[1] Whether an act of using a service mark under the Trademark Act is an act of providing a service for price or an act incidental thereto (affirmative)

[2] In a case where Gap filed a claim for the revocation of registration of service mark "(Color trademark)" against Eul, the case holding that the registration should be revoked pursuant to Article 73 (1) 3 of the Trademark Act on the ground that, in a case where Eul et al. provided the service without compensation, the use of the above service mark does not constitute the use of the service mark under the Trademark Act, on the ground that anyone such as the holder of the service mark right, etc. does not prove that he et al. used the designated service properly within three years before the date of the request for the revocation trial on the designated service,

[1] Article 2(1)2 of the Trademark Act provides that "service mark" refers to a mark used by a person who runs a service business to distinguish his/her service business from that of another person. Since the definition of "service business" that can be registered and used, it is inevitable to systematically review the relevant provisions of the Trademark Act, and determine the meaning of "service business". Article 2(1)5 of the Trademark Act provides for a business emblem as a mark used by a person who runs a non-profit business in order to indicate his/her service. If a service mark cannot be used for profit-making business, it is reasonable to interpret that the above business emblem separate from the service mark under Article 2(1)2 of the Trademark Act, even if there is no need to separately define the business emblem, it is reasonable to interpret that the service mark merely marks for profit-making business and not for profit-making business is not expressed, and therefore, it is reasonable to deem that the service mark is an act of providing another person with a service mark registered and used for profit-making business under the Trademark Act.

[2] In a case where Gap filed a claim against Eul who is a non-profit corporation for the cancellation of registration of service mark "(Color trademark)" against Eul, the case holding that the registration of a designated service business related to a request for adjudication should be revoked in accordance with Article 73 (1) 3 of the Trademark Act on the ground that, in light of the fact that the cultural organization, etc., claiming as a non-profit corporation or non-exclusive licensee, did not receive compensation for the service while using the above service mark, such use does not constitute the use of the service mark under the Trademark Act, separate from the use as a business emblem, on the ground that it does not constitute a use of the service mark under the Trademark Act.

[1] Articles 2(1)2 and 2(1)5 and 73(1)3 of the Trademark Act / [2] Article 73(1)3 of the Trademark Act

Plaintiff (Patent Attorney in charge, Patent Attorney Yoon-ho et al., Counsel for the plaintiff-appellant)

Open AC (Patent Attorney Park Chang-nam, Counsel for the plaintiff-appellant)

July 19, 2012

1. The decision made by the Intellectual Property Tribunal on February 23, 2012 on the case No. 166 is revoked.

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

The same shall apply to the order.

1. Basic facts

A. Service mark of this case

1) Date of application/registration date/registration number: July 26, 2005/ September 27, 2006/ (registration number omitted)

(b) Composition: (Colored Trademark)

3) Designated services: Attached Form 1.

4) Service mark right holder: Defendant

B. Details of the instant trial decision

1) On January 27, 2011, the Plaintiff filed a petition for revocation trial on the registration of a service mark against the Defendant, asserting that the instant service mark should be revoked by Article 73(1)3 of the Trademark Act, on the grounds that no justifiable use of the service mark was made within three years before the filing date of the petition for adjudication, even any person among the right holder of the service mark, exclusive licensee, and non-exclusive licensee, and that the designated service business related to the petition for adjudication ought to be duly used.

2) After the Intellectual Property Trial and Appeal Board examined the above case of appeal No. 2011 as No. 166, on February 23, 2012, the Defendant rendered the instant trial ruling dismissing the Plaintiff’s appeal on the ground that the Defendant had used the instant service mark in the Republic of Korea within three years before the date of the request for trial on “the preparation and proceeding of meetings, the exhibition arrangement and vocational guidance for cultural and educational purposes,” among its designated services.

[Reasons for Recognition] Unsatisfy, Gap evidence Nos. 1 and 2, the purport of the whole pleadings

2. Determination as to the propriety of the instant trial decision

A. Summary of the parties' assertion

1) The plaintiff's assertion

A) Service business under the Trademark Act refers to a business providing services that are the object of commercial transactions independently for the benefit of others and receiving the price therefor.

B) However, since the Seoul WCO Open Center established by the Defendant (hereinafter “WCO Open Center”) only provided a meeting place for others, and did not prepare and proceed with meetings for others or receive compensation therefor, it cannot be deemed that the Defendant used the instant service mark for the designated service business for the “meeting preparation and proceeding business.”

C) Since the WCO Open Center only displayed books or advertisements on its own, but did not organize exhibitions for others or receive the price therefor, it cannot be deemed that the Defendant used the instant service mark for “cultural and educational purpose exhibitions”, which is a designated service business.

