[1] The standard and time of determining whether a trademark constitutes a well-known trademark under Article 7 (1) 10 of the Trademark Act (=the time of application for registration)

[2] The requirements for the application of trademark under Article 7 (1) 11 of the Trademark Act in a case where the cited trademark or its goods are known only to the extent that they can be perceived as the trademark or goods of a specific person to the extent that they are recognizable to the consumers or the traders

[3] In case where the cited trademark is a well-known trademark, the requirements for the application of trademark only to consumers under Article 7 (1) 11 of the Trademark Act

[4] In a case where the cited trademark is known to the extent that it can be recognized as a trademark of a specific person by a consumer or a trader, whether it constitutes a trademark only for consumers under Article 7 (1) 11 of the Trademark Act even if the cited trademark is used for designated goods not identical or similar to the cited trademark's goods (affirmative with qualification)

[5] The case holding that where a trademark identical or similar to a quoted trademark known only to the extent that it can be recognized as a trademark of a specific person with respect to clothes is used for a provisional category, it constitutes a trademark only for a consumer under Article 7 (1) 11 of the Trademark Act

[1] Whether a trademark is well-known under Article 7 (1) 10 of the Trademark Act shall be determined on the basis of the use, supply, period, method, mode, scope of transaction, etc. of the trademark, and whether it is objectively widely known under the transaction circumstances or social norms. In applying the above provision, the standard for determining whether the trademark is well-known shall be deemed the time of application for trademark registration.

[2] In order to determine that there is a concern for deceiving the consumers as stipulated in Article 7 (1) 11 of the Trademark Act, the cited trademark or its goods are not necessarily well-known, but at least in general transactions in Korea, it should be known to the extent that it can be perceived as a trademark or goods of a specific person if it is a trademark or goods. In such a case, if a trademark identical or similar to the cited trademark is used on the designated goods identical or similar to the above goods, it may be said that there is a concern for ordinary consumers to mislead or confuse the origin of the goods under the above provision.

[3] If the cited trademark acquires well-knownness by being widely known to most of the general public other than the parties to the transaction in relation to the goods using it, it may be recognized that not only the goods to which the trademark was widely known or similar goods but also the goods of different kind are produced or sold by a well-known trademark right holder or a person in a special relationship with the trademark, depending on the use, sale and transaction situation, etc. of the goods. In such a case, even if the trademark is used on goods different from those of the cited trademark, it may cause consumers to mislead and confuse the source of the goods.

[4] In light of the purpose of Article 7 (1) 11 of the Trademark Act intending to prevent general consumers from being misled or confused about the source of goods using a trademark recognized as a trademark of a specific person and protect the trust thereof, even in cases where the cited trademark is widely known among general consumers to the extent that it acquires the well-knownness, and only is known to the extent that it can be perceived as a trademark of a specific person, if any of the trademarks is identical or similar to the cited trademark, and in light of the specific situation of the cited trademark or the economic relation between the goods using the cited trademark, and other general transaction circumstances, etc., if there are special circumstances to believe that the trademark is used by the cited trademark right to the extent that it cannot be used for the designated goods identical or similar to the goods using the cited trademark, even if it is not used for the designated goods identical or similar to those of goods using the cited trademark, it shall be deemed that there is a concern for ordinary consumers to mislead or confuse the source.

[5] The case holding that where a trademark identical or similar to a quoted trademark known only to the extent that it can be recognized as a trademark of a specific person with respect to clothes is used for a provisional category, it constitutes only a trademark for consumers under Article 7 (1) 11 of the Trademark Act

[1] Article 7 (1) 10 of the Trademark Act / [2] Article 7 (1) 11 of the Trademark Act / [3] Article 7 (1) 11 of the Trademark Act / [4] Article 7 (1) 11 of the Trademark Act / [5] Article 7 (1) 11 of the Trademark Act

[1] [4] Supreme Court Decision 96Hu412 delivered on March 14, 1997 (Gong197Sang, 1111) / [1] Supreme Court Decision 88Hu219 delivered on June 27, 198 (Gong1989, 1165) Supreme Court Decision 88Hu226 delivered on October 10, 1990 (Gong1990, 2274) / [2] Supreme Court Decision 95Hu262 delivered on September 26, 1995 (Gong195Ha, 3534) / [3] Supreme Court Decision 94Hu2186 delivered on June 13, 195 (Gong195Ha, 239) / [4] Supreme Court Decision 98Hu9399 delivered on June 29, 198

The RPPPD (Attorneys Lee Jae-soo et al., Counsel for the plaintiff-appellant)

Appellant (Patent Attorney Lee Jae-jin et al., Counsel for defendant-appellant)

Korean Intellectual Property Trial Office Decision 96Na143, 144 dated November 28, 1997

The appeal shall be dismissed. The costs of appeal shall be assessed against the respondent.

The grounds of appeal are examined.

1. The court below acknowledged the purport of the registered trademark of this case (hereinafter referred to as the cited trademark) (1) "UNFCCCNBY" (registration No. 21, Dec. 21, 1991; 4. 8, 1993; 4. 1 omitted) and the registered trademark of this case (2) "Nuribbe" (registration No. 1, 1991; 20, Sept. 29, 192; 1986, from around 196, the date of filing of the application of the trademark of this case (registration No. 1, 1991; 4. 2 omitted) to which clothing, etc. was registered as designated goods in Korea or in Germany, the United Kingdom, United States, Canada, Canada, Australia, Australia, etc., and that the trademark of this case was widely accepted by general consumers in light of the sales amount of goods using the cited trademark of this case, advertising expenses, increase in sales volume, and size of sales sales store in Korea, etc.

