[1] Purport of Article 7 (1) 12 of the Trademark Act

[2] The method of determining whether there is "illegal purpose" under Article 7 (1) 12 of the Trademark Act

[3] Whether the registered trademark " " constitutes an imitated trademark consisting of "the designated cogrbr" as a prior trademark, which is a prior trademark, Japan's well-known trademark, and constitutes Article 7 (1) 12 of the Trademark Act (affirmative)

[1] Article 7 (1) 12 of the Trademark Act is a provision newly established under the Trademark Act as amended by Act No. 5355 of Aug. 22, 1997, in line with the legislative trend of strengthening of international protection of well-known and well-known trademarks. The purport of Article 7 (1) 12 of the Trademark Act is to not allow registration of a trademark for the purpose of causing damage to the well-known owner of a trademark by causing damage to the intangible value of well-known trademark, such as business credibility or customer attraction, incorporated into well-known trademark, by using a trademark which is widely-known or well-known trademark by registering and using the trademark which is recognized as a trademark by customers in the Republic of Korea or in foreign countries, or by hindering the business in the Republic of Korea of the trademark owner, or by using the trademark for the purpose of obtaining unfair profits by using such imitate trademark.

[2] If a trademark falls under Article 7 (1) 12 of the Trademark Act, it shall be a well-known trademark which is remarkably recognized as a trademark of a specific person among consumers in the Republic of Korea or in foreign countries, and a third person shall use the trademark identical or similar to the well-known trademark of a specific person for unlawful purposes. Whether there exists any unlawful purpose among them, shall be determined at the time of application of the registered trademark in full view of the following: the degree of well-known, well-known or creativeness of the trademark of a specific person; the degree of identical or similarness between the trademark of a specific person and a third person; the existence and content of negotiations surrounding the trademark between a third person and a third person; whether a third person has prepared the business using the registered trademark; whether a third person has prepared the business specifically using the registered trademark; whether the designated goods of a specific person are identical or similar to the

[3] The registered trademark " " "," which combines "HYOKO", which is the part of "the Do governor of the High Court of Korea," which refers to the well-known trademark of Japan, "the Do governor of the High Court", refers to "the Do governor of the High Court of Korea", as it is in Korean language, is an imitate trademark composed of a similar trademark with the combination of "HYOOO", and it is reasonable to deem that it is a trademark used for the purpose of gaining unfair profits by taking advantage of the comparable trademark's image or customer attraction accumulated in the comparable trademark, or for the purpose of dilution the value as a trademark of the comparable trademark and causing damage to the trademark owner. Thus, it constitutes Article 7 (1) 12 of the Trademark Act.

[1] Article 7 (1) 12 of the Trademark Act / [2] Article 7 (1) 12 of the Trademark Act / [3] Article 7 (1) 12 of the Trademark Act

[2] Supreme Court Decision 2002Hu1362 decided May 14, 2004 (Gong2004Ha, 1873)

A. Shakia Sha Haba (Patent Attorney Na-young et al., Counsel for the defendant-appellant)

Cheong Food Co., Ltd. (Patent Attorney Han-ho, Counsel for defendant-appellant)

May 26, 2006

1. The decision made by the Intellectual Property Tribunal on October 27, 2005 on the case No. 565 of 2005 is revoked.

2. The costs of the lawsuit are assessed against the defendant.

The same shall apply to the order.

1. Details of the trial decision;

A. The registered trademark of this case

(1) Composition:

(2) Date of application/registration date/registration number: November 1, 2002/204 December 17, 2004/603206

(3) Designated goods: Cub, shacker, non-kacker, cand, croke, kacker, kacker, wads, wabs, Kabbres (Classification of goods No. 30)

(4) Trademark right holder: Defendant

B. The comparative trademarks:

(1) A comparable trademark 1

(1) Composition: Do governor Do governor

(2) Used goods: Overarche, etc., such as judy (in Japan, which is kept in the Republic of Korea due to the religion, etc.).

(3) Trademark user: The plaintiff

④ A trademark registered as the registration number No. 524914 (the filing date of the application, June 4, 1957, August 1, 1958 (the date of the final renewal of the term of existence, March 24, 199) in Japan is registered.