D) Since the WT Open Center only provided educational places to others, and did not provide education guidance for others or receive fees from them, it cannot be deemed that the Defendant used the instant service mark for the “education guidance business”, which is a designated service business. The education conducted at the WCO Open Center is merely an education for cultural organizations or cultural people using the service mark, and it does not provide education by using the instant service mark. Thus, it cannot be deemed that cultural organizations or cultural people providing educational programs at the WCO Open Center as non-exclusive licensee of the instant service mark.

E) The Defendant’s act of holding and publicizing meetings in the Republic of Korea for the UNFCCC Northern Games held by himself is merely an act that enables the smooth holding of its meetings rather than for others, and thus, cannot be deemed as a business of providing services for others’ interest and receiving fees therefor. Thus, the Defendant’s above act cannot be deemed as a case where the service mark of this case is used for designated service business.

F) Therefore, although the service mark of this case falls under Article 73(1)3 of the Trademark Act and its registration should be revoked as to the designated service business as shown in attached Table 2, the decision of this case is unfair in conclusion.

2) The defendant's assertion

A) Since January 1, 2004, WCO Open Center is running a business supporting cultural organizations until now. The Defendant attached the instant service mark at the entrance and inside of WCO Open Center, attached the instant service mark to the former part of the advertisement by WCO Open Center, and used the instant service mark in the way of displaying the instant service mark on the Internet “(DAUM) car page,” which introduces activities, etc. at WCO Open Center.

B) The WCO Open Center provided services at the request of cultural organizations, such as the evidence No. 9, to them. Therefore, the Defendant used the instant service mark for the preparation and progress of the conference, which is its designated service business.

C) The WCO Open Center provided services at the request of cultural organizations, such as the evidence No. 10, to those organizations for cultural and educational purposes. As such, the Defendant used the instant service mark for “cultural and educational purpose exhibitions” as its designated service business.

D) The WCO Open Center provided the service of “education guidance” to the trainees selected by the cultural organizations, and used the instant service mark for “education guidance business”, which is its designated service business. In addition, the cultural organizations select a person in charge of education guidance and select trainees, and provide them with education guidance activities for a certain period of time. Such education guidance is conducted within the WCO Open Center with the instant service mark attached, and such education guidance is used in the course of the parking confirmation map marked with the instant service mark and the Internet “the next” teaching guidance. Thus, it should be deemed that the cultural organizations are non-exclusive licensee and use the instant service mark for the “education guidance business”, which is its designated service business.

E) From December 16, 2009 to 18, the Defendant produced and distributed photographs, etc. using the instant service mark in the Republic of Korea to publicize the WT Northern Games held in the north of China, as shown in the evidence Nos. 16 to 20, using the instant service mark, and produced and distributed photographs, slabs, posters, data collection, schedule, material bags, event souvenirs, event souvenirs, etc. In addition, in the UNFCCC Northern Games, the Defendant held a meeting as well as in the event such as calligraphic and implied display, and exemption, and the Defendant’s production and distribution of photographs, etc. using the instant service mark constitutes a case in which the Defendant used the instant designated service mark in preparation and proceeding (related to the relevant designated service business), cultural and educational purpose exhibition (related to the art and vocational guidance), and a case in which the Defendant used the white exemption [related to the art and vocational guidance].

F) Therefore, the instant service mark was properly used in the Republic of Korea within three years before the date of the instant revocation trial as to “the preparation and proceeding of the conference, the exhibition industry, and the educational guidance business for cultural and educational purposes” among its designated services, and thus, the instant trial decision that was consistent with this conclusion is justifiable.

B. Whether the service mark of this case constitutes Article 73(1)3 of the Trademark Act

1) Relevant regulations and legal principles

Article 73(1)3 of the Trademark Act provides that "Where any of the trademark rights holders, exclusive or non-exclusive owners fails to use the registered trademark in the Republic of Korea for at least three consecutive years prior to the filing date of a request for a revocation trial on the designated goods without justifiable grounds," and the main sentence of Article 73(4) provides that where a revocation trial is requested on the ground that it falls under the above provision, the respondent shall not be exempted from the revocation of the trademark registration unless the respondent proves that he/she has properly used the registered trademark in the Republic of Korea within three years prior to the filing date of a request for a revocation trial on the grounds that it falls under the above provision.

Meanwhile, Article 2(1)7 of the Trademark Act provides that the term "use of a trademark" means an act of indicating a trademark, an act of transferring or delivering a trademark on goods or packages of goods, an act of displaying, exporting or importing a trademark for such purpose, or an act of displaying, exporting or importing a trademark on goods, an act of displaying or distributing or distributing a trademark on advertisements, price lists, transaction documents, signboards, or labels. Except as otherwise expressly provided for in Article 2(3) of the Trademark Act, the use of a service mark includes an act of displaying or distributing a service mark on advertisements, price lists, transaction documents, signboards, or labels on the service business, or an act of displaying or distributing a service mark on the goods offered for use by consumers at the time of providing the service, or an act of displaying a service mark on goods offered for use by consumers at the time of providing the service (see Supreme Court Decision 200Hu380, Jul. 28, 2011).

