In a case where Foreign Company A, a user of the subject trademark “,” claimed that the registered trademark falls under Article 73(1)2 of the former Trademark Act, and filed a petition for a trial to revoke the registration of the registered trademark on the ground that the registered trademark falls under Article 73(1)2 of the former Trademark Act, since Company B used the registered trademark “,” which is a trademark right holder of the registered trademark “,” which is similar to the registered trademark “,” and used the registered trademark “,” and that the Korean Intellectual Property Tribunal rendered a trial decision accepting the registered trademark, the case holding that the said trial decision revoked the registration was lawful, on the grounds that the use of the registered trademark similar to the registered trademark and substantially identical to the subject trademark “, is likely to mislead and confuse the source of the goods if ordinary consumers use the registered trademark as it is in relation to the subject trademark, and that the intention of Company B is recognized,

The subject trademark “A” used the registered trademark “B” against “B” corporation, a trademark right holder of the registered trademark “B,” which used the registered trademark “B” as a real-use trademark similar to the registered trademark, thereby causing misconceptions or confusions with the subject trademark of “B”. As such, the registered trademark falls under Article 73(1)2 of the former Trademark Act (wholly amended by Act No. 1403, Feb. 29, 2016) and filed a petition for a trial to revoke the registration of the registered trademark, and the Korean Intellectual Property Tribunal rendered a trial decision that cited the registered trademark “B”.

The case holding that Eul company's trademark right holder of the registered trademark is legitimate since Eul company's actual use trademark is similar to Eul's registered trademark and its actual use trademark is identical to the designated goods of the registered trademark; products using the trademark are identical to those of the registered trademark; each trademark is identical to those of the registered trademark; each product is identical to slpers and sports paintings; each product is the same as new products; the actual use trademark and the target trademark are identical to those of the registered trademark; the actual use trademark and the target trademark are identical to those of the new products such as slpers and sports paintings; the target trademark are widely known domestically at least in relation to new products at the time of the actual use; the target trademark are presumed to have been intentional in relation to the new products; thus, Eul company's actual use trademark is presumed to have been identical to the registered trademark at least in relation to the designated goods of the registered trademark at the time of the actual use; and Eul company's actual use trademark is more likely to mislead and confuse the source of the registered trademark at least 7.2.

Article 73(1)2 of the former Trademark Act (wholly amended by Act No. 14033, Feb. 29, 2016) (see Article 119(1)1 of the current Trademark Act)

BTNE CO, Ltd. (Law Firm LLC, Attorneys Nohh-eng et al., Counsel for the defendant-appellant)

Esibavia Blud franchise LC (Attorney Park Jong-min, Counsel for the plaintiff-appellant)

November 3, 2020

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 December 24, 2019 on the case No. 2018Da3402 shall be revoked.

1. Basic facts

A. The plaintiff's registered trademark of this case

1) Registration number/application date/registration date/Renewal date: (Registration Number omitted)//registration date: June 23, 1992// July 16, 1993/ July 19, 2013.

2) Composition:

3) Designated goods: Madrymatization, crypization, string, golfing, grheatization, sandboxation, grheatization, cratization, cratization, oral cratization, Hand-fratization, land matching, grheatization, grheatization, brheatization, strawlization, grheat, grheat, strawing, strawing, strawing, strawing, skid, new straweting, grating, grating, Taekwondo, gracking, grating, grheating, grating, grheating

B. The plaintiff's actual use trademark

1) Composition:

(ii) Goods using: Athletics, slots;

C. The defendant's target trademark

1) Composition:

(ii) Goods using: Dried goods, such as clothing, fashion paintings, physical paintings, slots, sandboxes, etc.

(d) Details of the trial decision;

1) On October 23, 2018, the Defendant asserted against the Plaintiff that the Plaintiff’s instant registered trademark falls under Article 73(1)2 of the former Trademark Act (wholly amended by Act No. 14033, Feb. 29, 2016; hereinafter the same) and filed a petition for trial to revoke the registration of the instant registered trademark.

