Jeju Co., Ltd.

Transmission Industry, Inc.

June 10, 201

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 March 10, 201 on the case No. 2010Da571 shall be revoked.

1. Basic facts

A. The registered trademark of this case

1) Registration number/application date/registration decision date/registration date: (registration number 1 omitted)/registration date/registration date: May 14, 2008/ June 2, 2009/ June 15, 2009

2) Marks:

(iii) Designated goods: Artificial stones of Category 19 classified into products, non-metallic materials for concrete, non-metallic surface finishing materials for construction, building stones (unprocessed stones), block for non-metallic materials for road packing, cement block, concrete block, cement reporting board, cement reporting board, bricks (except cement products), non-metallic materials, concrete mortars, stone, processed stones, and processed stones;

4) Person entitled to registration: Defendant

B. First Used Trademark

1) Registration number/registration date/registration date of extinguishment/registration date: (registration number 2 omitted)// September 26, 1994// September 27, 2004

2) Marks:

(iii) Goods using: bricks, day-to-day, bridge, artificial stone, natural stone, boundary stone (in fences), concrete beta, strawing materials using volcanos, flooring materials using volcanos, and brick plates for construction;

4) Users: Nonparty 1 and Plaintiff

C. Reasons for the trial decision

1) On March 9, 2010, the Plaintiff filed for a registration invalidation trial with the Intellectual Property Tribunal against the Defendant on March 9, 2010, asserting that the registered trademark of this case, which was widely known by the Defendant among the general consumers, was identical or similar to the above trademark, and thus, the registered trademark of this case should be invalidated by falling under Article 7(1)4, 9, 11, and 12 of the Trademark Act.

2) On March 10, 201, the Korean Intellectual Property Tribunal dismissed the Plaintiff’s appeal on the ground that the pre-use trademark was not known to the general consumers as a trademark of a specific person as of the filing date and the decision of registration of the instant registered trademark, but is not in violation of the public order or good customs, and thus does not fall under both Article 7(1)4, 9, 11, and 12 of the Trademark Act.

[Reasons for Recognition] Evidence Nos. 1, 2, 5, and Nos. 1, 2

2. Issues of the instant case

A. Summary of the plaintiff's assertion

The plaintiff asserts that the registration of the registered trademark of this case should be invalidated for the following reasons, and that the decision of this case, which different conclusions, should be revoked as unlawful.

1) The registered trademark of this case is identical or similar to the pre-use trademark, its mark, and goods known as the Plaintiff’s trademark to consumers in Korea at the time of the decision of registration, and thus, if the registered trademark of this case is used on the designated goods, consumers may cause mistake or confusion as to the source of the goods, and thus, it constitutes Article 7(1)11 of the Trademark Act.

2) The instant registered trademark is identical or similar to the pre-use trademark widely recognized by consumers as indicating the Plaintiff’s goods, and is used on the goods identical or similar to the Plaintiff’s goods, and thus constitutes Article 7(1)9 of the Trademark Act.

3) The instant registered trademark is identical or similar to the pre-use trademark recognized as indicating the Plaintiff’s goods by domestic consumers, and is used for unlawful purposes, such as obtaining unjust profits or inflicting losses on the Plaintiff, and thus constitutes Article 7(1)12 of the Trademark Act.

4) The registered trademark of this case is likely to undermine the trust relationship in the Republic of Korea, including commercial transaction order, and is filed in violation of public order and good morals, and thus constitutes Article 7(1)4 of the Trademark Act.

B. Under the following, we will examine the Plaintiff’s assertion in turn.

3. Whether the registered trademark of this case falls under Article 7 (1) 11 of the Trademark Act

A. Criteria for judgment

If a registered trademark which is the object of a request for a trial for invalidation of registration falls under “a trademark likely to mislead or mislead consumers” as provided by Article 7(1)11 of the Trademark Act, other trademarks or goods using such trademark compared to the registered trademark or goods are not necessarily required to be well-known, but at least in general transactions in the Republic of Korea, it must be known to the extent that it can be recognized as a trademark or goods of a specific person immediately if it is said to be a trademark or goods. Such judgment shall be determined at the time of the decision of registration of the registered trademark (see, e.g., Supreme Court Decisions 2001Hu3187, Mar. 11, 2004; 2004Hu1304, Jul. 28, 2006).

B. Whether the pre-use trademark is known

1) Facts of recognition

If Gap's evidence Nos. 8, 17-36 (excluding the part rejected behind Gap's evidence No. 22) collected the purport of the whole pleadings, the following facts may be acknowledged:

A) Sales Performance

(1) From April 1, 1995 to September 30, 2007, Nonparty 1, the holder of the right to registered pre-use trademarks, engaged in the brick and similar products manufacturing business, and sold products and sold them as follows.

