that the above recognition alone was widely known to general consumers or traders as the source of the Plaintiff’s mark, and there is no obvious evidence to deem otherwise.

D) Meanwhile, the Government of the Republic of Korea produced video reports of the items such as “Korean pattern”, “Korea New License”, and “Korea News” from around 1953 to December 31, 1994 through the National Film Production Agency, etc. for the purpose of promoting national affairs, and distributed them in the manner of screening in the theater, etc. As alleged by the Plaintiff, no evidence exists to deem that the Plaintiff received or succeeded to the foregoing signs, including “Korea News” from the Republic of Korea, as alleged by the Plaintiff.

(c) arranging the results of the review;

In full view of the foregoing, the challenged mark “” is not similar to the registered service mark “” in this case, and there is no concern for ordinary consumers or traders to mislead or confuse the source of service business. Therefore, it shall be deemed that the registered service mark “ does not fall under the scope of protection of the registered service mark in this case.

3. Conclusion

Thus, the trial decision of this case which held that the challenged mark does not belong to the scope of protection of the registered service mark of this case is legitimate, and the plaintiff's claim seeking revocation is without merit.

Judge Lee Jong-hee (Presiding Judge) (Presiding Judge)

Note 1) As to this part, the Plaintiff argued to the effect that the term “Daehan” portion of the said news “Daehan” is one of the 24th period, and that it is not the abbreviation of Korea’s “Korea”. However, it is difficult to grasp the part of the said news that combines with Daehan, or the part of the designated service business relationship, as alleged by the Plaintiff, and that the Plaintiff did not directly use the said news “D” as a meaning of “Daehan” while publishing a periodical publication. Therefore, the said assertion is without merit.

Note 2) Except where it is necessary to specify certain numbers for convenience, each number shall be indicated in the same manner as regards documentary evidence bearing a number.