2) On December 24, 2019, the Korean Intellectual Property Tribunal rendered a trial ruling accepting the above request for a trial (hereinafter “instant trial ruling”) on the ground that “the Plaintiff, as a trademark holder of the instant registered trademark, intentionally, uses the trademark in actual use similar to the instant registered trademark on “slfers and sand”, which is the designated goods of the instant registered trademark, causes mistake or confusion with the goods of the Defendant’s subject trademark, and thus, the instant registered trademark constitutes Article 73(1)2 of the former Trademark Act.”

[Ground of recognition] Unsatisfy, Gap evidence Nos. 1 and 2, the purport of the whole pleadings

2. The parties' assertion

A. Summary of the plaintiff's assertion

1) The instant registered trademark does not have any grounds for revocation under Article 73(1)2 of the former Trademark Act for the following reasons.

A) The trademark actually used constitutes a trademark identical to the registered trademark of this case, since only the colors of the registered trademark of this case were modified.

B) The use of the trademark in actual use is limited to the Plaintiff’s arbitrary use by the outsourcing company, not the Plaintiff.

C) Even if the use of the Plaintiff’s trademark is recognized as the Plaintiff’s actual use, the Plaintiff, after becoming aware of the Plaintiff’s voluntary use of the trademark, was immediately subject to the suspension and collection measures, and the Plaintiff cannot be found to have had the intent to unlawfully use the trademark since the period of use is very short.

2) Furthermore, the Plaintiff fulfilled its duty of due care to use the trademark by ○○○○○○, a non-exclusive licensee of the instant registered trademark. Thus, there is no ground for revocation under Article 73(1)8 of the former Trademark Act in the instant registered trademark.

3) Nevertheless, the instant trial decision has different conclusions, and thus the said decision should be revoked in an unlawful manner.

B. Summary of the defendant's assertion

1) In the first place, the Plaintiff used the registered trademark of this case intentionally to mislead or confuse the subject trademark and sources within the scope of its identity in a manner of changing the trademark in a manner similar to the subject trademark, and thus, the registration of the trademark of this case should be revoked in accordance with Article 73(1)2 of the former Trademark Act.

2) Preliminaryly, even if the Plaintiff was not the owner of the trademark right but the licensee, the instant registered trademark should be revoked in accordance with Article 73(1) Subparagraph 8 of the former Trademark Act due to the Plaintiff’s fraudulent use of the instant registered trademark by the trademark licensee and the Plaintiff’s breach of the Plaintiff’s duty of care.

3) Therefore, the instant trial decision, which concluded as above, is lawful.

3. Whether the trial decision of this case is unlawful

A. Relevant legal principles

Article 73(1)2 of the former Trademark Act provides that a trademark right holder may revoke trademark registration in cases where the trademark right holder intentionally uses a trademark similar to the registered trademark on the designated goods, or uses the registered trademark on goods similar to the designated goods and causes mistake to consumers as to the quality of goods or confusion with goods related to another person’s business, in violation of the original purpose of the trademark system, by regulating that he/she does not use his/her registered trademark in excess of the scope of his/her right to use in violation of the original purpose of the trademark system. The purpose of Article 73(1)3 of the former Trademark Act is to promote the safety of transaction of goods by regulating that he/she does not unlawfully use the registered trademark beyond the scope of his/her right to use, and to prevent acts taking advantage of the credibility or reputation of another person’s trademark, thereby protecting not only the interests of the parties and consumers, but also the business reputation and rights and interests of the users of another trademark. On the other hand, the purpose of Article 73(1)3 of the former Trademark Act is to promote the use of the registered trademark and sanction against the non-use of the trademark.

In other words, if the actual use of a trademark is modified so that it can be seen as identical or similar to another person's subject trademark, and if the use of the trademark is more likely to mislead or confuse consumers into the source of goods than the case where the registered trademark is used as it is in relation to the subject trademark, it shall be deemed that the use of the trademark in actual use can be seen as the use of a trademark similar to the registered trademark, and in such case, it is not necessary that the subject trademark is widely known and well-known (see Supreme Court Decision 2012Hu1521, Dec. 26, 2013, etc.).