In 11,919,54 won, 227,272,272 won, 76,848,178,833,451 won, 175,696,853 won, 51,853 won, 51, 2005, 207, 1997, 11,999, 11,919,227,2727,272 won, 268,453 won, 696,853 won, 51,009,266 won in 2003, 2005, 2007, 89,387,817,37,40,407, 1647, 2635,2538,205 won in total, 203, 205, 2005.

(2) The Plaintiff was established on July 16, 2007 and sold typ, bricks, etc. from August 16, 2007 to August 16, 2007. The sales performance from June 2009, business day of the registration decision of the instant registered trademark, is as follows.

6,018,908 Won 13,794,091 Won 52,224,817 Won 18,902,02 Won 66,018,908

B) Internet homepage and search site

On August 30, 2007, the Plaintiff posted a notice on the Internet homepage (Internet address omitted) that the Plaintiff sold typstones, bricks, etc. with the trademark called “Twitman,” and on April 4, 201, the Plaintiff visited the above website by no later than 7,286 persons. Meanwhile, on the other hand, the Plaintiff’s search site (Guidegle, NAVV, Ethra, Ethical, etc.) entered the Internet search site into the Internet search site (Guidegle, Ethical, Ethical, Ethical, etc.) around March 201 or around April 4, 201, and searched the phrase “Tongk Twitk” or “Twitk” into the Internet search site (Guidebook, Ethical, Ethical, Ethical, etc.). The Plaintiff made the product “Tongk/Tick” with the presence of Jeju Volcank’s air.

(C) the national sales network;

As of March 31, 2011, the Plaintiff sells the Plaintiff’s products through 40 subcontractors, such as black tons and Gavings, all over the country.

D) Advertising, publicity;

(1) 원고의 대표자는 ‘명가건축자재’라는 업체를 운영하면서 ‘바스룸마스터’라는 상표로 적외선난방램프를 제작, 판매하고 있었는데, 일간지에 여러 차례 위 제품에 대한 광고를 게재하면서 그 광고의 하단 오른쪽에 조그맣게 ‘ ’ 등과 같은 문구를 삽입하여 ‘송석타일’ 및 ‘송석벽돌’도 함께 광고하였다.

(2) The name of the Plaintiff’s officers and the Plaintiff’s envelope used the same phrase as “,” and the Plaintiff separately produced and distributed the carbag and leaflet to publicize the Plaintiff’s trademark and the Plaintiff’s products through customers, etc.

(3) The Plaintiff displayed the Plaintiff’s product as a trademark on the construction material exhibition on four occasions as follows.

The table temporary EXPO included in the main sentence shall be Daegu X-Paak on March 26, 2008 or March 30 to October 5, 2008 as the Busan-Paak Paak Paak Paak on October 2008, from February 22, 2008 to February 6, 2008.

(4) The Plaintiff produced a sample sample for the “Sail” product and distributed it to the cooperator.

2) Determination

A) Whether the trademark or goods of a particular person were known

According to the above facts, based on the time of the registration decision of the trademark of this case, the non-party 1 and the plaintiff sold goods, etc. using the pre-use trademarks over 14 years, and the plaintiff distributed the goods, etc. on its website, daily newspapers, building material fairs, etc. or a carle, leaflet, sampling, etc. through the plaintiff distributed them, thereby advertising and publicizing the trademarks or phrases included in the pre-use trademarks or pre-use trademarks.

