[1] If a mark indicated by a sponsor link, etc. on the screen as a result of Internet search can be deemed to have been used for indicating the source of another product, whether it constitutes “use as a trademark” under Article 2(1)6(c) of the former Trademark Act (affirmative), and whether the “advertisement” of a kind of product “use as a trademark” is also included in the “advertisement” on the screen as a result of Internet search (affirmative)

[2] In a case where “VSPNC” on the screen as a result of Internet search does not fall under the scope of the right of “VSPP” corporation’s registered trademark “VSP,” the case holding that the court below erred in the misapprehension of legal principles, even though the above mark was used as a trademark indicating the source of other goods, in a case where the user Eul demanded a trial to confirm the scope of right on the ground that the trademark “VSPC”

[3] The case affirming the judgment below which held that the above mark is not similar to the registered trademark and does not fall under the scope of the right, in case where the user Eul requested a trial to confirm the scope of the right on the ground that the "VSP" mark does not fall under the scope of the registered trademark "VSP" of Gap corporation

[1] In a case where an Internet portal operator purchases a right to use a specific word or word (hereinafter referred to as “key”) from the Internet portal site operator and an ordinary Internet user enters the word or word into the search site and shows a sponsor link or website address, etc. that can move on the screen to the purchaser’s website as a result of the search, if the mark indicated on the screen appears as a result of the search to be used for indicating the source of other goods, it constitutes “use as a trademark” which is a premise for the confirmation of the scope of a trademark right. Moreover, “advertisement” of a trademark, which is a kind of trademark, includes not only newspapers, magazines, carvings, signboards, TV, but also information on goods to general consumers on the screen as a result of the Internet search.

[2] In a case where “VSP C” of the challenged mark indicated on the screen as a result of Internet search does not fall under the scope of “VSP”’s right, and where “VSPC” claimed a trial to confirm a passive scope of right, the case holding that the court below erred by misapprehending the legal principle on the ground that, upon examining the content of the screen as a result of the Internet key search, and the overall screen structure, etc. connected to “B”’s website as a result of the Internet key search, it is sufficient to view that the screen was an advertisement of goods with the above mark as visually known to general consumers, and thus, it does not constitute an “act of indicating and displaying a trademark on goods” under Article 2(1)6(c) of the former Trademark Act (amended by Act No. 11113, Dec. 2, 2011); and that the above trademark constitutes an “act of displaying a trademark on goods” under Article 2(1)6(c) of the former Trademark Act, and it does not constitute an act of using the trademark as an Internet link.

[3] The case affirming the judgment below holding that since the "VSP" part of the "VSP" of the above mark is widely used in the English language of "Vlostage Sag Protes" in the transactional world of the goods concerned, it cannot be an essential part because it indicates its efficacy or use in relation to the goods using it, and it is obvious difference between the "VSP" part of the trademark "VSP" and its essential part in its appearance, name and concept, and so even if it is used for goods identical or similar to the registered trademark, it is not likely that ordinary consumers or traders mistake or confuse the origin of the goods, it does not fall under the scope of the right.

[1] Article 2 (1) 6 (c) of the former Trademark Act (Amended by Act No. 11113, Dec. 2, 2011) / [2] Articles 2 (1) 6 (c) and 75 of the former Trademark Act (Amended by Act No. 11113, Dec. 2, 201) / [3] Articles 2 (1) 6 (c) and 75 of the former Trademark Act (Amended by Act No. 11113, Dec. 2, 2011);

Dokweb Co., Ltd. (Patent Attorney Kim Dong-sik, Counsel for the defendant-appellant)

Defendant

Patent Court Decision 2010Heo3271 Decided September 15, 2010

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

The grounds of appeal are examined.

1. Regarding ground of appeal No. 1

A. If an Internet portal operator purchases a right to use a specific word or word (hereinafter referred to as “key”) from the Internet portal site operator and a general Internet user enters the word or word into the search site and shows a sponsor link or website address, etc. which can move the word or word to the website of the purchaser on the screen as a result of the search, if the mark indicated on the screen can be deemed to have been used to indicate the source of other products as a result of the search, it constitutes a “use as a trademark” which is a premise for a trial to confirm the scope of a trademark right. Moreover, the term “advertisement” of goods used as a trademark includes not only newspapers, magazines, carcs, signboards, TV, etc. but also information on goods to general consumers on the screen as a result of the Internet search.