B. Determination

1) Whether an owner of a trademark right uses the trademark actually used

A) In light of the following facts or circumstances, where there is no dispute between the parties, or where it is recognized by comprehensively taking into account the respective descriptions and images of Gap’s evidence Nos. 3 through 6, Eul’s evidence Nos. 1, 7, and 9 through 11 (including numbers; hereinafter the same shall apply) and the overall purport of pleadings, it may be recognized that the plaintiff, a trademark right holder, produces products such as the plaintiff’s slots, slive paintings, etc. attached with the trademark of actual use through the plaintiff’s “○○○○” and Chinese subordinate enterprises, and that they used the trademark of actual use by selling them on-line markets.

① Around August 2017, the Plaintiff entered into an agreement on the planning, manufacture, and online distribution of the Plaintiff’s goods (hereinafter “instant agreement”) with an individual company (representative Nonparty) with the trade name “○○○○○○○○○” (hereinafter “instant agreement”). Around August 3, 2017, the Plaintiff agreed to determine the details of the agreement as indicated in the written proposal (Evidence A 3; hereinafter “instant proposal”) submitted by the Nonparty to the Plaintiff on August 3, 2017. The main contents of the agreement, including the division of duties and the payment of personnel expenses, as indicated in the instant proposal, are as follows.

A person shall be appointed.

A person shall be appointed.

② According to the agreement of this case, ○○○○○ refers to the planning of the Plaintiff’s goods, production planning and management in China, taking pictures for online sales, and sales management for online sales. The Plaintiff performed the duties of management, such as customer services and door-to-door sales, and the Plaintiff paid performance rates at a certain ratio compared to the sales amount at the time of achieving fixed personnel expenses and target sales in return for performing the pertinent duties (in the case of payment of personnel expenses, etc., it appears that the pertinent proposal is written as two pages (i.e., evidence 3, 10 pages). However, in light of the content of each electronic tax invoice issued in accordance with the agreement of this case (see paragraph (4) below), it appears that the final agreement is reached in accordance with paragraph (2) among two items described in the relevant proposal of this case.)

③ Pursuant to the instant agreement, ○○○○○ requested a Chinese company located in China (hereinafter “China lower companies”) to produce products, such as slots and diversization, and the Plaintiff opened a letter of credit for Chinese lower companies. Around February 2018, some of the products produced by Chinese lower companies were imported into the Republic of Korea and sold in the name of the Plaintiff in the Republic of Korea.

④ Meanwhile, according to the instant agreement, the amount of KRW 21,50,000 for personnel expenses of ○○○○○○○○ (excluding taxes; hereinafter the same shall apply) on September 2017, 201, as KRW 21,50,00 (see each electronic tax invoice of KRW 1,200 for evidence No. 4), KRW 21,50,000 for October 2, 2017 (see each electronic tax invoice of the evidence No. 3), KRW 21,50,000 for portion 21,50,000 for portion 21,50,000 for each of the electronic tax invoices issued on December 21, 2017 (see each of the evidence No. 5 electronic tax invoices), KRW 3,500 for portion 3,50,00 for each of the electronic tax invoices issued on January 33, 2018 (see each subparagraph 3, 2008).

⑤ On the sales page of the pertinent product in the NVber Stop, the Plaintiff’s note 1) was marked in the upper end, and the “manufacturer” column of the “Public Notice on the Provision of Goods Information” indicated the Plaintiff’s previous trade name in the “manufacturer” column, and the Plaintiff’s previous trade name in the “Exchange/Return guidance” column respectively, and indicated the Plaintiff’s trade name, name of representative, business registration number, location of business registration number, representative telephone, e-mail, etc. in the “seller’s information” column respectively.

