[1] The time of extinguishment of trademark right in a case where the meaning of registration for renewal of duration of trademark right and registration for renewal of duration of trademark right becomes final and conclusive

[2] The case affirming the judgment of the court below that the petition for a trial to invalidate the first renewal of the trademark term, which was filed after the second renewal of the trademark term registration, is lawful in light of the legal nature of the trademark term renewal registration system

[3] The case affirming the judgment of the court below that a request for a trial to invalidate the first renewal of the trademark term which was filed after the trademark registration was made 20 years prior to the registration and the renewal of the trademark term was made two times, does not conflict with the good faith principle

[4] The case affirming the judgment of the court below that applied the above proviso to the renewal of trademark duration which was made before the enforcement of the new law in accordance with the transitional provision of the new law, although the proviso of Article 20 (2) of the former Trademark Act, which provides the invalidation of trademark duration renewal registration, was deleted

[5] The standard time to determine whether there is a ground for invalidation under the latter part of Article 9 (1) 11 of the former Trademark Act on the renewal registration of trademark right duration (=the time when the renewal registration is decided)

[1] The renewal of the duration of a trademark right is not a new trademark right by registration, but a trademark, the duration of which expires, shall be extended only by maintaining the identity of the trademark right holder and the designated goods, and if a trial decision invalidating the renewal of duration of a trademark right becomes final and conclusive, the trademark right arising from the registration of establishment shall be deemed to expire when the duration of the trademark right before the renewal expires

[2] The case affirming the judgment of the court below that a request for a trial for invalidation filed for the first renewal of the duration of trademark right after the second renewal of the duration of trademark right was lawful in light of the legal nature of the trademark duration renewal registration system

[3] The case affirming the judgment of the court below that a request for a trial to invalidate the first renewal of the trademark term which was filed after the trademark registration was made 20 years prior to the registration and the renewal of the trademark term had been made two times, does not conflict with the good faith principle

[4] The case affirming the judgment of the court below which held that since the proviso of Article 20 (2) of the former Trademark Act (amended by Act No. 4210 of Jan. 13, 1990) which provides for the invalidation of trademark duration renewal registration is deleted by the amendment of the Act, but the previous provision is applied to a lawsuit against a registered trademark registered by the renewal registration application filed before the new Act enters into force by the new Act, it can be asserted as to whether the trademark duration renewal filed before the new Act enters into force by applying the above proviso

[5] Whether a registered trademark is likely to mislead or confuse consumers as to the origin of goods under the latter part of Article 9(1)11 of the former Trademark Act (amended by Act No. 4210 of Jan. 13, 190), shall be determined on the basis of the time when the registration of the registered trademark is decided. The purport of denying the renewal of the term of a trademark falling under the latter part of Article 9(1)11 of the former Trademark Act in Article 20(2)1 of the same Act is to deny the renewal of the term of a trademark under the latter part of Article 9(1)11 of the same Act, even if the registered trademark is legally registered, it shall be determined on the basis of the renewal of the term of a trademark right based on Article 10(1)1 of the former Trademark Act (amended by Act No. 4210 of Jan. 13, 190).

[1] Articles 20(2) and 48(2) of the former Trademark Act (amended by Act No. 4210 of Jan. 13, 1990) / [2] Article 47 of the former Trademark Act (amended by Act No. 4210 of Jan. 13, 1990) / [3] Article 2 of the Civil Act, Article 47 of the former Trademark Act (amended by Act No. 4210 of Jan. 13, 1990) / [4] Article 20(2) of the former Trademark Act (amended by Act No. 4210 of Jan. 13, 1990), Article 3 of the Addenda of the Trademark Act (amended by Act No. 4210 of Aug. 22, 1997) / [5] Article 9(1)1(2) of the former Trademark Act (amended by Act No. 4210 of Jan. 13, 1990)

[1] Supreme Court Decision 93Hu2028 delivered on April 26, 1994 (Gong1994Sang, 1483)

Plaintiff (Attorney Lee In-hee et al., Counsel for the plaintiff-appellant)

A. Shacea Shace (Attorney Choi Gong-soo et al., Counsel for the defendant-appellant-appellant)

Patent Court Decision 200Heo4329 delivered on March 15, 2002

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

The grounds of appeal are examined.