(2) The comparable trademark 2

(1) Composition: HYOKO

(2) The user goods and trademark users are as shown in the comparable trademark 1.

③ A trademark registered as a registration number No. 779390 (the filing date of February 13, 1992) in Japan is a trademark.

(3) Compared trademark 3

(1) Composition:

(2) Date of application/registration date/registration number: December 12, 1994/ April 12, 1996/3369888

③ 지정상품 : 건과자, 약과자, 카스텔라, 엿, 쿠키, 캔디, 아이스캔디, 젤리, 식빵, 단팥빵, 만두, 설탕, 떡{ 구 상표법 시행규칙(1998. 2. 23. 통상산업부령 제83호로 개정되기 전의 것) 제6조 제1항 [별표 1] 상품류 구분 제3류}

(4) Trademark right holder: Plaintiff

(5) The prior registered trademark falls under Article 73 (1) 3 of the Trademark Act and a trial decision revoking the trademark registration becomes final and conclusive on June 2, 2005, but the registered trademark was based on the earlier application at the time of filing an application for trademark registration of the instant registered trademark.

C. Reasons for the trial decision

(1) On March 18, 2005, the Plaintiff filed for a registration invalidation trial on the ground that the instant registered trademark was registered in violation of Article 7(1)4, 6, 7, and 9 through 12 of the Trademark Act in relation to the trademark 3 subject to comparison.

(2) On October 27, 2005, the Korean Intellectual Property Tribunal deliberated on it as No. 2005Da565, and decided on October 27, 2005, considering the domestic distribution level of Japanese language, etc., the instant registered trademark does not correspond to Article 7(1)4, 7, 9, 10, and 11 of the Trademark Act, which is premised on similarity between the comparable trademark 3 and its appearance, since it does not correspond to Article 7(1)4, 7, 9, 10, and 11 of the Trademark Act, and it does not constitute Article 7(1)6 and 10 of the Trademark Act, since there is no evidence to support that the comparable trademark 3 acquired domestically well-knownness, and there is no evidence to support that the Plaintiff used the instant registered trademark with unlawful purposes. In addition, the instant registered trademark was dismissed by the Plaintiff on the ground that it does not fall under Article 7(1)12

[Evidence] Gap evidence Nos. 1, 2, 3, 21, Gap evidence No. 5-1, the purport of the whole pleadings

2. Determination on the legitimacy of the instant trial decision

A. Summary of the grounds for revoking the trial decision of the plaintiff's assertion

(1) The instant registered trademark constitutes Article 7(1)12 of the Trademark Act in relation to the relationship between the trademark 1 and 2 subject to comparison.

(2) The instant registered trademark is identical to the comparable trademark 3, but its appearance and concept are different from the comparable trademark 3, and thus, its designated goods are similar to the designated goods. As such, the instant registered trademark constitutes Article 7(1)7 of the Trademark Act, similar to the comparable trademark 3.

(3) The registered trademark of this case is a imitated trademark with the reputation and credit, which is recognized as a trademark of a specific person by general consumers at home and abroad, and is likely to impair the sound order and good order of commercial transactions and disrupt public order and good morals, and thus constitutes Article 7(1)4 of the Trademark Act.

(4) The instant registered trademark, which is recognized as the trademark of a specific person by ordinary consumers, borrowed the comparable trademark 3, which is recognized as the trademark of a specific person, as it is, and thus, causes mistake or confusion among ordinary consumers as to the origin or quality of the goods when used as the designated goods. Thus, Article 7(1)11 of the Trademark Act is applicable

(b) Markets:

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

(A) Criteria for determining Article 7(1)12 of the Trademark Act

Article 7(1)12 of the Trademark Act provides that trademark registration shall not be granted for "a trademark which is identical or similar to a trademark (excluding a geographical indication) which is recognized as indicating the goods of a specific person by domestic or foreign users for unjust purposes, such as obtaining unjust profits or inflicting losses on the particular person." The above provision is a provision newly established under the Trademark Act as amended by Act No. 535 of August 22, 1997, which clearly recognizes as a trademark of a specific person between the domestic or foreign users, in line with the legislative trends of enhancing the international protection of the well-known and well-known trademark, and is to be determined to the extent that the trademark is not registered domestically, to the extent that it causes damage to the intangible value of the trademark, such as business credibility or customer insufficient human resources, etc., incorporated into the well-known trademark by a third party after its registration or its use, or whether it constitutes an economic relation between the third party and the designated goods of the same or similar trademark, and to the extent that it is obviously identical or similar to the trademark to obtain unjust profits.