B) As to this, the Plaintiff did not actually participate in the online sales business of the instant agreement, unlike the written division of business affairs related to the instant proposal, and the Plaintiff agreed to carry out the business under the responsibility of ○○○○○○○○○○○○○○ throughout the entire business process. As such, the Plaintiff asserts that the use of the trademark in actual use was only based on the independent business operation of ○○○○○○○○, which was permitted by the Plaintiff to use the trademark from the Plaintiff, and that it cannot be viewed as the use of the Plaintiff’s trademark

According to the evidence evidence Nos. 4 through 7, the Plaintiff revised the value of supply of each electronic tax invoice on June 30, 2018 on the grounds that the contract cancellation was amended to zero won. The Plaintiff filed a damages lawsuit against the Nonparty, etc. on March 27, 2019, against the representative of ○○○○○○○○○, etc., for which it is impossible to verify the detailed grounds for the claim. The Nonparty, etc. filed a counterclaim against the Plaintiff, for which it is impossible to confirm the grounds for the claim, and the Nonparty, etc. filed a lawsuit against the Nonparty, etc., for which it is impossible to confirm the detailed grounds for the claim, the “Seeeegeeeeeeeng-gu Import Export Limited,” the “Seng-do Import Export Limited,” the “Corporation” which is seen as Chinese subcontractor’s subcontractor, may also be acknowledged as having no grounds for claim against the Plaintiff on September 10, 2019, and the “Goods” on the date of sale.

However, based on the above facts, there was a dispute between the Plaintiff and ○○○○○○○○○○○○○○○○○○○○○, which was produced by Chinese lower companies pursuant to the instant agreement, on or after February 2018, on the grounds that the dispute was not known between the Plaintiff and ○○○○○○○○○○○○, and then filed a civil lawsuit against the Plaintiff in the form of an objection and counterclaim against each other. China’s lower companies filed a damages lawsuit against the Plaintiff on the grounds that it is not known, and the sales of the Plaintiff’s products in the NAVE were only known of the circumstances where the sales of the Plaintiff’s products in the NAVE were suspended on the date due to the fact that the Plaintiff’s assertion, namely, it cannot be deemed that the Plaintiff did not actually participate in the online sales of the instant agreement, or that ○○○○○○○○○○○ agreed to undertake the business through the entire business process, and that the Plaintiff did not appear to have sold the Plaintiff’s products in the online market.

Therefore, the plaintiff's above assertion is without merit.

2) Whether the trademarks of this case and the trademarks of this case are identical or similar to the trademarks of this case

A) Whether both marks are similar

① The trademark in actual use is a combination of diagrams and colors consisting of “” and the trademark in this case is composed of “”, and there is a difference between the trademark in actual use and the trademark in actual use, and there is a difference between the two shapes, and whether the inner space inside the left side of the composition is red, and there is no specific concept or name derived from the composition of each of the above marks, and as a whole, the trademark in actual use and the trademark in this case are similar.

② As to this, the Plaintiff argues to the effect that the registered trademark of this case is not similar to the registered trademark of this case, and that the registered trademark of this case is not similar to the registered trademark of this case, and that the registered trademark of this case is not identical to the registered trademark of this case, and that the registered trademark of this case cannot be seen as a trademark of this case, which is identical to the registered trademark of this case, under the purport of the new provision of Article 91-2 Section 3 of the amended Trademark Act of 1995 (wholly amended by Act No. 5083, Dec. 29, 1995; hereinafter “195 amended Trademark Act”). The above provision applies to the registered trademark of this case which is applied before its establishment, and if colors are the same as those of the registered trademark of this case, the trademark of this case is not similar to the registered trademark of this case, and therefore, it can be supported by the reason that it cannot be seen as a trademark of this case.

In light of the above legal principles, the identity of the actually used trademark “” and the subject trademark “” is identical to each other to the extent that the composition of the trademark of this case was not separated, and the identity of the actually used trademark and the subject trademark was generated by changing the composition of the trademark of this case to be red in an empty space inside the left-hand side of the registered trademark of this case, and in light of the above legal principles, the actual used trademark of this case was modified to be seen as identical or similar to the subject trademark of this case, and thus, it is more likely for consumers to misunderstand or confuse the source of goods than the case where the trademark of this case is used as it is in relation to the subject trademark of this case. Thus, in a trademark cancellation trial on the grounds of an unlawful use as provided by Article 73(1)2 of the former Trademark Act, it can be deemed that the use of the actually used trademark “” is used as a similar trademark beyond the scope of identity of the registered trademark “ of this case.

