[1] The case holding that a registered service mark "Nadoro" falls under a technical service mark related to "certified labor affairs consultant business, legal research and assistance business, certified judicial scrivener business, patent attorney business, lawyer business, copyright management business, intellectual ownership licensing business, intellectual property consulting business, patent exploitation business, administrative business," which is its designated service business

[2] The case holding that among the designated service business of the registered service mark "Nadoro", the act constitutes grounds for invalidation under Article 23 (1) 4 of the Trademark Act since there is no objective intention to use the service mark "Attorney, Certified Public Labor Attorney, Administrative Agent, and Certified Judicial scrivener"

[1] The case holding that a registered service mark "Nadoro" is a service mark consisting solely of a mark indicating a common way of providing the above designated service without delegation of work to a professional worker in relation to "certified labor affairs consultant business, legal research business, certified judicial scrivener business, patent attorney business, lawyer business, copyright management business, intellectual property licensing business, intellectual property consulting business, patent-use consultation business, administrative business," which is the designated service business

[2] The case holding that among the designated service of "Nanaro" registered service marks, "Attorney business, patent attorney business, certified judicial scrivener business, certified public labor affairs consultant business, and administrative business" are service businesses that can only provide a certain qualification, and trademark rights are generated by registration and actually used by adopting the registration principle, not the principle of use, and the trademark rights are not the requirement of the establishment of the trademark rights, so the "person who intends to use the trademark/service mark in Korea" as well as "the person who intends to use the trademark/service mark in Korea" can be registered, but the person who intends to use the trademark/service mark should be "the person who intends to use the trademark/service mark at least", and the trademark/service mark registered without the intention to use it cannot be registered because it does not fall under the trademark/service mark under Article 2 of the Trademark Act, i.e., the person who wishes to use the trademark/service mark does not fall under the trademark/service mark, and it does not objectively determine whether it is an intention to use the trademark/service mark, and it does not fall under the objective grounds for invalidation.

[1] Article 6 (1) 3 of the Trademark Act / [2] Articles 2, 3, and 23 (1) 4 of the Trademark Act

Mychomama

Baro.com (Attorney Kim Yong-jin, Counsel for the defendant-appellant)

November 21, 2003

1. The plaintiff's claim is dismissed.

2. Litigation costs shall be borne by the plaintiff.

The decision made by the Intellectual Property Tribunal on July 28, 2003 on the case No. 2002Dang2749 is revoked.

1. Basic facts

[Evidence: Descriptions of Evidence No. 1, 3, and 4; All purports of oral argument]

A. Registered service mark of this case

(a) Registration number: No. 74030;

(2) Date of application / Date of registration: June 19, 2000 / March 4, 2002

(3) Composition:

(4) Designated service business: Article 6 (1) [Attachment 2] [Attachment 2] of the former Enforcement Rule of the Trademark Act (amended by the Ordinance of the Ministry of Trade, Industry and Energy No. 146 of December 24, 2001; hereinafter the same shall apply], Article 6 (1) [Attachment 2].

B. Details of the instant trial decision

The defendant filed a petition for a trial to invalidate the registered service mark of this case on the ground that it constitutes an ordinary name, an official mark, and a technical mark under Article 6(1)1, 2, and 3 of the Trademark Act. The Korean Intellectual Property Trial and Appeal Board reviewed the above case as 202Da2749 and rendered a trial ruling citing the above case on July 28, 2003 on the ground as follows.

C. Summary of the reasoning for the instant trial decision

The registered service mark of this case is a mark commonly used in the form of service, such as counseling by experts and providing forms, in order to effectively resolve the high frequency of occurrence among the legal issues that occur in the surrounding areas at low cost, and it can be recognized that the domain name of similar claimant is registered as a domain name in the Republic of Korea on December 27, 1999, prior to the date of the decision to register the service mark of this case. According to the above recognized facts, the registered service mark of this case, without appointing a case to an attorney-at-law, patent attorney, etc. by general consumers or traders, shall be directly sensed with the purport of himself, etc.

Therefore, if this is used for a certified judicial scrivener business, patent attorney business, and lawyer business, etc., the registered service mark of this case constitutes a service mark consisting solely of a mark indicating the type, method, etc. of the designated service in a common way.

2. The party's assertion as to the legitimacy of the trial decision of this case

A. Grounds for revoking the trial decision of the plaintiff's assertion

(1) Whether the registered service mark of this case is technical mark

The registered service mark of this case can be understood as "dones" alone, and the detailed contents of the service mark of this case can not be specified in relation to the lawyer's business, patent attorney's business, patent attorney's business, etc., which is the designated service business, and it is not a general term indicating its nature in relation to the designated service business. In particular, the method of not appointing a case to an attorney-at-law or patent attorney's qualification company, etc. does not describe the form or method of providing services, such as attorney-at-law or patent attorney's business, and thus, the registered service mark of this case does not indicate the form or method of providing the designated service business, and it is not a technical mark.

