Plaintiff (Patent Attorney Cho Young-han et al., Counsel for the plaintiff-appellant)

Defendant (patent attorney in charge, patent attorney Kim Dong-dong, Counsel for defendant-appellant)

April 13, 2018

1. The decision made by the Intellectual Property Tribunal on the case No. 2017Da3328 on January 8, 2018 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) Registered trademark;

1) Date of application/registration date/registration number: November 2, 2013 / January 20, 2015 (registration number omitted)

2) Composition:

3) Designated goods: High-type holding, high-type painting equipment hold, bathtory, beauty cosmetic, and human colon, etc., classified into the categories of goods;

4) Trademark right holder: Plaintiff

(b) a challenged mark;

1) Composition:

2) Used goods: non-use bags for human body;

3) Users: Defendant

C. Reasons for the trial decision

1) On October 23, 2017, the Defendant asserted against the Plaintiff that the Defendant mark subject to confirmation does not fall under the scope of the Plaintiff’s right of the registered trademark because it is not identical or similar to the Plaintiff’s registered trademark, and filed a claim to confirm the scope of right.

2) After examining the above case of appeal as No. 2017Da3328, the Intellectual Property Tribunal rendered a trial decision on January 8, 2018 on the ground that the Defendant’s mark subject to confirmation is not similar to the Plaintiff’s registered trademark and the mark is not similar to the Plaintiff’s registered trademark, and it does not fall under the scope of the Plaintiff’s right of the registered trademark without examining the same or similar mark of the goods used and designated goods, the Patent Tribunal received the above appeal (hereinafter “instant trial decision”).

[Judgment of the court below] The ground for recognition is without merit, Gap Nos. 1 and 2, and the ground for appeal

2. Determination as to the propriety of the instant trial decision

A. Case issues

1) The Plaintiff asserts that both the registered trademark and the challenged mark are combined with the figure and the text, and the appearance and name of the figure and the text are similar, and they are common in the concept of “unmi,” and that in full view of the Defendant’s actual mode of use and creation of confusion about the source of goods, it is highly likely for consumers to mislead and confuse the source of goods. Thus, the challenged mark is similar to the registered trademark and falls under the scope of the right. Accordingly, the Defendant asserts that the trademark and the challenged mark are not similar when objectively, comprehensively and systematically observing the appearance, name, and concept of the goods used by the Defendant in a trial to confirm the scope of the right, and that the act of causing confusion about the source of the goods used by the Defendant is not entirely considered.

2) In the instant case, there is no dispute between the original and the Defendant as to whether “the similarity of marks” is a key issue, and as to the fact that the designated and used goods are identical to each other as “human colon.”

B. Relevant legal principles

1) In a trademark infringement case, an act of using a trademark identical or similar to another person’s registered trademark on goods identical or similar to the designated goods constitutes an infringement on the trademark right, and in principle, whether an act of using a similar trademark constitutes “act of using the trademark” ought to be determined “on the basis of the transaction circumstances of the relevant goods.” In other words, when comprehensively considering the impression, memory, connection, etc. that the two trademarks use to customers or ordinary consumers based on their appearance, name, and concept based on the transaction circumstances of the relevant goods, it should be determined from the perspective of whether there is a concern for misconception or confusion about the origin of goods by the traders or ordinary consumers whose name and place are different from the two trademarks (see Supreme Court Decision 2014Da216522, Oct. 15, 2015).

2) However, in light of the following characteristics of a trial to confirm the scope of a trademark right, it is difficult to apply the foregoing legal doctrine to a trial to confirm the scope of a trademark right and the litigation to revoke the trademark right. In other words, a trial to confirm the effect of a trademark right on a challenged mark, which is the object of a trial, at the request by a claimant, is limited to the confirmation of the right to confirm whether the trademark right affects the trademark right. If the trial decision becomes final and conclusive, a trial to confirm the scope of a trademark right has the effect of res judicata against a third party as well as the parties to a trial, other than a trial decision, and a third party (see, e.g., Supreme Court Decisions 201Hu101, Feb. 14, 2013; 201Hu3872, Mar. 15, 2012). (2) It is sufficient that the challenged mark, which is the object of a trial to confirm the scope of a trademark right, and it is not sufficient to specify the composition of the mark and the goods using the trademark right.