Furthermore, with respect to the application of the provisions of Article 91-2 of the amended Trademark Act in 1995, there is no ground to regard the provision as applying the similarity of marks in cases where some colors change from the registered trademark of this case which was applied or registered before the establishment of the pertinent provision and resulting in mistake or confusion with the subject trademark.

Therefore, the plaintiff's above assertion does not appear to have any mother or reason.

B) Whether both goods are identical or similar

Goods using trademarks in actual use (sportss, slots, etc.) are the same as the designated goods of the instant registered trademark (Evidence Nos. 1 and 2).

3) Whether there is concern of mistake or confusion between the trademark in actual use and the subject trademark

According to the following actual-use trademarks and the identity of each mark and goods of the subject trademark, the degree of recognition of the subject trademark, the actual-use trademark and the mode of actual use of the subject trademark, etc., which can be seen by comprehensively taking into account the respective descriptions and images of evidence Nos. 1, 4, 5, 7, and 11, it is reasonable to view that there exists objective concern that the use of the subject trademark might cause mistake or confusion between the goods of the subject trademark and the goods of the subject trademark.

(A) the identity of each mark and goods of the trademark in actual use and the subject trademark;

As seen earlier, the fact that each mark of the trademark in actual use and the subject trademark is identical to that of the subject trademark to the extent that it is impossible to distinguish them from each other, and that each of the trademarks in actual use and the goods of the subject trademark are identical to the new type of goods, such as slots and sports paintings.

B) The known extent of the subject trademark

According to the following facts or circumstances, it is reasonable to view that the subject trademark is a trademark obtained at least a well-knownness in Korea with respect to the goods of new products at the time of using the trademark in actual use.

① The pertinent trademark “” (hereinafter “Defendant-related trademark”) containing the subject trademark “ “” and its marks as a part of its entire composition, has been used in both the end of 1965 in the United States, in 1986, in 192, in the 1992, and has been continuously used until now since its first use in the 1992, and in more than 30 currently, in countries where 300 or more subsidiaries are in charge of trademark management as the complete subsidiaries of the Hague business franchise (Hbrec. ; hereinafter “Hz.”), the Defendant, heads heading dubre Eurited, and in the Europe Libred, three representative subsidiaries, such as the Defendant, the heading dubre Eurited, and the heading Round Roster Roren Ssle Rosle Rosle (hereinafter “Hz.”).

② As of 2018, the Hague has 11 U.S. dollars, 166 Europe, 6 Korea, 26 Japan and 11 China.

③ Sales of goods bearing the subject trademark and the Defendant-related trademark “” in 2017 are USD 3.2 billion (Korean Won KRW 3.60 billion). The promotional expenses paid by the Hague to goods bearing the subject trademark and the Defendant-related trademark “” for the last six years exceeds USD 50 million (Korean Won KRW 56.0 billion).

④ Meanwhile, on the other hand, the online sales page of the Plaintiff’s goods, marked with the trademark “ “”, was removed from the position where the Plaintiff’s online sales page for the sale of the Plaintiff’s goods is “patched.” and “patched with the delivery of “( Strategy)” and “patched with the post where the Plaintiff’s goods are well-known.” In light of the content of the Plaintiff’s “patch” and “patch with the Plaintiff’s new goods”, the Plaintiff seems to have already been aware of the origin and consumer of the goods at the time of sale of the goods, in addition to the content of the “patch with the Plaintiff’s question whether the goods are “patched” and “patch with the Plaintiff’s goods.”

C) the actual usage of the trademark in actual use and the subject trademark;

① The Plaintiff used the trademark in the same pattern as “” (No. 1), and the Defendant used the subject trademark in the same pattern as “” (No. 2), and the product type and shape of each sloter in which the subject trademark is actually used and the subject trademark are very smoking.

② The Plaintiff, mainly with the mark “,” affixed the trademark in actual use on the new product, or advertised the trademark on the Plaintiff’s online sales page or website (Evidence 7); and the above mark constitutes a mark similar to the Defendant, which is one of the Defendant’s parent company’s representative trademarks, like the Defendant’s parent company’s trademark.

