[1] Whether the proviso of Article 159(1) of the Patent Act, which provides that the party shall be given an opportunity to state his/her opinion at the time of ex officio examination of evidence, constitutes a mandatory

[2] The meaning of "ordinary name of goods" under Article 6 (1) 1 of the Trademark Act

[3] The case holding that the trademark "UBR" is not a general name with the intent to assemble as designated goods

[1] According to the proviso of Article 159(1) of the Patent Act, which is applicable mutatis mutandis by Article 82(1) of the Trademark Act, even in a case where an ex officio examination of evidence is conducted in an appeal trial against rejection ruling against trademark registration, the grounds for the examination must be left behind in the record. To this end, the parties shall be given an opportunity to state their opinions on the reasons. This provision is so-called compulsory provisions due to the public interest demand that the applicant should not observe to maintain the credibility

[2] For the purpose of Article 6 (1) 1 of the Trademark Act, the term "ordinary name of goods" means the general abbreviation, inner name, and other names which have been used and recognized as being used generally by the relevant business operator or ordinary consumers as referring the goods from the trade area dealing with the designated goods.

[3] The case holding that if a person, who commenced the production and sale of a domestic first assembly bath, has continuously used the trademark "UBR" as the designated goods with respect to "UBR" as the trademark "S" and registered as the designated goods, it is hard to conclude that the term "UBR" has reached the general recognition of the trademark in the transactional field by the applicant's effort, and in such a case, the traders or ordinary consumers of the prefabricated bathing will recognize the above applied trademark as the trademark rather than the trademark as the trademark name of the applicant, since the trademark registration has been completed, and up to the present, the domestic industry related to the prefabricated bathing will occupy more than 50% market share in the relevant industry of the prefabricated type, and the part of the above registered trademark is separated from the English character of the above registered trademark and applied for a trademark as the combined trademark for the above registered trademark, the term "UBR" is recognized as the trademark of the applicant

[1] Article 159(1) of the Patent Act; Articles 77 and 82(1) of the Trademark Act / [2] Article 6(1)1 of the Trademark Act / [3] Article 6(1)1 of the Trademark Act

[1] Supreme Court Decision 86Hu20 delivered on March 24, 1987 (Gong1987, 728), Supreme Court Decision 86Hu90 delivered on May 23, 1989 (Gong1989, 100), Supreme Court Decision 94Hu241 delivered on February 9, 1996 (Gong196Sang, 954) / [2] Supreme Court Decision 85Hu130 delivered on December 22, 1987 (Gong198, 346), Supreme Court Decision 96Hu979 delivered on February 28, 199 (Gong197Sang, 945) / [3] Supreme Court Decision 96Hu245 delivered on September 24, 196 (Gong1996Sang, 199, 197)

Elmmchemical Co., Ltd. (Patent Attorney Kim Yong-il et al., Counsel for the defendant-appellant)

The Commissioner of the Korean Intellectual Property Office

Korean Intellectual Property Trial Office Decision 95Na2091 dated October 31, 1996

The decision of the court below is reversed, and the case is remanded to the Korean Intellectual Property Office.

The grounds of appeal are also examined.

According to the reasoning of the court below's decision, Gap evidence No. 1 stated that "UNFCCCBHOM (UB)" means a prefabricated, and evidence No. 2 stated "CERAIC UNCITROM (CUBR)", and evidence No. 3 stated "SYSYBATROM (SBR)" as a prefabricated type / prefabricated type 3, and evidence No. 2 submitted by the opponent No. 1 states that "A will have been built and put in place in place as a general UBR (UBR) generally for consumers," so it can be easily confirmed that "UBM is used as a trademark name or "UBM" in the domestic prefabricated type / seller of the desire for prefabricated type, and thus, the trademark application No. 1 states "UBR" as an ordinary trademark called an "UBR model" or "UBR," and thus, it can be easily confirmed that the trademark application form of this case can be easily seen as an "UBR" or "the general trademark assembly model of this case.".

First of all, the court below's determination that the oral confirmation was made in the real transaction system ex officio, and even if the investigation of evidence was conducted ex officio, the grounds for the oral investigation should be left on the record, and the parties should be given an opportunity to state their opinion on the reasons for the investigation (Article 82 (1) of the Trademark Act and the proviso of Article 159 (1) of the Patent Act). This provision is a so-called mandatory provision due to the public interest demand that it should not be observed to maintain the credibility of the adjudication system based on the appropriateness of the adjudication (see Supreme Court Decision 94Hu241 delivered on February 9, 196). The records of this case also contain that the court below's oral confirmation or its confirmation cannot be known, and there is no evidence that the parties provided an opportunity to state their opinion on the content of the confirmation. Accordingly, the court below's ex officio examination of evidence violates the mandatory law and thus, it cannot be considered as evidence.

In addition, the term "ordinary name of goods" under Article 6 (1) 1 of the Trademark Act refers to the general abbreviation, inner name, and other names which have been used and recognized as being generally referred to the goods among the relevant business operator or ordinary consumers in the transaction area dealing with the designated goods (see Supreme Court Decision 96Hu979 delivered on February 28, 1997).

According to the records, the document No. 2, which is a Kabrogyer Gap, filed by the claimant, stated that "UBR" means "UB (R)" as a general rule, and there is no other material that "UBR" means "UB" means "UB" intent. Rather, the weak of "UBR" in English, which means "UBR" intent, is generally called "UB" (the evidence No. 1, also indicates "UBR", and there is no person that the relevant business operator or ordinary consumers recognize "UBR" as the weak of "UNFCCC BTROM". Accordingly, the evidence adopted by the court below alone is difficult to recognize that the "UBR" of the applied trademark of this case is a general name that is generally recognized as being used by the relevant business operator or ordinary consumers as being referred to the goods generally among the relevant business operator or ordinary consumers.

Rather, the applicant continued to use the trademark "UBR" as designated goods after completing trademark registration on January 27, 1981 by 74981 of the Korean Intellectual Property Office as "UBR" as "S, kitchen, kitchen, assembly bath, bath, water tank, and change" as the designated goods, and has a market share of at least 50% in the relevant domestic industry of prefabricated bathing up to the present time. The trademark of this case is divided into the English text of the above registered trademark and is filed as a collective trademark for the above registered trademark. Accordingly, the term "UBR" is sufficient to deem that the trademark of this case has reached a wide recognition from the transactional world by the applicant's efforts, and in such case, the traders or ordinary consumers of the prefabricated BR recognize the trademark of this case as the trademark of this case as the trademark of the applicant rather than the ordinary name of the designated goods.

Nevertheless, the court below, based on the evidence without probative value, deemed the trademark of this case as a common name for assembly-type bathing, in which the court below erred by misapprehending the legal principles on the ordinary name of goods, or by failing to exhaust all necessary deliberations, and thus, it is obvious that this affected the result of the trial decision, the ground of appeal assigning this error is with merit.

Therefore, the decision of the court below is reversed and the case is remanded to the Korean Intellectual Property Tribunal for a new trial and determination. It is so decided as per Disposition by the assent of all Justices who reviewed the appeal.

Justices Lee Yong-hun (Presiding Justice)