(2) Special flexibility of the registered service mark of this case

The registered service mark "Indones" in this case is a lighting service mark that cannot be found in advance, and it means that the service mark "indones" with the name of "indones" and "indones" with the intention of "indones alone, alone" are combined, and its distinguishability is recognized, such as being registered with other goods and service business as designated goods and/or service business, and it is an ambiguous mark that form a sense of expectation that goods or services are convenient to consumers by the meaning of "indones alone," and is a special modernization mark, that is, a distinctive mark.

Even if the registered service mark of this case is related to an attorney-at-law or patent attorney-at-law or patent attorney-at-law, it cannot be a technical mark for designated service business that is not related to the qualification of an attorney-at-law or patent attorney-at-law, such as legal research and development business, copyright management business, intellectual property licensing business, patent license license

(3) The domain name of the defendant is well known and well-known.

The defendant's domain name "nahocho.co.kr" has no relation with the invalidity of the registered service mark of this case prior to the date of decision on the registration of the service mark of this case, and the defendant's actual commencement of business using the domain name "www.nahoco.com" is not deemed to have obtained the well-knownness of the defendant's domain name since it was around June 19, 200, which was about one year after the filing date of the registered service mark of this case, and around June 19, 2001.

B. Defendant’s assertion

(1) Whether the registered service mark of this case is technical mark

The registered service mark of this case is interpreted to mean that the person with the certificate of qualification can resolve the case alone without appointing a case in the case of legal services, such as the attorney-at-law business. Thus, the case where the mark "Nadoro" as claimed by the plaintiff falls under the technical mark related to the designated service business, and the case where the trademark "Nadoro" is registered as a trademark or service mark is not considered because the examination of actual requirements of the registration of the trademark/ service mark was not

(2) Violation of the Trade Name and Unfair Competition Prevention Act of the registered service mark of this case

In addition, the defendant company registered and used the "nahophone.com", which is the trade name of the defendant company, prior to the application of the registered service mark of this case, and the defendant company's registration and use the domain name of this case, and more than 1,00 persons access more than 70,00 members per day on the Internet site, and obtained well-knownness of the above domain name by holding 70,00 members more than 70,00 members. Thus, the use of the registered service mark of this case constitutes the infringement of the trade right which the defendant company properly holds under the commercial law and the

(3) Failure to use the trademark

The plaintiff, who is the right holder of the registered service mark of this case, has never used the registered service mark of this case so far, and exercises his right only through the filing of a lawsuit. The registration of the trademark without the intention of use is not permissible in light of the purport of the Trademark Act, and constitutes an abuse of rights.

3. Determination

A. Whether the registered service mark of this case is technical mark

Since 'the designated service business of this case', 'the registered service mark of this case', 'the legal professional business of this case, 'the legal professional business of this case', 'the attorney-at-law, patent attorney-at-law, 'the intellectual property management business', 'the intellectual property consulting business', 'the patent use business', 'the service business' is a service business that satisfies the demand for specific professional field by utilizing professional knowledge and experience of 'the general public with no professional knowledge and experience', 'the above service business', 'the designated service mark of this case is not restricted to 'the business of this case', 'the construction business of this case', 'the construction business of this case', 'the construction business of this case', 'the construction business of this case', 'the construction business of this case', 'the construction business of this case', 'the construction business of this case', 'the construction business of 'the registered service mark', 'the construction business of this case, ' by consultation or consultation about public administration.

In addition, the registered service mark of this case, like the registered service mark of this case, is the mark that attempts to solve the problem by the person's own force, and it is not appropriate for only a specific person to monopoly the registered service mark of this case, considering the public interest.

As to this, the plaintiff argues that the method of preventing the appointment of a case to a person with certain qualifications, such as an attorney-at-law, patent attorney, etc. does not describe the form or method of providing services, such as attorney-at-law or patent attorney-at-law, etc., and therefore, it would be an important method even though the client's attempt to resolve the problem by himself as seen earlier does not include all the methods of providing the designated service of the registered service mark of this case. Therefore, the plaintiff's above assertion is without merit.