4) Whether the act was committed unlawfully

A) As long as a trademark owner uses a trademark identical or similar to a trademark subject to trademark while being aware of the existence of the trademark subject to trademark that may cause mistake or confusion, the trademark owner has the intention of unlawful use of the trademark. In particular, if the trademark subject to trademark is well-known or well-known, barring special circumstances, such as the trademark owner's failure to recognize the existence of the trademark subject to trademark or its product (see Supreme Court Decision 2003Da54315, Nov. 12, 2004, etc.). As seen earlier, the defendant's trademark subject to trademark is recognized as being widely known domestically in relation to the new product at the time of using the trademark subject to actual use, and thus the plaintiff's intention for unlawful use is presumed.

B) On this issue, the Plaintiff asserts to the effect that, regardless of the Plaintiff’s intention, the trademark in actual use was used by an external company voluntarily brought in without undergoing an examination by the Plaintiff, and was used only for a certain product for several months, and that, as soon as the Plaintiff became aware of the use of the trademark in actual use, the Plaintiff’s use was suspended, and all of the pertinent products were recovered and discarded. ② The Plaintiff used the registered trademark in this case for a more than 20 years, and used the registered trademark in sports, etc. for sports, etc., to the registered trademark in this case to a certain extent, the Plaintiff’s intent for unlawful use of the trademark cannot be recognized.

As seen earlier, the Plaintiff, a trademark right holder, produced goods, such as the Plaintiff’s sloter, sports paintings, etc., with the Plaintiff’s trademark attached through the Plaintiff’s “○○○○○” and China’s subordinate companies, and sold them online markets, the circumstance that the period of trademark illegality is only several months may not affect the Plaintiff’s recognition of intent to use the Plaintiff’s trademark. Moreover, each of the descriptions of the evidence Nos. 4 and 7, it is insufficient to find that the Plaintiff used the trademark in actual use without the Plaintiff’s own examination and examination, regardless of the Plaintiff’s intent, or that the Plaintiff recovered and destroyed all of the relevant goods while suspending the use of the trademark in actual use without the Plaintiff’s consent. Furthermore, there is no evidence to acknowledge otherwise. Furthermore, there is no specific evidence to acknowledge that the Plaintiff’s registered trademark in this case constituted the Plaintiff’s trust among domestic consumers. Even if the Plaintiff’s trust, as alleged in the Plaintiff’s registered trademark in this case, the Plaintiff’s trademark right holder could not be presumed to have been altered solely on the ground that the Plaintiff’s trademark in this case.

Therefore, the plaintiff's above assertion is without merit.

(v) arranging the results of the review;

The Plaintiff, a trademark right holder of the instant registered trademark, uses the trademark similar to the instant registered trademark and substantially identical to the subject trademark, which is included in the designated goods of the instant registered trademark, so that ordinary consumers might mislead or confuse the source of goods, rather than when they use the instant registered trademark in relation to the subject trademark as it is, and thus, the Plaintiff’s intention is recognized. Thus, the instant registered trademark constitutes Article 73(1)2 of the former Trademark Act.

C. Sub-decision

Ultimately, the registered trademark of this case should be revoked as it falls under Article 73(1)2 of the former Trademark Act without examining the remaining arguments of the parties. The decision of this case, which concluded the above, is lawful.

4. Conclusion

Therefore, the plaintiff's claim seeking the revocation of the trial decision of this case is dismissed as it is without merit, and it is so decided as per Disposition.

Judges Lee Jong-young (Presiding Judge)

1) contain no dispute.

Note 2) Plaintiff’s reference to the 2, 3 pages of the preparatory brief dated September 18, 2020.

3) References to Article 91-2(2) of the amended Trademark Act (see Articles 66(1) and 73(1)2 of the same Act, “trademark similar to the registered trademark” does not include trademarks similar to the registered trademark and deemed identical to the registered trademark if their colors are the same as those of the registered trademark) (see Article 73(1)2 of the same Act, “Article 73(1) of the same Act” is the same as the contents under Article 73(1)2 of the former Trademark Act).

Note 4) See the description "to the extent known to the subject trademark".