[1] Criteria for determining whether a trademark constitutes "a trademark likely to mislead consumers" under Article 7 (1) 11 of the Trademark Act

[2] Purport of the provision of Article 7 (1) 11 of the Trademark Act, and in a case where the user of the existing trademark uses the existing trademark knowing that the trademark is already registered with the same or similar third party, whether the above provision applies (affirmative)

[1] If a trademark, which is the subject of a request for a trial for invalidation of registration, is likely to deceive consumers as stipulated in Article 7 (1) 11 of the Trademark Act, the trademark is not necessarily required to be well-known, but at least it should be known to consumers or traders to the extent that it can be recognized as a trademark or goods of a specific person if it is a trademark or goods in general transactions in the Republic of Korea. In such a case, if there are special circumstances to believe that the trademark identical or similar to the existing trademark is being used for the goods identical or similar to the goods using it, or is used by the right holder of the existing trademark to the extent that it is not possible to mislead or confuse the general consumers as to the source.

[2] The purpose of Article 7 (1) 11 of the Trademark Act is not to protect the existing trademark, but to prevent mistake or confusion among general consumers with regard to the source of goods, etc. using a trademark already recognized as a trademark of a specific person, and to protect trust in this regard. Whether the existing trademark or goods using it are known to consumers, etc. in the domestic general trade refers to an objective situation in which general consumers should be recognized according to the transactional situation in accordance with the standard. Even if the application of the above provision shows that the existing trademark is actually protected as a result of the application of the above provision, it is nothing more than indirect and anti-private effects due to protecting the interests of general consumers. Thus, even if the user of the existing trademark used the existing trademark with the knowledge that the trademark is already registered, the application of the above provision cannot be ruled out.

[1] Article 7 (1) 11 of the Trademark Act / [2] Article 7 (1) 11 of the Trademark Act

[1] Supreme Court Decisions 2002Hu734 Decided March 11, 2004; 2002Hu1928 Decided March 12, 2004 / [1] Supreme Court Decisions 92Hu2038 Decided June 22, 1993 (Gong1993Ha, 2143), 96Hu412 Decided March 14, 197 (Gong197Sang, 1911), 97Hu3975, 3982 (Gong1999, 1969, 2999) Decided 29, 209, 209Hu1979, 2979, 209, 3989, 209Hu1979, 2979, 2059, 209.

Plaintiff (Law Firm Squa, Attorneys Han-Hun et al., Counsel for the plaintiff-appellant)

Switzerland (SCABAL S. A.) (Patent Attorney Nowon-gu, Counsel for the defendant-appellant)

Patent Court Decision 2001Heo2177 delivered on September 28, 2001

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

1. If a trademark, which is the subject of a request for a trial for invalidation of registration, is likely to mislead or confuse consumers as stipulated in Article 7(1)11 of the Trademark Act, it should be known to the extent that it can be recognized as a specific person’s trademark or goods if it is a trademark or goods in general transactions in Korea at least if it is a specific person’s trademark or goods. In such a case, if there are special circumstances to believe that a trademark identical or similar to the existing trademark is used for the goods identical or similar to the goods, or is used by an existing right holder to the extent that it is not possible to mislead or confuse consumers as to its source (see, e.g., Supreme Court Decision 201Hu184, 1891, Apr. 8, 2003). It seems that there is no concern for general consumers to be aware of the fact that the trademark is already used by the existing right holder of the trademark after being registered with the trademark or goods, and that there is no reason to believe that the trademark is already used for protection of a specific person’s or goods.

2. According to the reasoning of the judgment below, the court below determined that the above existing trademark or its goods, which the defendant used, are known to consumers or traders to the extent that they can be perceived as a trademark or goods of a specific person, at the time of the decision to register the Plaintiff’s registered trademark (registration number omitted), and the Plaintiff’s registered trademark and the Defendant’s existing trademark are identical or similar to the Plaintiff’s registered trademark and the goods using the designated goods are identical or similar to those of the designated goods, and thus, if the registered trademark of this case is used for the designated goods, it may cause misconception or confusion about the origin of the goods to ordinary consumers. Thus, regardless of whether the Defendant knew of the existence of the Plaintiff’s prior registered trademark in conflict with the time of the use of the existing trademark in Korea, the Plaintiff’s registered trademark falls under Article 7(1)11 of the Trademark Act.

In light of the above legal principles and records, the above fact-finding and judgment of the court below are just, and there is no error in the misapprehension of legal principles as to whether the defendant knew of the existence of the plaintiff's registered trademark in conflict with his existing trademark, or in the incomplete trial as to the provisions of the latter part of Article 7 (1) 11 of the Trademark Act, as otherwise alleged in the ground of appeal.

3. Therefore, the appeal is dismissed, and the costs of appeal are assessed against the losing party. It is so decided as per Disposition.

Justices Lee Yong-woo (Presiding Justice)