In addition, the court below determined that the trademark of this case was registered in violation of Article 7 (1) 10 and 11 of the Trademark Act and its registration was null and void pursuant to Article 71 (1) 1 of the same Act, on the ground that if the trademark of this case is used on the designated goods, it is likely to mislead, confuse, or confuse the trader or user as being used by the cited trademark right holder or a person in a special relationship with the cited trademark right holder, if it is used on the designated goods, the trademark of this case is registered in violation of Article 7 (1) 10 and 11 of the Trademark Act.

2. The issue of whether a so-called well-known trademark under Article 7 (1) 10 of the Trademark Act is a standard for determining whether the trademark is a well-known trademark or not, such as the use and supply of the trademark, the period and method of business activities, pattern of trade, scope of trade, etc., and whether it is objectively widely known under the transaction circumstances or social norms (see, e.g., Supreme Court Decisions 88Hu219, Jun. 27, 1989; 88Hu226, Oct. 10, 1990). In applying the above provision, the standard for determining whether the cited trademark is a well-known trademark shall be deemed as the time of application for trademark registration (see, e.g., Supreme Court Decision 96Hu412, Mar. 14, 199

The record reveals that the time of the application for the registration of the instant registered trademark was November 29, 191 and December 21, 191. However, according to the facts acknowledged by the court below, even according to the facts acknowledged by the court below, it is difficult to recognize that the cited trademark was remarkably perceived by the consumers even if the cited trademark was sold or advertised to the extent equivalent to the recognition, even if it was conducted, as at the time of the application for the registration of the instant registered trademark, the cited trademark or its products were first advertised in full scale.

Therefore, the court below held that the registered trademark of this case falls under Article 7 (1) 10 of the Trademark Act in relation to the cited trademark is erroneous in the misapprehension of legal principles as to the above provision.

However, the court below determined that the registered trademark of this case also constitutes Article 7 (1) 11 of the Trademark Act.

In order to determine the possibility of deceiving consumers as stipulated in subparagraph 11, the cited trademark or its goods are not necessarily required to be well-known, but at least it should be known to consumers or traders as a trademark or goods of a specific person if they are used in general transactions in the Republic of Korea. In such a case, if a trademark identical or similar to the quoted trademark is used on the goods identical or similar to the above goods, it may be said that there is a concern for ordinary consumers to mislead or confuse the origin of the goods under the above provision (see Supreme Court Decision 95Hu262 delivered on September 26, 195). In addition, if the cited trademark acquires well-knownness by widely known most of the goods to the general public other than those related to the goods using it, it may be said that the trademark is widely known or similar goods, and even if it is used on the goods identical or similar to the cited trademark, it may be recognized that the trademark is used by the trademark holder or its goods are in a special relation with the trademark holder or its goods, it may be recognized that it might be used by 196.

Therefore, in light of the purpose of the above provision to prevent general consumers from being misled or confused about the source of goods using a trademark recognized as a trademark by a specific person and to protect the trust thereof, even in cases where the cited trademark is widely known to the extent that it obtains the well-knownness, and only is known to the extent that it can be perceived as a trademark of a specific person, if any of the trademarks is identical or similar to the cited trademark, and in light of the specific use condition of the cited trademark, and the economic relation between the goods using the cited trademark, and other general transaction circumstances, if there are special circumstances likely to be misunderstood that the trademark is used by the cited trademark right holder to the extent that it cannot be used for the designated goods identical or similar to the goods using the cited trademark, in light of the specific use condition of the cited trademark, and the degree of economic relation among the goods using the cited trademark, etc. (see Supreme Court Decision 96Hu412, Mar. 14, 197).

In light of the records, it is reasonable to view that the cited trademark at the time of the decision to register the trademark of this case was widely known among general consumers or traders, but at least it was known to the extent that it could be perceived as the trademark claimant's trademark in general trade in Korea. Further, the trademark of this case is identical or similar to the cited trademark in terms of appearance, name, and concept, and it is deemed that the trademark of this case differs from the cited trademark of this case's designated goods of this case's designated goods of handbags, etc., but it is common among consumers. And as recognized by the court below at the time of the decision to register the trademark of this case, the cited trademark of this case's designated goods of this case's designated goods of this case, such as handbags, etc., which are goods of this case, and clothing, etc. which are goods of this case's designated goods of this case, are not used as the designated goods of this case's designated goods of this case, even if it is not used as the designated goods of this case's designated goods of this case.

The judgment of the court below on the application of Article 7 (1) 11 of the Trademark Act is just in accordance with the above purport, and there are no errors in the misapprehension of legal principles as to the above provision, violation of the rules of evidence, incomplete deliberation, etc. as alleged in the

In addition, insofar as the registered trademark of this case is registered in violation of the above provision and its registration is deemed null and void, even if it was erroneous in the judgment of the court below that the registered trademark of this case constitutes Article 7 (1) 10 of the Trademark Act, it shall not affect the result of the trial decision of this case where the selective claim is combined. Ultimately, the argument in the grounds of appeal cannot

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

Justices Kim Jong-sik (Presiding Justice)