3) Meanwhile, when determining similarity of trademarks at the stage of determining the eligibility for registration of trademarks, the "general transaction practices" surrounding the relevant goods shall be taken into account. In other words, even if two trademarks seem similar to each other in their appearance, name, and concept, considering the general transaction circumstances surrounding the relevant goods, the degree of awareness of the relevant goods, and the relationship with the relevant goods comprehensively and comprehensively, in a case where consumers are unlikely to be mistaken or confused with the origin of the goods in a trade society, in a case where the specific and individual transaction society does not interfere with the protection of the relevant trademark right holder, consumers, and traders even if both trademarks exist, registration of such trademark shall not be prohibited or registered (see, e.g., Supreme Court Decisions 2005Hu2250, Oct. 26, 206; 99Hu2532, Oct. 21, 200; 196Hu3969, Oct. 196, 197; 209Hu965969, Oct. 196, 19697).

4) Furthermore, it is reasonable to view that, in determining similarity of marks in a lawsuit seeking revocation of a trademark right scope and a trial seeking revocation thereof, “specific transaction circumstances of the parties” regarding the pertinent goods may be considered. This is the same in the following points:

A) The purpose of a trial to confirm the scope of a trademark right is to ensure the prevention of disputes and prompt remedy against infringement of the right to a registered trademark by ensuring that the challenged mark infringes on the right to a registered trademark or is in conflict with the right to a registered trademark. In other words, a trial to confirm the scope of a trademark right does not simply confirm the scope of effect of the trademark right itself, but rather to confirm whether the challenged mark, which is the object of a trial, falls under the objective scope of the trademark right that has the effect of the trademark right (see, e.g., Supreme Court en banc Decision 2016Hu366, Nov. 14, 2017; Supreme Court Decision 2012Hu4162, Mar. 20, 2014; Supreme Court Decision 2010Hu289, Oct. 9, 2010; 82Hu24, Oct. 26, 1982; 2013).

B) In a trial to confirm the scope of a right to a trademark, when determining whether the challenged mark has been used as a trademark or is within the scope of which the effect of the trademark right is restricted due to the prior question, the following should be comprehensively taken into account: (a) the parties’ specific transaction circumstances or actual usage patterns with respect to the pertinent goods; (b) 2010Hu3073 decided May 24, 2012; (c) 2012Hu3206 decided February 28, 2013; (d) 2000Hu3807 decided November 13, 202; and (e) 2010Hu3387 decided May 10, 2012; and (e) whether the challenged mark falls within the scope of the trademark right can be considered in a trial to confirm the similarity of the trademark right without reasonable grounds; and (e) whether the challenged mark falls within the scope of the party’s trademark right.

C) In a trademark infringement lawsuit, when determining similarity of marks based on the general and sub-party transaction circumstances regarding the pertinent goods, the determination of similarity of marks in the scope of a trademark right and the determination of similarity of marks in the lawsuit seeking confirmation of the scope of a trademark right can sufficiently be inconsistent with each other’s specific transaction circumstances, and this would not result in examining the purport of the system of the confirmation trial on the scope of a right, prior to promoting prompt remedy for infringement. The similarity of marks is ultimately based on whether the traders or ordinary consumers are likely to mislead and confuse the origin of the goods. The conclusion that a trial on the confirmation of the scope of a trademark right is inconsistent with the trade reality surrounding the trademark, and further, the confirmation system on the scope of a right would be likely to lead to leaving the system on the confirmation of the scope of a right neglected to abuse and abuse the trademarks in a form different from the actual dispute. In the present situation where the confirmation system on the scope of a right is still maintained, it is reasonable to prevent the absence or abuse of the above system.