1. As to whether the petition for a trial in this case is unlawful in light of the legal nature of the trademark duration renewal system

The renewal of the duration of a trademark right is not a new trademark right by registration, but a trademark right whose duration has expired is extended only by maintaining the identity of a trademark right holder and designated goods (see Supreme Court Decision 2003Hu564 delivered on May 28, 2004). If a trial decision invalidating the renewal of duration of a trademark right becomes final and conclusive, the trademark right arising from the registration of establishment shall be deemed extinguished at the time of termination of the duration of the trademark right before the renewal (see Supreme Court Decision 93Hu2028 delivered on April 26, 1994).

In this case where, after the registration of renewal of the duration of the trademark of this case (registration number omitted) was completed two times, the invalidation of the first renewal of the duration of the trademark of this case is sought, according to the above legal principles, if the first renewal trial of the duration of the trademark of this case becomes final and conclusive, the trademark right of this case itself becomes extinct at the time of termination of the duration before the first renewal of the duration becomes final and conclusive, and thus the second renewal of the duration of the trademark of this case is maintained on the premise that the first renewal of the duration of the trademark of this case is valid. In this regard, the court below's claim for the invalidation trial of the first renewal of duration of the trademark of this case cannot be deemed unlawful even if it is filed by the court below to dispute the validity of the trademark of this case currently in existence through the second renewal of duration, and there is no error of law as to the legal nature of

2. Whether the provision of the latter part of Article 9 (1) 11 of the former Trademark Act (amended by Act No. 4210 of Jan. 13, 1990 hereinafter referred to as the "former Trademark Act") can be a ground for invalidation of registration for renewal of duration of trademark right

According to the proviso of Article 20 (2) 1 and Article 47 (1) 1 of the former Trademark Act, if a registered trademark falls under the provision of Article 9 (1) 11 of the former Trademark Act, the renewal of the registration shall be invalidated if the registration of renewal of the duration of the trademark is made. Meanwhile, the purport of Article 9 (1) 11 of the former Trademark Act is not to protect all the previous and latter parts of the trademark, but to prevent mistake or confusion among ordinary consumers as to the origin of goods using a trademark already recognized as a trademark of a specific person, and to protect its trust (see Supreme Court Decision 96Hu412 delivered on March 14, 197). Thus, the latter part of Article 9 (1) 11 of the former Trademark Act, on the premise that the latter part of Article 9 (1) 11 of the former Trademark Act is private-interest provision, should be excluded from the invalidation of the registration of the trademark, and thus, cannot be accepted.

3. As to whether the instant petition for a trial violated the principle of good faith

The legal principle of forfeiture or invalidation is a derivative principle based on the principle of trust and good faith, and it means that the exercise of rights is not permitted when the other party, who is the obligor, has already been in violation of the principle of trust and good faith, because the right holder did not exercise his/her rights over a long period, notwithstanding the existence of an opportunity to exercise his/her rights (see Supreme Court Decision 2001Da72081, Mar. 26, 2004).

According to the records, the registration date of the trademark of this case is June 25, 1979. The registration date of the first renewal of the trademark term is September 23, 1989. The second renewal date of the trademark term is November 30, 1998. The defendant's filing of a petition for a trial to invalidate the first renewal of the term of this case is June 30, 1999. Thus, it is difficult to view that the defendant filed a petition for a trial of this case after the twenty (20) years have passed since the trademark of this case was registered, and the second renewal of the term is completed after the expiration of the period of the second renewal of the trademark term, and as seen above, the provision of Article 9 (1) 11 of the former Trademark Act is invalid for the public interest provision of Article 9 (1) 11 of the former Trademark Act without the limitation period (see Article 44 (1) of the former Trademark Act). It does not constitute an abuse of rights as alleged in the ground of appeal.