(B) Facts of recognition

1) The Plaintiff was a company established in 1959, which had been established in 1959, and from around 1912 to around 1912, the Plaintiff produced and sold juices with the name of juju (i.e., h., the h., the h., the h., the h., the h., the h., the h., the h., the h., the h., the h., the h., the h., the h., the h., the h., the h., the h., the h., the h., the h., the h., the h., the h., the h., the h., the h., the h., the h., the h., the h., the h., the h., the h., the h., the h., the h.

2) On August 1, 1958, the comparative trademark 1, which is the Japanese language “Sari”, was used as a juju, etc. of the name “Iri” after the Japanese trademark registration number No. 524914, which was registered as the Japanese trademark registration number No. 524.

3) In 1986, the Korean Intellectual Property Office recognized the well-knownness of the comparable trademark 1 and allowed the registration of five protective marks as the basic trademark, and both the protective marks were renewed in 1996. In addition, the comparable trademark 1 is a trademark that is searched from the Japanese Intellectual Property Office website through the "U.S. well-known and well-known trademark search".

4) Since the late 1950s, the Plaintiff continuously advertised and advertised juice of the name called Macoco through radio, television, and various newspapers and magazines. As a result, in 1986, the comparative trademark 1 was widely known across the nation among the Japanese consumers as being used in relation to the juice, etc. of the name called jum, which is the representative name (name) of Japan.

5) Meanwhile, the Defendant was a company established in the Republic of Korea in 1986, and there was no sign of negotiation between the Plaintiff and the Plaintiff with respect to the use of the trademark, the manufacture of the products, and the sales contract, or the conclusion of such a contract with respect to the fruits, which are the comparable trademarks and their designated goods. However, on September 11, 2002, the Defendant filed an application for the trademark of this case on September 11, 2002 and filed an application for the trademark (application number No. 2002-47807) containing HYOKO on the comparative trademark 1, which included the comparable trademark 1, as well as the trademark (application number No. 2002-47807) and the trademark 1 of the comparable trademark, whose name is referred between the Japanese consumers, for the purpose of "the Ordinance of the Ministry of Strategy and Finance" (application number 203-1424, 14245, 14246).

6) After filing the instant registered trademark, the Defendant manufactured juice with the name of the juice manufactured and sold by the Plaintiff Company and its shape and material similar to that of the juice, and sold juice with the color and shape of the Plaintiff Company’s juice in very similar manner.

7) 피고 회사의 홈페이지의 뉴스란에는 2004. 2. 14.자로 “일본제과사 기술제휴...차세대 브랜드 ‘히요꼬’ 출시”라는 제목으로 등록된 게시물에는 “지난해 20여 억 원을 투자해 식품업계에서 까다롭기로 유명한 일본 유명 제과회사와 전략적 기술제휴를 맺고 올 3월부터 본격적인 생산에 비지땀을 흘리고 있다. 피고의 차세대 브랜드인 ‘히요꼬’가 그것”이라는 내용의 기사가 게시되어 있고, 또한 제품소개란에서는 제품명 ‘귀여운 병아리 모양’에 대하여 “90년의 역사를 자랑하는 일본 동경 ひよこ의 기술전수(히요고 제품은 1964년 선보임) 현재 KTX(고속전철)와 면세점, 파리바게뜨(엄마의 선물로 출시), 휴게소에서 절찬리에 판매되고 있습니다. 1964년 이래로 후쿠오카 명물로 자리잡은 전통만쥬 히요꼬를 한국적 취향으로!. 일본 에도시대의 무케만쥬와 야케만쥬의 전통과 맥을 이어온 일본 최고의 품격높은 만쥬 히요꼬! 이제 피고의 ‘귀여운 병아리 모양 만쥬’로 맛보세오”라는 설명이 기재되어 있다. 그리고 피고 회사가 발행한 2003년 추석 선물세트, 2004년 다과 선물세트 및 한가위 선물세트에 관한 각 카탈로그에는 히요꼬라는 이름으로 된 만쥬에 관한 다양한 선물세트가 게재되어 있다.