그런데, ‘건축용 비금속제 타일, 벽돌(시멘트제는 제외), 비금속제 타일, 콘크리트타일’ 등 이 사건 등록상표의 지정상품은 건축에서 일반적으로 널리 쓰이는 자재들이어서 그 시장규모가 적지 않을 것이라는 점을 감안하면, 소외 1과 원고가 14년여에 걸쳐 타일 등을 판매한 총매출액 1,204,799,240원(1,138,780,332원 +66,018,908원)은 1년 평균매출액이 1억 원에도 미치지 못하는 정도여서 소외 1과 원고가 위 기간 동안 판매한 타일 등이 위 상품시장에서 차지하는 비중은 매우 낮을 것으로 보인다(갑 제18호증에 의하면 원고의 매출액에는 위 ‘명가자재건축’에서 판매하는 ‘바스룸마스터’ 제품의 매출액도 포함되어 있어 선사용상표가 사용된 상품만의 매출액은 위 액수보다도 적다). 또한, 4차례 건축자재박람회에 ‘송석타일/벽돌’을 상표로 한 원고의 제품을 출품하여 전시한 것 외에는 일간지 등을 통한 광고의 회수를 알 수 없고, 그 광고 내용도 ‘바스룸마스터’ 제품의 광고 하단 오른쪽에 조그맣게 ‘송석타일/송석벽돌’이라는 문구를 삽입하여 광고한 것에 불과하여 그 광고효과도 미미할 것으로 보인다. 나아가, 카탈로그, 전단지, 샘플보드 등을 배포한 시점이나 규모를 확인할 수 있는 증거나 자료가 없어 이를 통한 홍보효과를 알 수 없고, 원고의 홈페이지 역시 홈페이지 개설일(2007. 8. 30.)부터 이 사건 등록상표의 등록결정일(2009. 6. 2.)까지 몇 명이 방문했는지 알 수 없으며 단지 위 등록결정일부터 22개월여가 지난 2011. 4. 4.까지 총 7,286명이 방문한 사실을 알 수 있을 뿐인데 사람들이 중복해서 홈페이지를 방문한다는 점까지 감안하면 2011. 4. 4. 시점에서의 위 홈페이지 방문자 숫자만으로는 선사용상표나 그 사용상품이 위 등록결정일 당시 거래계에서 원고의 것으로 알려졌다고 인정하기에 부족하다. 한편 원고가 2011. 3. 31. 현재 전국에 40개의 협력업체를 통하여 원고의 제품을 판매하고 있다고 하지만, 이 사건 등록상표의 등록결정일 당시의 전국 판매망의 업체수를 알 수 없고, 위 40개 업체가 위 등록결정일 당시 원고의 제품을 판매하고 있었다고 하더라도 앞서 본 원고의 매출액이 크지 않은 점을 고려하면 위 등록결정일 당시 위 협력업체를 통해 판매된 선사용상표의 사용상품의 규모 역시 전체 시장에서 차지하는 비중이 미미할 것이므로, 전국적인 판매망이 있다고 하여 거래계에서 선사용상표나 그 사용상품이 원고의 것으로 알려지는데 별다른 기여를 했다고 보기도 어렵다.

Therefore, the above-mentioned facts alone cannot be deemed to have been known to the extent that it could be perceived as the trademark or goods of the plaintiff or a specific person if a domestic consumer or a trader at the time of June 2, 2009, which was the date of the decision to register the registered trademark of this case, was used in the pre-use trademark or goods. There is no other evidence

B) Judgment on the Plaintiff’s assertion

(1) The Plaintiff asserts that, based on the part of the evidence No. 22 (the content of the newspaper advertisement and the content of the newspaper advertisement for the 2007-209-2009) and the evidence No. 39, the Plaintiff paid KRW 98,000 to August 1, 2007 through December 31, 2009 for eight central daily newspapers, including global daily newspapers and Jeju daily newspapers, and published a total of KRW 780 advertisements on a total of KRW 98,00,09,015 in the local daily newspapers, including Jeju daily newspapers, thereby making it known to the extent that it can be perceived as the Plaintiff’s trademark or product.

그러나 위 각 증거는 원고가 작성한 광고목록 및 광고비지출 내역에 불과하여 이를 선뜻 믿기 어렵고, 가사 원고가 위와 같이 광고를 게재하였다고 하더라도, 이는 앞서 본 바와 같이 ‘바스룸마스터’ 제품의 광고 하단 오른쪽에 조그맣게 ‘송석타일/송석벽돌’이라는 문구를 삽입하여 광고한 것으로서 광고효과가 미미하여 위 광고를 통해 선사용상표나 그 사용상품이 국내 수요자나 거래자에게 원고 또는 특정인의 것으로 인식될 수 있을 정도로 알려졌다고 보기 어렵다. 따라서 원고의 위 주장은 받아들일 수 없다.

(2) In addition, the Plaintiff asserts that the pre-use trademarks and the products using the pre-use trademarks are sufficient to be perceived as a specific person in the transactional field solely on the basis of Non-Party 1 and the Plaintiff’s sales performance, since the company that manufactures bricks or different days by treating the volcanic stone “scot” and making the bricks or other days within the country.

However, in order for a registered trademark to be the subject of a request for invalidation trial to be invalidated as it falls under Article 7 (1) 11 of the Trademark Act, and the registered trademark or its products are recognized as a trademark or goods of a specific person in the market where the designated goods of the registered trademark or similar goods are traded, and thus consumers or traders cause mistake or confusion as to the source. Thus, considering the importance of the goods using the pre-use trademark in the market to determine whether the registered trademark falls under Article 7 (1) 11 of the Trademark Act, considering the importance of the goods using the pre-use trademark in order to determine whether the registered trademark falls under Article 7 (1) 11 of the Trademark Act, the proportion of the goods using the pre-use trademark to the goods using the pre-use trademark should be considered in the market where the designated goods of the registered trademark or similar goods are traded, and the proportion of the goods using

Therefore, in determining whether the pre-use trademarks or their products have been recognized as a trademark or goods of a specific person, the transaction markets of "the bricks or other works manufactured using the pre-use trademarks" are limited to the transaction markets of "the bricks or other works manufactured using the pre-use trademarks" rather than the transaction markets for the designated goods of the registered trademark of this case or similar goods such as "non-metallics, bricks (except cements), non-metallics, and concrete mortars" for construction purposes. The plaintiff's above assertion is rejected.