D) Similar to the case of general transaction circumstances in a trial to confirm the scope of a right, even if considering the specific transaction circumstances, there is no conflict or inconsistency with the validity of a decision on the specific transaction conditions or the res judicata effect of a decision on the trial. In other words, it is sufficient that (i) the trademark subject to confirmation is merely a legal doctrine regarding the specification of the mark subject to confirmation as the purport of the claim, and that such legal doctrine does not prevent any assertion, proof, or judgment as to the specific transaction circumstances of the parties as the cause of the claim, even if a trial request again for a trial to confirm the scope of a right on the same mark as the mark subject to confirmation in a trial to confirm the scope of a right, it does not conflict with the principle of res judicata in cases where there is a new submission of sufficient evidence as to the specific transaction circumstances that could change the conclusion as to the similarity of the previous decision on the relevant goods or to reverse the conclusion as to the similarity of the trademark.

E) However, in a trial to confirm the scope of a trademark right and its revocation litigation, the determination of similarity of a mark shall not be deemed to have been based on the parties’ specific transaction circumstances in addition to the general transaction circumstances regarding the relevant goods, such as trademark infringement litigation. ① A trial to confirm the scope of a trademark right does not confirm the infringement of a trademark right in a subjective relationship between the trademark right holder and the infringer, but rather, it aims to confirm the right to objectively confirm whether the trademark right has an effect on the challenged mark which the claimant uses as the object of the trial, and ② There may be much cases where the parties’ specific transaction circumstances on the relevant goods have not been formed at the time of the trial decision.

Therefore, in principle, the general transaction circumstances surrounding the relevant goods, the degree of well-known the relevant goods, and the relationship with the relevant goods shall be considered comprehensively and comprehensively. However, it is reasonable to view that the similarity of marks can be determined by taking into account the circumstances where the specific transaction circumstances of the relevant goods have already been formed at the time of the trial decision, and it does not extend to the extent that it does not cause mistake or confusion as to the source of goods to ordinary consumers.

5) A total of more than one can be organized into the following legal principles:

In a trial to confirm the scope of rights to a trademark, the similarity between the registered trademark and the challenged mark shall be determined based on whether the appearance, name, and concept of the trademark might be objectively, comprehensively, and qualitatively observed and may cause mistake or confusion as to the origin of the product in the transaction of the product concerned based on the direct perception that ordinary consumers feel (see, e.g., Supreme Court en banc Decision 201Hu3698, Mar. 20, 201). However, the general transaction circumstances surrounding the product concerned, the degree of well-knownness of the trademark, and the relationship with the product concerned shall be comprehensively and comprehensively considered (see, e.g., Supreme Court Decisions 2005Hu2250, Oct. 26, 206; 9Hu2532, Jan. 21, 200).

C. Whether the challenged mark and the registered trademark are similar

1) Preparation for text parts

In determining the similarity of trademarks, the name of a trademark consisting of foreign characters is, in principle, determined by the idea that most of the Korean traders or consumers report the foreign characters and naturally make them difficult without any special difficulty (see, e.g., Supreme Court Decision 2005. Nov. 10, 2005). The letter part of the registered trademark “” is a symboling “Sbo” to the extent that “Sbo” does not suppress its character perception. The letter part of the challenged mark “” in the challenged mark is designed to read “soba” to the extent that it does not suppress its character recognition, and is deemed to be called “consumption” or “soba”. In both names, first and second, the word is identical to “vii7” and “soba” and “soba” as a whole, and it is highly difficult to see that the word “as a whole,” as a whole, is similar to the registered trademark in terms of their location or method, and second, it is highly probable to reduce its appearance as a whole.

2) Preparation for the figure portion

“The figure portion of the challenged mark” refers to the appearance of a large number of flowers leaves from the center to the external point of view, thereby citing images such as a safry. The figure portion of the registered trademark “” can be seen as having the same image connected with the appearance of the outer direction in sighting the outer range from the center (it is difficult to conclude as above, although the Defendant asserts that the figure portion of the registered trademark has the image of a saf or the safy original image). When observing and observing the respective figure portion of the registered trademark, there are some differences, such as where multiple flowers leaves are placed in radiation or consisting of the shape of the safs in sight direction, but it is possible to perceive that the overall structure and the increase thereby is very similar.

(iii) the circumstances of transaction with respect to the good, etc.