B. According to the reasoning of the judgment of the court below, the defendant purchased a key "VSP" from the Internet portal site "YP" (www.dirum.net), and if an Internet user enters the search site of the portal site "VSP" into the search site of the portal site, the title "VSPC" as the result of the search, and the type of "VSPC" is indicated as the "SPC" on the screen, and the type of the product "SPPPC" is indicated as the "SPC" at the lower level (SV). The defendant again appeared on the Internet homepage of the defendant company's designated goods "VPPPP" (the designated goods of the defendant's trademark right holder "VPPPPPP" in the case where the ground protection machine is rapidly excessive, i.e., the e., the apparatus to restrain the change of electricity, and the system of protecting the trademark right holder's "VPPP" is a device to prevent damage caused by lightning, etc.

Examining the content of the screen and the overall screen structure, etc. connected to the Defendant Company’s website, in light of the legal principles as seen earlier, it is sufficient to view the above Internet key search result as advertising the information on the goods with the instant mark visually known to general consumers. Therefore, the Defendant’s act of advertising the instant mark on the screen as a result of Internet key search, which indicated the instant mark on the screen, constitutes “an act of displaying and displaying a trademark in the advertisement of the goods,” as prescribed by Article 2(1)6(c) of the former Trademark Act (amended by Act No. 11113, Dec. 2, 2011). Thus, the instant mark was used as a trademark indicating the source of other goods.

Meanwhile, according to the reasoning of the judgment below, if the Internet user characters the mark of this case or the address of the homepage of this case on the screen as a result of the search, it can be seen that the mark of this case was displayed only on the products using the trademark, such as “Ntrip”, “deepp”, and “Sagle Fre” registered by the defendant, etc., and there is no indication on the products bearing the mark of this case. However, as seen above, since the mark of this case is only the circumstances after the trademark of this case was used as a trademark on the screen itself as a result of the kid search, it cannot be deemed that the mark of this case was not used as a trademark on the ground that it was not used as a trademark.

Therefore, the court below erred in the misapprehension of legal principles as to the use of trademark in determining that the mark of this case functions as a "sphone link" as a general "sphone link which induces Internet users to the defendant company's homepage, and does not have been used as a trademark indicating the source of other products, and thus does not fall under the scope of the right of the registered trademark of this case. However, as seen in the ground of appeal No. 2 below, the court below's conclusion that the mark of this case does not fall under the scope of the right because the trademark of this case is not similar to the registered trademark of this case and the mark

2. As to the grounds of appeal Nos. 2 and 3

The similarity of trademarks shall be determined depending on whether there is a concern for mistake or confusion as to the origin of goods by ordinary consumers or traders in the transaction of the relevant goods based on the direct perception of the trademark, and even if there exists a similar part between two trademarks, if the part constituting the essential part is different and it is possible to avoid confusion as to the origin clearly when the overall observation is made (see, e.g., Supreme Court Decision 96Hu258, Jun. 24, 1997). In addition, the part having no or weak distinctiveness in the composition of a trademark cannot be deemed as an essential part, and the same applies even where the part is combined with other letters (see, e.g., Supreme Court Decision 2004Hu1175, Jan. 26, 2006).

In light of the above legal principles and the records, “VSP” can be seen as being used in English as a "net pre-liver compensation device" in the transactional world of related goods. As such, the part of “VSP” of the trademark of this case indicating its efficacy or use in relation to the goods using it cannot be an essential part because its distinctiveness is weak, and it is obvious in terms of the trademark “VSP” and its appearance, name, and concept. Accordingly, even if the trademark of this case is used on goods identical or similar to the registered trademark of this case, it is not likely that ordinary consumers or traders might mislead or confuse the origin of the goods. Thus, the trademark of this case does not correspond to the registered trademark of this case, and thus, it does not fall under the scope of rights.

The judgment below to the same purport is just, and there is no error in the misapprehension of legal principles as to the similarity of trademarks, or in violation of the principle of free evaluation of evidence.

3. Conclusion

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

Justices Ahn Dai-hee (Presiding Justice)