The case holding that the registered service mark “” constitutes a service mark that is likely to deceive consumers if used together with the same or similar mark and the mark and the designated service business of “Faman Mutual Savings Bank” is identical or similar to the registered service mark “Faman Mutual Savings Bank”.

The case holding that Article 7 (1) 11 of the Trademark Act is applicable to the registered service mark “,” on the grounds that the registered service mark “,” was known to the extent that it could be perceived as a specific person’s service mark among domestic traders or consumers at the time of its registration, and the prior used service mark “,” “,” the registered service mark “,” and the mark and the designated service business are identical or similar to the registered service mark “,” and if used together, it may cause general consumers to mislead or confuse sources

Articles 7(1)11 and 71(1)1 of the Trademark Act

Park Jong-gu et al. (Patent Attorney Park Byung-ok et al., Counsel for the defendant-appellant)

F. M.S. Co., Ltd. (Patent Attorney Lee Jae-chul, Counsel for defendant)

December 1, 2005

1. All of the plaintiffs' claims are dismissed.

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

The decision made by the Intellectual Property Tribunal on August 3, 2005 on the case 2005Da573 shall be revoked.

1. Basic facts

A. Registered service mark of this case

(1) Date of application/registration decision/registration date/registration date/registration number: October 1, 2002/ April 19, 2004/4 April 21, 2004/10019

(2) Composition:

(c) Designated service business: International financial business, commercial financial business, credit card issuance business, trust business, travel check issuance business, banking business, savings bank business, securities business, stock brokerage business, bond brokerage business (class 36).

(4) Service mark right holder: the plaintiffs

(b) Prior-use service marks;

The defendant's operation of savings bank business, etc. has been used by the defendant since March 2002 to the present.

C. The procedural background

(1) The defendant filed an appeal for invalidation of the registered service mark on the ground that the registered service mark of this case constitutes Article 7(1)11 of the Trademark Act, etc. The Korean Intellectual Property Trial and Appeal Board deliberated on it as No. 2005Da573, Aug. 3, 200, and accepted the defendant's claim on the ground that the registered service mark of this case constitutes (2) below.

(2) Summary of the trial decision of this case

(A) The registered service mark of this case is referred to as "Feman Bank", and there is a possibility that the key part of the registered service mark of Feman Mutual Savings Bank, which is the prior-use service mark, is referred to as "Feman Bank", and the remaining part may be referred to as "Feman Bank". In such a case, the registered service mark of this case is identical with the prior-use service mark, and it is interpreted as "Feman Bank", and both service marks are similar.

(B) The service business using prior-use service mark and the designated service business of the instant registered service mark are similar in that they are financial business, including savings bank business and banking business.

(C) Even if the registered service mark did not reach the level of well-known and low-known service name in light of the size of credit and receipt, advertisement size, etc. at the time of the decision on the registration of the instant registered service mark, it is already widely known to the extent that it would be perceived as a specific person’s service mark among domestic consumers or traders. Thus, if the instant registered service mark is used together with the prior used service mark, it is likely that only consumers may raise about the source of service, and thus, constitutes Article 7(1)11

(D) Therefore, the registered service mark of this case must be invalidated.

[Certificate] Evidence Nos. 1 and 2

2. Summary of the parties' arguments;

A. Summary of the grounds for revoking the trial decision asserted by the plaintiff

The instant trial decision was erroneous in finding the actual use of the aforementioned prior-use service mark as well as evidence of the use of the mark, which is not the prior-use service mark, such as “Malcos”, “Malty Depository”, and “Mal Savings Bank,” and it cannot be deemed that the prior-use service mark was widely known to the extent that it would be perceived as a specific person’s service mark among domestic consumers or traders around April 2004, which was at the time of the registration decision on the instant registered service mark.

B. Summary of the defendant's assertion

In addition, the Defendant asserts that the instant registered service mark falls under Article 7 (1) 11 of the Trademark Act and its registration should be invalidated on the ground that it might cause general consumers to misunderstand the quality of service business as a special corporation under public law if it is used in addition to the designated service business.

3. Determination

(a) recognised facts;

(1) As the Defendant was established on June 29, 1971 and operated a mutual credit fraternity business, credit installments business, etc., the trade name was changed to a private mutual savings bank on May 1998, and a foreign mutual savings bank on May 28, 1998, and the former Mutual Savings and Finance Company Act changed to the name of the mutual savings bank on March 19, 2002 as the former Mutual Savings and Finance Company Act changed to the name of the mutual savings bank on March 28, 2001, the business period reaches at least 30 years.

(2) The defendant was registered in the KOSDAQ market on November 1, 1993, and the defendant added "the receipt of deposits and installment savings, the loan business, the discount business of bills, and the internal and foreign exchange business" in addition to "mutual credit and credit installment savings business" as mentioned above as the target business on June 1998.