B. Determination on the Plaintiff’s assertion regarding some designated service business

Furthermore, even if the registered service mark of this case is related to the service business requiring qualification as an attorney-at-law, the Plaintiff asserts that the registered service mark of this case cannot be a technical mark even with respect to the designated service business not related to qualification, such as legal research and development business, copyright management business, etc. so long as the designated service business, such as the above legal research and development business, copyright management business, etc., cited by the Plaintiff, is a service business that enables people with considerable professional knowledge and experience to provide a better level of service, even though it is not a service business that can provide only a certain person with a certain qualification, there is no change in the circumstance that the registered service mark of this case enables people with considerable knowledge and experience to solve the problem related to such service without other people's help. Thus, the Plaintiff's above assertion is without merit (in addition, if the registered service mark of this case directly related to the legal research and development business of this case, among the designated service business, is a service business that requires qualification as an attorney-at-law, and it cannot be deemed a service business that is not related to a certain qualification

C. Determination as to the Plaintiff’s assertion on the registration precedents of other trademarks/service marks

In addition, the Plaintiff asserts that the registered service mark of this case should not be invalidated since it is recognized as a mark with distinguishability, such as being registered with other goods and service business as designated goods/service business, etc. Thus, whether the registered service mark of this case is qualified for registration should be judged individually in accordance with each trademark in relation to the designated goods. Even if a trademark or service mark identical or similar to the trademark in question is registered as a trademark or service mark because of different designated goods or service business, the registration of the trademark in question does not necessarily have to be permitted even in the case of the trademark in question (see Supreme Court Decisions 96Hu1170, Mar. 28, 1997; 200Hu1658, Nov. 28, 200). The Plaintiff’s above assertion is without merit.

D. Determination on the intention of use

Under the Attorney-at-Law Act, among the designated services of the registered service marks of this case, a lawyer's practice, patent attorney's practice, certified judicial scrivener's practice, certified public labor attorney's practice, and administrative service, an attorney-at-law's practice as delegated by a party, etc. (Article 2) and an attorney-at-law's practice as an agent in a lawsuit or as an agent in a request for administrative disposition (Article 3), only a person with certain qualifications (Article 4), and a person who is not an attorney-at-law or a person who is not an attorney-at-law is prohibited from hiring an attorney-at-law (Article 34, Section 1, 3, and 4 of the Attorney-at-law Act). According to the Certified Public Accountant Act, a person who has passed the qualification examination of a certified public labor attorney-at-law can not use his name (Article 3), a person who is not a certified public labor attorney-at-law or a person who is not a certified public labor attorney-at-law can not provide administrative affairs (Article 2).

On the other hand, the Trademark Act adopts the principle of registration which is not the principle of use, and the issue of whether the trademark is actually used by registration is not the requirement of the establishment of the trademark, and therefore the trademark right is not the requirement of the establishment of the trademark, so that not only the person who intends to use the trademark/service mark in Korea but also the person who intends to use the trademark/service mark may be registered, but also the person who intends to use the trademark/service mark shall have the intention to use at least the "to use". The trademark/service mark registered without the intention to use is not the trademark/service mark under Article 2 of the Trademark Act, i.e., the trademark/service mark, which is not the trademark/service mark, and it shall be interpreted that the intention to use the trademark/service mark is not the subject of the applicant of the trademark/service mark, but the external expression of the intention

On the other hand, the case was returned to the case, and the fact that the plaintiff was not qualified as a lawyer, certified public labor affairs consultant, certified judicial scrivener, or licensed administrative agent, as well as the time of the decision to register the service mark of this case until the conclusion of the lawsuit in this case is concluded by the plaintiff himself. Thus, the plaintiff cannot be deemed to have an objective intent to use the registered service mark of this case since he was objectively qualified to provide the service mark.

Therefore, among the designated service business of the registered service mark of this case, there is no objective intention to use the "Attorney Business, Certified Public Labor Attorney Business, Administrative Business, and Certified Judicial Scriveners Business", and there is no reason for invalidation under Article 23 (1) 4 of the Trademark Act.

Furthermore, since the use of a service mark can be achieved through the establishment of an exclusive license or a non-exclusive license, even though the Plaintiff had an intention to establish an exclusive license or a non-exclusive license from the time of application for the registered service mark of this case, if a person whose use of a service mark through the provision of the original service was prohibited by law applies for a service mark, registers, and grants a service mark to be held for the purpose of establishing an exclusive license or a non-exclusive license for the purpose of establishing an exclusive license or a non-exclusive license for the use of the service mark to the person who is qualified to provide the service after the registration, then it is contrary to the purport of the Trademark Act that allows a trademark/service mark to play a role as an identification mark distinguishing the source of the goods/services of the person who is not qualified to provide the service, thereby causing inconvenience to the provision of the service by preventing the legitimate service provider from using a proper identification mark. Accordingly, such trademark/service mark application constitutes abuse of rights, which constitutes grounds for invalidation under Article 7(1)4 of the Trademark Act regarding the designated service business of this case.

E. Sub-committee

Therefore, the registered service mark of this case is registered in violation of Article 6(1)3 of the Trademark Act (as to the attorney-at-law, certified labor affairs consultant, administrative affairs, and legal affairs among the designated services, in addition, Articles 23(1)4 and 7(1)4 of the Trademark Act) and should be invalidated without any need to review the remaining grounds for invalidation of the defendant.

4. Conclusion

Thus, the trial decision of this case as above is just, and the plaintiff's claim of this case is without merit.

Judges Cho Yong-ho (Presiding Judge)