In a case where users of a mark subject to confirmation used in a refined form, which is composed of “A” and “B,” and contains vain tree extraction powder, and health auxiliary food, etc. containing vain tree extraction as designated goods, the challenged mark is not within the scope of the right of the registered trademark and the challenged mark is not subject to the scope of the registered trademark, the case holding that the challenged mark does not fall within the scope of the right of the registered trademark on the ground that the challenged mark among the challenged marks, on the ground that the challenged mark falls under the mark of the nature of Article 51(1)2 of the former Trademark Act, and thus, the challenged mark does not fall under the scope of the right

In a case where the user Gap of the challenged mark, which is composed of " "," and "B" and "B" and "B", used in a refined form of product containing va tree extraction powder, files a claim for the confirmation of the scope of rights against the right holder Eul of the registered trademark with "B" and "B" as designated goods, the case holding that in the case of a black language mark comprised of one person, the challenged mark does not constitute the scope of rights under Article 5 (1) 2 of the former Trademark Act (amended by Act No. 1403, Feb. 29, 2016). However, even if the quality, efficacy, use, etc. of designated goods or used goods can not be easily determined as a mark of nature, the part of the challenged mark does not fall under the scope of rights under Article 5 (1) 1 of the former Trademark Act (amended by Act No. 1403, Feb. 29, 2016).

Article 51(1)2 of the former Trademark Act (wholly amended by Act No. 14033, Feb. 29, 2016) (see current Article 90(1)2)

Plaintiff (Patent Attorney Dan Patent & Patent Attorney Lee Jae-ho, Counsel for plaintiff-appellant)

Defendant (Law Firm Sejong et al., Counsel for the defendant-appellant)

May 18, 2016

1. The decision made by the Intellectual Property Tribunal on January 15, 2016 on the case No. 2015Da638 shall be revoked.

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

The same shall apply to the order.

1. Basic facts

A. Defendant’s registered trademark of this case

1) Registration number / filing date/registration date: No. 40-0719485//206 December 21, 2006/ August 2, 2007

2) Composition:

3) Designated goods: Health assistance food containing vain tree extractions in Category 29, health assistance food containing ginseng extractions, health assistance food containing dynamic vegetable vegetable vegetable vegetable processed food, health assistance food containing vegetable vegetable vegetable vegetable vegetable vegetable processed food, ginseng, vegetable vegetable vegetable vegetable ginseng, ginseng, vegetables, vegetables, vegetable vegetable, vegetable vegetable vegetable vegetable, vegetable vegetable vegetable, vegetable vegetable vegetable, vegetable vegetable vegetable vegetable, vegetable vege

(b) a challenged mark;

1) Composition:

2) Goods using: Products in refined form containing non-minta C and vaine drheat drheat (hereinafter referred to as “instant products”)

C. Details of the instant trial decision

On February 7, 2015, the Plaintiff filed a claim against the Defendant for a trial to confirm the scope of rights that the challenged mark does not fall under the scope of the right of the trademark of this case.

Accordingly, on January 15, 2016, the Korean Intellectual Property Trial and Appeal Board dismissed the plaintiff's appeal on the ground that the challenged mark falls under the scope of the right of the registered trademark of this case.

In the composition of the challenged mark, the term "regrativeness" does not fall under Article 51 (1) 2 and 3 of the Trademark Act, since it is not a technical mark that directly indicates the quality, efficacy, use, etc. of goods in use or an ordinary name referring to "products containing vain tree extraction powder," and thus, has distinctiveness, it does not fall under Article 51 (1) 2 and 3

The mark subject to confirmation may be abbreviationd by the phrase “Nomenclature” in its composition, and in such a case, the registered trademark of this case and its title are similar.

Goods using the trademark subject to confirmation and the designated goods of the registered trademark of this case are the same or similar.

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

2. Whether the trial decision of this case is unlawful

A. The parties' assertion

1) Plaintiff’s assertion

In the composition of the challenged mark, the term "remark" is a technical mark indicating the efficacy, use, etc. of the goods used, and falls under Article 51 (1) 2 of the Trademark Act and thus the trademark right of the trademark of this case is not effective. Thus, the challenged mark is not similar to the registered trademark of this case.

In addition, goods using the challenged mark and designated goods of the registered trademark of this case are not similar.

Therefore, the challenged mark does not fall under the scope of the right of the registered trademark of this case. The decision of this case, which different conclusions, should be revoked as it is unlawful.

2) Defendant’s assertion

Of the composition of the challenged mark, the term “remark” is a mark expressing the efficacy or use of goods used, and thus, has distinctiveness as it does not fall under Article 51(1)2 of the Trademark Act. Thus, the challenged mark is similar to the registered trademark of this case.

In addition, the goods using the challenged mark and the designated goods of the registered trademark of this case are similar.

Therefore, the challenged mark belongs to the scope of the right of the registered trademark of this case. The trial decision of this case is legitimate.

B. Whether the part of the challenged mark constitutes a trademark of the nature indicated in Article 51(1)2 of the Trademark Act

1) Relevant legal principles

Whether a trademark constitutes “a trademark indicating in a common way the origin, quality, raw materials, efficacy, use, quantity, shape (including shapes of packages), price or production method, processing method, use method and time of goods” under Article 51(1)2 of the Trademark Act shall be objectively determined in light of the concept bearing the trademark, relationship with the goods using the trademark, the circumstances of the trading society, etc. In such a case, a trademark can be directly identified as indicating quality, efficacy, shape, etc. when considering the goods using the trademark (see, e.g., Supreme Court Decision 2008Hu4585, May 13, 2010). Even if other letters, etc. are added to the part expressing the quality, efficacy, etc. of the goods using the trademark, such combination cannot have a new distinctive character, such as the technical or explanatory meaning of the above part expressing the character of the goods using the trademark, and thus, constitutes “a trademark indicating the quality, efficacy, etc. of the goods using the trademark” under Article 51(1)2 of the Trademark Act.