[Evidence] Evidence Nos. 4, 5, 6, 10 through 17, 22 through 29 (including the pertinent numbers), the purport of the whole pleadings

(C) the board:

1) According to the above facts, the comparative trademark 1 is a well-known trademark already known among the general consumers in Japan around September 11, 2002, which is the date of application of the instant registered trademark (the well-known and well-known trademark 2 is not examined further with respect to the well-known and well-known trademark 2).

2) The instant registered trademark is a text trademark that combines “HYOKO”, a part of which is the part of “the Do governor of the Republic of Korea,” which refers to the comparable trademark 1 in Japan, with the word “the Do governor of the Republic of Korea,” which is the part of “the Do governor of the Republic of Korea,” which is the part of “the Do governor of the Republic of Korea,” which refers to the comparable trademark 1 in Korean. In light of the level of Japanese language distribution in Korea, it is a trademark composed of very rare Japanese language in Korea, and it cannot be said that the trademark in this case does not create any special concept such as pathia, and it does not have any specific characteristics to the extent that it is appropriate to perform its functions as a trademark between general consumers in Korea and general consumers

3) Furthermore, the designated goods of the designated goods of the trademark of this case 1 are similar to the product shape and materials and marks thereof, and the Plaintiff overlaps with its main consumers. The Plaintiff sells the designated goods of the trademark of this case while making false advertisements with the Defendant, a trademark user of the comparative trademark 1, which are products produced under technical alliance with the Defendant. A majority of the trademarks of this case including the registered trademark of this case, including the registered trademark of this case, are applied for the trademark of this case, or the Plaintiff’s website or Kavirogs are expressed in full intent to use the registered trademark of this case, which is called “hick” as a hub, through advertising juice of the name of the Plaintiff company’s website or Kavigs. In full view of all the circumstances, the Defendant uses the registered trademark of this case to obtain unfair profits by copying the comparative trademark 1 of a foreign famous trademark of this case, or to dilution the value of the comparative trademark of this case as trademark 1, thereby causing damage to the Plaintiff, which is the trademark owner.

4) As to this, the Defendant asserts that the registered trademark of this case is different from the comparable trademark 1 and its appearance, and the general consumers in Korea cannot name the comparable trademark 1 as “contest” and the concept is difficult to see, and thus, the registered trademark of this case does not fall under Article 7(1)12 of the Trademark Act.

As seen earlier, this case’s registered trademark is a trademark indicated simply in Korean or English language as a general title between Japanese consumers with respect to well-known and well-known trademarks 1 in Japan. It is also a trademark borrowed from an English person used for the comparative trademark 2 registered in Japan along with the comparative trademark 1. Article 7(1)12 of the Trademark Act provides that the well-known and well-known trademarks shall be determined on the basis of foreign consumers, unlike Articles 7(1)9 and 10 of the Trademark Act, and does not stipulate the mistake or confusion of the source of goods. The legislative purport of Article 7(1)12 of the Trademark Act is to ensure that the right holder of a well-known and well-known trademark in a foreign country can use the trademark as a mark distinguishing the trademark from other goods in the Republic of Korea, and thus, it is not reasonable to see that the trademark is identical or well-known with the trademark indicated in Japan’s general trademark without any reasonable ground to see that the trademark is identical or well-known to other domestic consumers as a result of the comparison of the trademark.

(c) Conclusion

The registered trademark of this case falls under Article 7 (1) 12 of the Trademark Act and the registration of this case must be invalidated without considering the remaining points claimed by the plaintiff. The decision of this case, which concluded otherwise, should be revoked in an unlawful manner.

3. Conclusion

If so, the plaintiff's claim is justified.

Judges Hwang Han-sik (Presiding Judge)