In a case where Gap corporation, a trademark right holder of the registered trademark " "", filed a claim against Eul corporation, which is the trademark right holder of the registered trademark " " " "," to confirm the scope of the right of the registered trademark Eul, on the grounds that the mark " "," falls under the scope of the right of the registered trademark of Eul, and the Korean Intellectual Property Tribunal cited it, the case holding that the challenged mark constitutes a trademark identical to the registered trademark of Eul, since the trademark subject to confirmation was simply added to the registered trademark of Eul, which maintains

Article 75 of the Trademark Act

1. The term "patent attorney Kim Young-young, Counsel for the plaintiff-appellant"

Subject corporation (Patent Attorney Jeong-sung et al., Counsel for the defendant-appellant)

Patent Court Decision 2013Heo4299 Decided August 29, 2013

The judgment below is reversed, and the case is remanded to the Patent Court.

The grounds of appeal are examined (to the extent of supplement in case of supplemental appellate briefs not timely filed).

A person shall be appointed.

1. According to the reasoning of the judgment below, the court below rejected the Plaintiff’s assertion that the challenged mark constitutes a trademark in a form that can be seen as identical to the Plaintiff’s registered trademark in light of the transaction norms, and determined that the challenged mark falls under the scope of the Defendant’s right to the registered trademark (trademark No. 2 omitted) of this case, on the ground that, in comparison with the Plaintiff’s registered trademark (trademark No. 1 omitted) which uses the Plaintiff’s challenged mark as the goods using the “satis,” etc. as the designated goods, all these trademarks may be named as “unsatis,” but since the appearance differs remarkably due to the difference between the existence of the background and the color, the number of characters, and the content of letters, etc., and thus, it is difficult to deem the challenged mark as the trademark as a trademark in a form that

2. However, it is difficult to accept the above determination by the court below for the following reasons.

A. The confirmation to confirm the scope of a trademark right is confirmed based on the registered trademark that the non-registered mark falls within the scope of the right of the registered trademark or does not fall under the scope passively. Thus, even if the mark subject to confirmation is identical or similar to the registered trademark of the claimant, the confirmation to confirm the scope of a trademark right is unlawful as it denies the effect of the right registered outside the registration invalidation procedure (see, e.g., Supreme Court Decision 92Hu605, Oct. 27, 1992). In this case, the "mark subject to confirmation, which is the registered trademark," includes not only the trademark identical with the registered trademark, but also the trademark which is modified to the extent that it does not infringe the identity of the trademark as a distinguishing mark from the transaction norms, so even if the mark subject to confirmation is in the form of adding other letters, diagrams, etc. to the registered trademark, as long as the trademark maintains its identity and independence, it is deemed as a trademark identical with the registered trademark.

B. According to the records, the Plaintiff attached labels as shown in the attached Form to the goods using the challenged mark, and the labels include the Plaintiff’s trade name “Hwami” mark containing “Hwami” indicating “Hwami” with a central distinctive character in English, and the word “Hwam” and the abbreviations between the Plaintiff and the Plaintiff’s trade name. The challenged mark is an abstract of the word of the above label’s center.

In addition to these circumstances, considering that the challenged mark differs from the part of the "U.S." and the part of the "U.S.A." and thus, ordinary consumers or traders easily understand that the challenged mark is combined with the letters "U.S." with the plaintiff's trade-centered distinctive character, such combination does not form any new concept on the whole of the challenged mark, and the part of the "U.S." in the challenged mark differs from the plaintiff's registered trademark "U.S." and the part of the challenged mark, but such difference is merely a modification to the extent that it can be seen as identical to the plaintiff's registered trademark in light of the transaction norms, since the challenged mark was simply added to the plaintiff's registered trademark "U.S." which maintains the identity and independence of the trademark, in light of the above legal principles, the challenged mark constitutes a trademark identical to the plaintiff's registered trademark.

C. Nevertheless, the court below erred by misapprehending the legal principles as to determining the identity of a trademark, thereby adversely affecting the conclusion of the judgment, in rejecting the Plaintiff’s assertion that the challenged mark is identical with the Plaintiff’s registered trademark and the mark was used. The ground of appeal assigning this error is with merit.

3. Therefore, without examining the remaining grounds of appeal, the judgment of the court below is reversed, and the case is remanded to the court below for a new trial and determination. It is so decided as per Disposition by the assent of all participating Justices on the bench.

[Attachment] Marks of Plaintiff’s Products with Marks subject to Confirmation: omitted

Justices Lee Sang-hoon (Presiding Justice)