In light of the amended Trademark Act (amended by Act No. 5355 of Aug. 22, 1997, hereinafter referred to as the "Revised Trademark Act"), whether a request for trial of this case is unlawful or not in light of the amended Trademark Act

According to the reasoning of the judgment below, the court below held that "the duration of trademark rights" under Article 20 (2) 1 of the former Trademark Act, which had been enforced at the time of the first renewal of the registration, may be renewed for ten years each at the time of application for renewal: Provided, That this shall not apply to cases where the registered trademark falls under any of the following subparagraphs: 1. When the registered trademark falls under the provisions of Articles 8 and 9 (1) (excluding subparagraphs 6 through 9)", it is necessary to examine the substantive requirements of the application for renewal of the duration of the already registered trademark, including whether the trademark falls under Article 9 (1) 11 of the former Trademark Act at the time of application for renewal of the duration of the registered trademark, and Article 47 of the same Act provides that "if the renewal of the duration of the trademark right is registered in violation of the proviso of Article 20 (2) of the same Act, it shall be invalidated by a trial regardless of the time before or after the extinguishment of the trademark right, the amendment of the former Trademark Act shall be excluded from the duration of trademark law.

In light of the records, the above judgment of the court below is just, and there is no error in the misapprehension of legal principles as to the interpretation of Article 3 of the Addenda of the amended Trademark Act.

5. Regarding the time of determination under Article 9(1)11 of the former Trademark Act

The issue of whether a registered trademark is likely to mislead or confuse consumers as provided in the latter part of Article 9 (1) 11 of the former Trademark Act shall be determined as at the time of the decision to register the trademark (see Supreme Court Decision 96Hu412, Mar. 14, 1997). The purport of denying the renewal of the term of a trademark falling under the latter part of Article 9 (1) 11 of the former Trademark Act in the provision of Article 20 (2) 11 of the former Trademark Act is to deny the renewal of the term of a trademark under the latter part of Article 9 (1) 11 of the same Act, even if the trademark is legally registered, it is reasonable to determine the renewal of the term of a trademark as at the time of the renewal of the term of a trademark under the latter part of Article 9 (1) 11 of the former Trademark Act as at the time of the decision to invalidate the term of a trademark under the latter part of Article 9 (1) 18 of the former Trademark Act. The decision of the court below is justified in its judgment as to the same purport.

6. As to whether the registered trademark of this case falls under Article 9(1)11 of the former Trademark Act at the time of the decision to renew the first registration for the duration of the trademark right

A. According to the reasoning of the judgment below, the court below acknowledged the facts as stated in its reasoning concerning the development process of the mark 'HLO KITY', the period of domestic use, the type of goods bearing the mark, sales performance and domestic handling point, the product advertisement level of the domestic service contract of the mark and the international designation limit of the mark, etc., based on the evidence of employment. The court below determined that the mark was recognized as a trademark of a specific person (hereinafter referred to as a "personal trademark") between customers or ordinary consumers because it is widely known as a product mark in Korea around August 31, 1989, when the first renewal of the term of the trademark of this case was decided. In light of the records, the court below's fact-finding and decision is just, and there is no error of law such as misconception of facts, incomplete deliberation, and misunderstanding of legal principles as to Article 9 (1) 11 of the former Trademark Act, as otherwise alleged in the ground of appeal.

B. Examining the evidence admitted by the court below in light of the records, the court below acknowledged the facts as stated in its holding, and, at the time of the decision of the first renewal of the duration of the trademark of this case, the products are manufactured by breaking out not only the clothing but also the new products such as sprinks and sprinks, and displaying and selling them together at the same store. The defendant's quoted trademark is not erroneous in the misapprehension of legal principles as to the duration of the trademark of this case, since the products such as sprinks, fingers, portable cosmetics, piracy, sprinks and splates, etc. using the cited trademark of this case and the clothes which are designated goods of the trademark of this case are identical to the same system in a broad sense, and the use, supply, sale, etc. of the goods are consistent with the consumer's floor, and if the trademark of this case similar to the cited trademark of this case is used for the designated goods, it cannot be seen that there is no error in the misapprehension of legal principles as to the invalidation of the trademark of Article 11.

7. Conclusion

Therefore, the appeal is dismissed, and the costs of appeal are assessed against the plaintiff who is the losing party. It is so decided as per Disposition by the assent of all participating Justices.

Justices Ko Hyun-chul (Presiding Justice)