[1] Whether a request to revoke trademark registration may be filed again on the ground that the date of a request for a trial or the scope of the designated goods is different while a trial seeking revocation of trademark registration for several designated goods is pending on the ground that the registered trademark is not used (affirmative

[2] Where two or more designated goods of a registered trademark are designated in a trial on cancellation of trademark registration on the ground of non-use of the registered trademark, whether the interested party has a benefit to request a trial on cancellation of trademark registration by arbitrarily determining the scope of the designated goods requiring revocation

[1] Where a request for cancellation of trademark registration has been filed at the same time with respect to several designated goods, the request for a trial cannot be accepted as a whole if all designated goods are considered as one request, and the use of one of the designated goods is proved as one request, and the request for a trial cannot be dismissed only as to the designated goods proved by use, and a part of the request for a trial is not allowed as to only the designated goods proved by use. Thus, even if the request for a trial is pending, even if the request for cancellation of trademark registration is pending, the claimant has a right to request a trial again on the designated goods which are included in common, with different dates of the request for a trial which is the calendar point of the period of non-use or the scope of the designated goods for which the cancellation of trademark registration is sought, so even if the trademark right holder bears the burden of proof as to any of the designated goods which are subject to a request for a trial after the request for a cancellation of trademark registration, so long as the trademark registration can be exempted, it cannot be deemed unlawful as it goes against the legislative intent of Article 73(4) of the Trademark Act.

[2] Article 73(3) of the Trademark Act provides that where there are two or more designated goods of the registered trademark on the ground that they fall under Article 73(1)3, a revocation trial may be requested on some designated goods, and does not provide a separate provision that a revocation trial shall be requested on the basis of the same or similar designated goods group. This provision provides that the classification of goods is divided for the convenience of trademark registration business and does not define the scope of similarity of goods, so it cannot be determined as a similar goods immediately because it belongs to the same kind of goods list because the classification of goods is not classified for the convenience of trademark registration business. In addition, considering the fact that the trademark cancellation trial system due to the non-use is legislative purpose to promote the use of the registered trademark and to impose sanctions on the non-use of the registered trademark, and the introduction of a system for the revocation trial on some designated goods to strengthen the effectiveness of sanctions on non-use, an interested party may request the revocation trial on the trademark registration by arbitrarily setting the scope of the designated goods which the trademark needs to be revoked, and if all the designated goods belonging to the registered trademark cannot be used or applied for the trademark registration.

[1] Article 73(1)3, (3), and (4) of the Trademark Act / [2] Article 73(1)3 and (3) of the Trademark Act

[1] Supreme Court Decision 93Hu718, 725, 732, 749 decided December 28, 1993 (Gong1994Sang, 541) Supreme Court Decision 201Hu2916 Decided January 27, 2012

El branch Life Health Co., Ltd. (Patent Attorney Kim Yong-il et al., Counsel for the defendant-appellant)

Cowe Co., Ltd. (Patent Dan Patent & Patent Attorney Park Jong-chul et al., Counsel for the plaintiff-appellant)

Patent Court Decision 2012Heo3657 Decided August 31, 2012

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

The grounds of appeal are examined.

1. As to the second ground for appeal

Article 73(1)3 of the Trademark Act provides that a trial for cancellation of trademark registration may be requested on the ground that the registered trademark has not been used in the Republic of Korea for not less than three years. Paragraph (3) provides that if two or more designated goods of the registered trademark are designated at that time, a trial for cancellation may be requested on some designated goods. Meanwhile, Paragraph (4) provides that where a trial for cancellation of trademark is requested on the ground that the registered trademark has not been used for not less than three years, the respondent may not be exempted from the cancellation of trademark registration on the designated goods related to the request for cancellation of trademark registration unless he proves that not less than one of the designated goods related to the request for cancellation of trademark registration has been properly used in the Republic of Korea within three years before the date of request for trial. In light of such provision, if a trial for cancellation of trademark registration is requested on several designated goods at the same time, all the designated goods subject to request for trial can be considered as one and all of the designated goods can not be accepted as a whole, and that part of the request for trial for cancellation of trademark cannot be accepted as to the remaining part of the request (see Supreme Court Decision 20137Hu27.

In light of the above legal principles and the records, even if the defendant filed a request for the cancellation trial (hereinafter " separate request for cancellation") against 33 goods, such as native trees, among the designated goods of the registered trademark of this case (registration number omitted) with the Intellectual Property Tribunal on March 11, 2011, on the ground of non-use (hereinafter " separate request for cancellation"), and on August 17, 201, the defendant again filed a request for the cancellation trial (No. 2011Da1943) against the 21 designated goods, including 19 goods, which are parts of the separate request for the cancellation trial with the Intellectual Property Tribunal on August 17, 2011, on the ground of non-use (No. 2011Da1943). However, even if the lawsuit for cancellation of the trial of this case was pending in the Patent Court at the time of the trial decision of this case, the request of this case is different from the date of the separate request for the cancellation trial and the scope of the designated goods seeking the cancellation of registration, and the defendant still has interest in this case.

The judgment below to the same purport is correct, and there is no error in the misapprehension of legal principles as to Article 73 (4) of the Trademark Act as alleged in the grounds of appeal.

2. Regarding ground of appeal No. 1

Article 73(3) of the Trademark Act provides that where there are two or more designated goods of the registered trademark on the ground that they fall under Article 73(1)3, a revocation trial may be requested on some designated goods, and does not provide a separate provision that a revocation trial may be requested on some designated goods by the same or similar designated goods group. This provision provides that the classification of goods is classified for the convenience of trademark registration affairs, and it does not define the scope of similarity of goods, and thus it cannot be determined as similar goods immediately because it belongs to the same kind of goods on the list of goods. In light of the fact that the trademark cancellation trial system due to non-use is intended to promote the use of the registered trademark, while the legislative purpose of which is to impose sanctions on non-use, and the system was introduced on some designated goods to strengthen the effectiveness of sanctions on non-use, an interested party may request a revocation trial on the trademark registration by arbitrarily setting the scope of the designated goods which the trademark needs to be revoked, and that if a revocation trial is requested on all the designated goods belonging to the similar scope of the registered trademark, the trademark cannot be used or applied for a similar trademark.

Examining the reasoning of the judgment below in light of the above legal principles and records, it is proper that the court below held that even if the defendant did not request the cancellation trial including all the designated goods related to the request for cancellation other than the designated goods related to the request for cancellation among the designated goods of the registered trademark of this case, the request for cancellation trial of this case cannot be deemed as having no interest in the request for adjudication, and there is no error of law as to the interest in the

3. 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 Yong-deok (Presiding Justice)