2) Whether the use of a service mark under the Trademark Act is an act incidental to the act of providing a service for consideration or the act of providing a service for consideration

However, considering the following circumstances, it is reasonable to deem that an act of using a service mark under the Trademark Act is an act of providing a service for consideration or an act incidental thereto. (i) Article 2(1)2 of the Trademark Act provides that “service mark” means a mark used by a person who runs a service business to distinguish his/her service business from that of another person; and (ii) the definition of “service business” that can be registered with such a service mark does not have any provision under the Trademark Act, so it is inevitable to systematically examine the relevant provisions of the Trademark Act; and (iii) Article 2(1)5 of the Trademark Act provides a business emblem as an incidental mark used by a person who runs a non-profit business to mark his/her service (see, e.g., the unique system in Korea, which is difficult to find from the legal system of an advanced country). If a service mark cannot be used for profit-making business without consideration, it is difficult to interpret that the service mark is used for non-profit organizations under the Trademark Act for the purpose of offering a service mark as stated in the Trademark Act’s 20-making.

3) Whether the cultural organization, etc. alleged by the defendant or the defendant as non-exclusive licensee can be deemed to have used the instant service mark for its designated service business

In full view of the purport of the argument in Gap evidence No. 6, it is recognized that the defendant is a non-profit organization established under the law of the State of America in the United States of America, and the defendant recognizes at the first day of pleading that the cultural organization, etc. alleged to be a non-exclusive licensee by the defendant or the defendant used the service mark of this case for the designated service business, and that there is no payment from the other party to which the service was provided.

Therefore, even if the defendant or the defendant alleged as non-exclusive licensee used the service mark of this case for the designated service business as alleged by the defendant, since the defendant or the cultural organization used the service mark of this case without compensation, such use can be seen as the use of the service mark as a business emblem. It does not constitute the use of the service mark under the Trademark Act.

(1) In the Reference Documents submitted after the closing of argument, the Defendant asserts that the cultural organization, as non-exclusive licensee, has used the instant service mark in the “educational guidance business” which is the designated service business, on the grounds that: (a) in the course of providing the service, the cultural organization provided its members with the “educational guidance” and received compensation in the form of membership fees; and (b) in the process of providing the service, the above educational guidance service was provided inside the UNFCCC Open Center with the instant service mark attached; and (c) in the course of providing the service, the cultural organization used the instant service mark as non-exclusive licensee. However, the video and contents of the evidence No. 8, such as the photograph, etc. posted in the WCO Open Center’s Internet page, are not clearly known whether the cultural organization provided a public performance practice at the WCO Open Center; and (d) No. 13 of the document No. 13 of the WT, there is no evidence to acknowledge that the content of the service is insufficient to provide it.

Even if cultural organizations provided the WCO Open Center’s “education guidance” service, the use of the WCO Open Center with the instant service mark as an educational space and accordingly, it is only an incidental result of cultural organizations’ choice of the WCO Open Center as an educational space, and it is difficult to view that cultural organizations used the instant service mark to indicate the source of their service. In addition, considering the overall purport of the arguments in the statement in subparagraph 8 of B, the “WCO Open Center Data photograph” on the Internet page of the WCO Open Center’s Open Center’s Internet (WCO Open Center Data) can be acknowledged that the pictures of the cultural organizations using the WCO Open Center were posted under title and the service mark is indicated under the pictures, but it is not reasonable to see that each of the above pictures is an open service mark indicated by the Defendant’s cultural organizations to indicate that there is a copyright on each of the above pictures, etc., and thus, it is not reasonable to see that it is an open service mark indicated by the Defendant’s open service organization as an open service mark.

C. Sub-committee

Thus, the service mark of this case constitutes a case where it is not proved that the service right of this case, exclusive or non-exclusive licensee was properly used in Korea within three years before the date of the request for the cancellation trial on the designated service business of this case ( January 27, 2011). Thus, the service mark of this case cannot be exempted from the cancellation of the service mark registration as to the designated service business of attached Form 2 related to the request for adjudication pursuant to Article 73 (1) 3 of the Trademark Act. Thus, the decision of this case which different conclusion is unfair.

3. Conclusion

Therefore, the Plaintiff’s claim seeking the revocation of the instant trial decision is reasonable, and it is so decided as per Disposition with the assent of all participating Justices.

[Attachment]

Judge Poscop (Presiding Judge) Poscop Posction