A) According to the purport of evidence and the entire pleadings Nos. 2-9, 11-17, 19, 23, and 24, the following facts may be acknowledged.

(1) At the time of adjudication, the Defendant, by itself, specified the use of the challenged mark as follows:

A person shall be appointed.

(2) Until the time of the instant trial decision, the original and the Defendant sold the trademark or the challenged mark on the “human coar” product in the following pattern:

A person shall be appointed.

(3) At the time of the instant decision, some online shopping mall introduces the Defendant’s non-exclusive products as “Sababababababa,” and “new brand of Sababababa Korea,” etc. Around the same time, some consumers publish, along with the Internet Blobag, the following pictures, “Ibabababababababababa,” “Ibababababababababa,” “Ibabababab,” and “Ibabababababa,” “Ibababababababa,” and “Ibabababababababababababa

A person shall be appointed.

(4) On May 2012, the Plaintiff started manufacturing business, etc. with the trade name “private father Korea.” After the Plaintiff’s application for the registered trademark and registration, the Plaintiff and the Plaintiff’s punishment Nonparty, together with the Defendant who was in charge of product distribution around June 2016, established private side Korea as the Defendant. A dispute arises between the Plaintiff and the Defendant on September 17, 2016, and the Plaintiff reached a dispute with the Defendant around October 17, 2016, on the grounds that “the Defendant was not authorized to use the registered trademark, but cannot maintain trust with the Defendant.” On the other hand, the Defendant and the private side Korea Co., Ltd. notified the Defendant of the purport that “the Defendant would suspend the use of the registered trademark as to the registered trademark,” and that “the Defendant was not required to permit the use of the registered trademark and the non-exclusive license as to the registered trademark on the ground that it was no longer identical to the non-exclusive license as to the registered trademark.” On October 26, 2016.

B) According to the above facts, the following points are revealed.

(1) First, the marks, such as “” or “”, according to the Plaintiff’s pattern of use, are somewhat different from the position of the figure segment in comparison with the registered trademark, but such transformation cannot be deemed to have reached a loss of identity with the registered trademark in light of the trade norms, and thus, can be seen as identical with the registered trademark.

A person shall be appointed.

(2) In that the Defendant used the challenged mark on the human body of various over-day shape (hereinafter “Defendant products”), the Defendant’s products are common with the Plaintiff’s human body booms according to the Plaintiff’s pattern of use (hereinafter “Plaintiff products”). The product of the Plaintiff is rarely different in the specific shape of the various over-day shape. The Defendant’s products are common with the Plaintiff products in that they are surrounded by the belt, and the upper part of the belt is colored, and there is no difference between the Defendant’s products and the Defendant’s products in that the three English characters are arranged on the green side of the belt. The Defendant’s products are shared with the Plaintiff’s products in that there is a stamp with the verification mark “, etc.,” etc., affixed to the center of the belt around the Defendant’s products, on the basis of inspection, and the shape and shape on the upper part, together with the trademark subject to confirmation mark or the trademark subject to confirmation, and the product overlaps with the original mark or the trademark subject to confirmation.

(3) The case where the registered trademark or its title and the mark subject to confirmation are recognized as one source in the trade society regarding the pertinent goods, which are real niven for human body, without clear distinction.

4) Sub-determination

In full view of the above facts of recognition and the above circumstances known therefrom based on the legal principles as seen earlier, if the challenged mark and the registered trademark are used together, it is likely to cause general consumers or traders to mislead or confuse the origin of goods. Thus, the challenged mark and the registered trademark should be deemed similar. Goods using the challenged mark are the same as “human insurine” among the designated goods of the registered trademark. Therefore, it is reasonable to deem that the challenged mark fall under the scope of the right of the registered trademark.

3. Conclusion

Therefore, the decision of this case, which is the defendant's appeal, is unfair because the challenged mark does not fall under the scope of the plaintiff's registered trademark right, unlike this court's conclusion, and the plaintiff's claim seeking revocation is reasonable, and it is so decided as per Disposition with the assent of all participating Justices.

Judges Yoon Sung-sung(Presiding Judge) (Presiding Judge)