(3) As of June 30, 2002, the Defendant accounts for the first place in the mutual savings bank industry as to the net income per month as of June 30, 2002. As of June 30, 2004, the Defendant accounts for the first place in the mutual savings bank industry. As of June 30, 2004, the total amount of ordinary deposits, periodical deposits, installment deposits, cover notes, etc. exceeds 50 billion won, the total amount of loans exceeds 540 billion won, and the number of customers exceeds 110,

(4) From April 2002 to September 2003, articles concerning the defendant were published at least 20 times each day in various domestic economic newspapers, including economy, Seoul and Musstu, internal and external economy, Korean finance, and Fald economy. Among these material articles, "Pueman Mutual Savings Bank introduced the Stockholm options system for the first time in the industry", "Pueman Mutual Savings Bank introduced its business performance of KRW 48.7 billion at the end of 2001, and received KRW 448.7 billion at the end of 2001, and recorded an annual net income of KRW 8.0 billion at the end of 94%, and recorded an annual net income of KRW 1.2 billion at the end of 2000,000,000,0000,000 won."

(5) From January 1, 2001 to October 25, 2005, the Defendant spent a total of KRW 354,727,959 for advertising expenses.

[Reasons for Recognition] Eul evidence 2 74 to 99, Eul evidence Nos. 4 to 7, the purport of the whole pleadings

(b) Markets:

(1) Degree of recognition of prior-use service marks

As above, considering the Defendant’s trade change and business history, the process and period of using the prior-use service mark, the trade size and the number of traders after the use of the prior-use service mark, net profit, business performance, the Defendant’s location in the same industry, the frequency, circumstances, and period of reporting prior-use service mark in the media, and the size of advertisement, etc., the scope of traders is limited compared to the first financial institution, such as the Defendant, as the second financial institution, compared to the first financial institution such as the bank. However, considering the circumstances where it is difficult to secure a nationwide trade network because the establishment of branches or sub-branches, excluding the main business, has been strictly restricted by the law, it is reasonable to deem that the prior-use service mark was known at least to the extent that it can be perceived as a specific person’s service mark even if it did not reach the degree of well-known and low name among domestic traders or consumers as of April 204,

(2) The same or similar mark or service business;

The instant registered service mark is a mark consisting of a trademark consisting of a trademark consisting of a trademark consisting of a trademark consisting of a trademark consisting of a trademark consisting of a trademark consisting of a trademark consisting of a trademark consisting of a trademark consisting of a trademark consisting of a trademark consisting of a trademark consisting of a trademark consisting of a trademark consisting

Of the pre-use service marks, the term “mutual savings bank” is located in the back of the entire mark and merely indicates the type of service business, and thus, it cannot be a key part of the mark. Therefore, the key part of the mark is “fright”. Therefore, the pre-use service mark may be referred to as “fright mutual savings bank” as a whole, or may be referred to as “fright mutual savings bank” or “fright mutual savings”, “fright savings”, and “fright trade name”. The registered service mark of this case is named and conceptualized as “fright bank.” The registered service mark of this case is called as “fright bank.” If the pre-use service mark is abbreviated to “fright bank”, both marks are identical to the name and concept.

Therefore, both marks are similar to each other as a whole.

As seen earlier, the fact that the Defendant has engaged in the financial business such as various credit, credit card issuing businesses, banking business, savings banking business among the designated service businesses of the registered service mark of this case is identical. The remaining international financial business, credit card issuing business, trust business, travel check issuing business, securities business, stock brokerage business, bond brokerage business and non-bank financial institutions such as banks, as well as the first financial right such as bank, securities company, insurance company, credit card company, etc. belonging to the second financial business, credit card company, credit card company, credit card company, etc. In addition, in light of the fact that all kinds of financial institutions have different business areas such as insurance, securities, trust business, real estate, and credit card related business in addition to the loan and receipt business, it is anticipated that general consumers will be misunderstanding that the source of the service mark of this case is the user of the pre-use service mark, and therefore, the remaining registered service mark of this case may be sufficiently confused with the registered service mark of this case.

(3) Fixed interest rate

The registered service mark of this case is identical or similar to the prior-use service mark, the mark, and the designated service business, which was known to the extent that it can be perceived as a specific person’s service mark at the time of its registration among domestic traders or consumers at the time of its registration, and may cause general consumers to mistake and confuse the source, and thus, it constitutes Article 7(1)11 of the Trademark Act.

C. Sub-decision

Therefore, since the registered service mark of this case should be invalidated by Article 7(1)1 and Article 71(1)1 of the Trademark Act, the decision of this case, which is identical with the above, is justifiable.

4. Conclusion

Therefore, the plaintiffs' claims seeking the revocation of the trial decision of this case are without merit, and all of them are dismissed. It is so decided as per Disposition.

Judges Choi Sung-sung (Presiding Judge)