2) Determination

In light of the above legal principles, considering the following circumstances acknowledged by comprehensively taking account of the respective descriptions of Gap evidence Nos. 8 through 16, 22, and 23 (including the number of pages) and the overall purport of arguments, since the part of the challenged mark in question indicates clearly and directly the meaning of "goods that have protected the liver," the part of the challenged mark is considered to be a mark indicating the efficacy, use, etc. of the goods used in this case to ordinary consumers or transaction parties, it constitutes a mark indicating the nature of the trademark under Article 51 (1) 2 of the Trademark Act.

A) The part of the phrase “three-party warning”, which is arranged in the center of the challenged mark, is distinguishable from the word “three-party warning” and “sex,” and as the size of letters is distinguishable from the size of letters, it seems that ordinary consumers are aware that the above part is combined with the word “three-party warning” and the word “three-party warning” (this point is without dispute between the parties).

On the other hand, as seen above, the above text portion was composed of a flat letter in the challenged mark, and as seen above, there is no other design except where the part between the “third party” and the “sex” is placed.

B) Doin tree was known to have efficacy in diseases, etc. from old times. Also, Doin tree tex tex tex tex tex was effective in protecting between alcohol damage, and obtained certification from the Korea Food and Drug Administration on October 2, 2008 as functional ingredients of functional health foods from the Korea Food and Drug Administration.

C) One person can understand the meaning corresponding to one person’s characters in terms of letters as letters indicating their respective meanings. A person is one with the meaning of “help, observe, protective, and fluent.” A person is one with the meaning of “liver,” and “liver” is one with the meaning of “liver,” etc. In general, Chinese language and Chinese language generally indicate that “livering and fluoring shall protect “livering and directly.” However, each of the above one is a person with high school education and one’s life life who is relatively easy as one, and one’s high school graduation rate is within 95%, and the Chinese language choice ratio among the subjects of 2 foreign language is relatively higher than 36.03% of the other subjects of foreign language, and Korea seems to have used the same language as “Korean language”, “Irish”, “Irish”, “Irish”, “Irish”, and “Irish” (Lrrish,” and “Irish,” and “Irish,” as one’s own culture and one’s own culture.

D) Health functional foods, nutritions, etc. are often used as “refluent” or “refluent” persons at the end of the name. Considering that the “refluent” is a high school trainee, an ordinary consumer, or a human life-oriented person, and that the “refluent” is a relatively easily easily recognizable person, the “refluent” appears to be deemed to have meaning of “refluent goods” or “refluent nutritions” in relation to health functional foods, and thus, its distinctiveness

E) Even if a person is combined with the “commencing” in the “commencing”, this is merely regarded as a simple combination of the meanings of both parties, and such combination does not constitute a new distinctive character that does not enable the sense of technical or explanatory meaning of the “commencing”.

F) Even if the quality, efficacy, and use, etc. of designated goods or used goods can be inferred in the case of a group of marks consisting of one person, it cannot be uniformly concluded that such trademark constitutes a mark indicating the nature of trademark under Article 51(1)2 of the Trademark Act. However, as seen above, in light of the following: (a) the term “commencing” itself explicitly and directly expresses the meaning that the term “protectiveness” itself; (b) a considerable number of ordinary consumers or transaction parties can easily express the meaning of the term “commencing” in the Korean language language including one person; and (c) it is reasonable to deem that the term “commencing” constitutes a mark indicating the nature of trademark under Article 51(1)2 of the Trademark Act.

Furthermore, considering that the “competing”, which is the body of the instant trademark, is used as a official mark or an ordinary name of the “Good Functional Health Foods” in China, which is the right of Chinese culture, prior to the filing date of the instant trademark, it is difficult to view that the “competing” falls under the control mark in relation to the goods used in the instant case.

C. Whether the challenged mark falls under the scope of the right of the registered trademark of this case

The instant registered trademark is a mark that is written only in Korean without any particular drawing, and is identical with a name “title” from among the constituent elements of the challenged mark. However, as seen above, the part of “title” is a distinctive mark, and thus, does not constitute trademark right of the instant registered trademark.

On this premise, when comparing the registered trademark of this case and the marks subject to confirmation, both are different from the appearance and name. In addition, the registered trademark of this case is written only in Korean, and it is difficult to see that the registered trademark of this case is in itself as a specific concept, unlike the “title” indicated in Chinese. Thus, even in terms of concept, the marks subject to confirmation are not similar to the registered trademark of this case.

As long as the challenged mark and the mark are not similar to the instant registered trademark, the challenged mark does not belong to the scope of the right of the instant registered trademark, without examining whether the goods using the instant registered trademark and the designated goods of the instant registered trademark are similar. In conclusion, the instant trial decision, which differs from the instant registered trademark, shall be revoked as it is unlawful.

3. Conclusion

Therefore, the plaintiff's claim seeking the revocation of the trial decision of this case is reasonable, and it is so decided as per Disposition.

Judge O Young-young (Presiding Judge) Kim Dong-dong Kim Dong-dong