C. Whether it falls under Article 7(1)11 of the Trademark Act

As such, it is not known to the extent that the pre-use trademark or its products are domestically consumers or traders at the time of the decision to register the registered trademark of this case, and if the registered trademark of this case is used on the designated goods, it cannot be said that the consumers might cause mistake or confusion as to the source and cause confusion. Ultimately, the registered trademark of this case does not fall under Article 7(1)11 of the Trademark Act.

4. Whether the registered trademark of this case constitutes Article 7(1)9 and 12 of the Trademark Act

In order for the instant registered trademark to fall under Article 7 (1) 9 of the Trademark Act, the pre-use trademark to be recognized as indicating another person's goods as at the filing date of the instant registered trademark. In order to fall under Article 7 (1) 12 of the Trademark Act, the pre-use trademark should be recognized as indicating a person's goods among domestic or foreign consumers at the filing date of the instant registered trademark.

However, as seen earlier, the pre-use trademark is not recognized as a trademark of a specific person among consumers at the time of the decision on the registration of the trademark of this case. Thus, prior to the filing date of the registered trademark of this case, there is no room to recognize it as a trademark of a specific person or recognize it as a trademark.

Therefore, the registered trademark of this case does not fall under both Article 7(1)9 and 12 of the Trademark Act.

5. Whether the registered trademark of this case falls under Article 7 (1) 4 of the Trademark Act

A. Criteria for judgment

"Trademarks which are contrary to the public order or good customs" under Article 7 (1) 4 of the Trademark Act refers to cases where the composition of a trademark itself or where the trademark is used for designated goods violates the public order or good customs and good customs of ordinary people. In cases where the composition itself does not go against the public order or good customs and good customs of ordinary people, it is limited to cases where recognizing the registration of a trademark is considerably lacking in its social validity in the process of application and registration, and it seems difficult to see that it goes against the order of the Trademark Act. Thus, unless it is a registered trademark which imitates another person's trademark without permission to take advantage of its reputation such as the well-known and well-known trademark, service mark, trade name, etc., even if it appears that the act of application and registration, or the registration and use of the trademark violates the good customs and good customs principle in relation to a specific person, or it does not immediately constitute a violation of the above provision (see, e.g., Supreme Court Decisions 200Hu764, Feb. 27, 2006).

B. The plaintiff's assertion and judgment on this issue

1) The Plaintiff asserts that the registered trademark of this case, like the Plaintiff, shall be invalidated pursuant to Article 7(1)4 of the Trademark Act, on the ground that the Defendant, as the same kind of business producing the product by collecting and processing “saved the pre-use trademarks, applies for and registers the pre-use trademarks with the same production, is likely to undermine the fair and reliable commercial transaction order as well as domestic trust, and is filed in violation of public order and good morals.

2) On September 27, 2004, the pre-use trademark was extinguished and registered upon the expiration of the duration of the pre-use trademark, and on May 14, 2008, when three years and seven months have passed thereafter, the Defendant applied for the trademark of this case. As seen earlier, the registered trademark of this case and the pre-use trademark of this case are letters consisting of “detory” both of the registered trademark and the pre-use trademark of this case and are identical and similar trademarks.

However, the registered trademark of this case, which is composed of Korean only, cannot be deemed as being in violation of public order or good customs. In addition, insofar as our trademark law takes the principle of registration, it cannot be deemed that the process of filing and registering a trademark is considerably lacking in social validity, on the ground that the defendant, who is the same or similar trademark, filed an application for and obtained registration of a trademark identical or similar to the extinguished pre-use trademark, and the process of filing and registering the trademark is considerably lacking. Furthermore, as seen above, since the pre-use trademark was not known to ordinary consumers as a trademark at the filing date of the registered trademark of this case, it is difficult to view that the defendant imitates another person’s mark without permission to take advantage of a well-known person’s trademark without permission, and thus, it is difficult

Therefore, we cannot accept the Plaintiff’s assertion that the registered trademark of this case constitutes Article 7(1)4 of the Trademark Act, since it is likely to undermine the trust relationship in the Republic of Korea, including commercial order, and is filed in violation of public order and good morals.

6. Conclusion

Therefore, the registered trademark of this case does not fall under both subparagraphs 4, 9, 11, and 12 of Article 7 (1) of the Trademark Act. The decision of this case is legitimate in conclusion, and the plaintiff's claim for revocation is without merit. It is so dismissed as per Disposition.

Judges Cho Jae-soo (Presiding Judge)