SPS Co., Ltd. (Patent Attorney Ansan-ro, Counsel for the defendant-appellant)

Defendant (Patent Attorney Jeong-ju, Counsel for defendant-appellant)

November 4, 2011

1. The plaintiff's claim is dismissed.

2. The costs of lawsuit shall be borne by the Plaintiff.

The Korean Intellectual Property Tribunal's decision on the case No. 2010Da673 on June 1, 201 shall be revoked.

1. Basic facts

A. The registered trademark of this case

1) Date of application/registration date/registration number: August 8, 2008 / Trademark Registration No. 756469 of October 5, 2007

2) Gu sex:

3) Designated goods: as stated in [Attached].

B. First Used Trademark

1) First Used Trademark 1

A) Date of application/registration date/registration number/ extinguishment date: June 16, 1978/ May 8, 1979/ Trademark Registration No. 61269/ May 9, 1989

B) Gu sex:

(c) Designated goods: Telephone bed, book, book, book, clothes, book display, kidne, kidne, kidne, table, table, table, table, table, chair, chair, cream, table, table, table, table, cream, agriculture, and design.

D) Person entitled to registration: Chang Industrial Company

2) First Used Trademark 2

A) Date of application/registration date//registration number/ extinguishment date: April 21, 1979/ January 22, 1980/ Trademark Registration No. 66873/190

B) Gu sex:

(c) Designated goods: Telephone bed, book, book, book, clothes, book display, kidne, kidne, kidne, table, table, table, table, table, chair, chair, cream, table, table, table, table, cream, agriculture, and design.

D) Person entitled to registration: Chang Industrial Company

3) First Used Trademark 3

A) The filing date/registration date/registration number/Renewal/Renewal of the registration date: the filing date: July 23, 1985/ August 26, 1986/ Trademark Registration No. 129320//3.24/1997.

B) Gu sex:

(c) Designated goods: funeral, cremation, cremation, decoration, decoration, book book, chair, table, table, table, table, bed, soften, soften, soften, soften, soften, chron, audio boxes, audio boxes, door boxes, telephone boxes, twits, clocks, clocks, and clocks.

D) Person entitled to registration: Chang Industrial Company

C. Details of the instant trial decision

1) On March 19, 2010, the Plaintiff filed for a trial to invalidate the registered trademark of this case against the Defendant on the ground that it falls under Article 7(1)12 of the Trademark Act and its registration should be invalidated, since the registered trademark of this case is a trademark which imitates the pre-use trademarks recognized as a trademark of a specific person in Korea and is used for an unlawful purpose.

2) On June 1, 2011, the Korean Intellectual Property Tribunal rendered a ruling dismissing the Plaintiff’s request for a trial on the ground that the pre-use trademark at the time of filing of the instant registered trademark cannot be deemed to have been known as indicating a specific person’s goods at the time of filing of the instant registered trademark, and that the instant registered trademark does not fall under Article 7(1)12 of the Trademark Act.

[Reasons for Recognition] Gap Nos. 1, 3-5

2. Whether the registered trademark of this case falls under Article 7 (1) 12 of the Trademark Act

A. Criteria for judgment

Article 7(1)12 of the Trademark Act does not allow a registration of a trademark which is used for the purpose of causing damage to the trademark right holder by means of impairing the business reputation or the intangible value of human resources, etc. embodied in the trademark of a specific person or obstructing his/her business in the Republic of Korea, or impairing the trademark right holder's business operation in the Republic of Korea by using the trademark which is recognized as a trademark of a specific person by consumers in the Republic of Korea or in a foreign country. Thus, in order to fall under the above provisions, a trademark must be recognized as a trademark of a specific person between domestic or foreign consumers, and it shall be deemed that the applicant uses the trademark for such unlawful purpose as intending to obtain unfair profits or inflict damage on other persons. The time of determining the requirements shall be determined at the time of application for the trademark (see, e.g., Supreme Court Decisions 2002Hu1362, May 14, 2004; 2010Hu78, Jul. 8, 2015).

B. Whether the pre-use trademarks should be used at the time of filing a registered trademark

In order for the registered trademark to fall under Article 7 (1) 12 of the Trademark Act, the pre-use trademark to be recognized as indicating the goods of a specific person between domestic or foreign consumers at the filing date of the registered trademark. However, the purpose of the Trademark Act is to maintain the business reputation of the user by protecting the trademark (Article 1 of the Trademark Act). Since the trademark refers to a mark "use" to distinguish goods related to one's own business from those of others (Article 2 (1) 1 of the Trademark Act), it is difficult to view that the trademark which is not used by the trademark owner falls under the "trademark" under the Trademark Act.

In addition, Article 7(1)12 of the Trademark Act aims to prevent a third party, who is not a legitimate trademark right holder, from denying the use of a trademark by obtaining trademark registration by unlawful means, or from damaging the intangible value of business reputation or customer attraction personnel, etc., which is embodied in the trademark, and to protect the rights and interests of a legitimate trademark user on the premise that the pre-use trademark is being used. If the pre-use trademark is recognized as a trademark by a specific person, even if it is not used as a trademark, if Article 7(1)12 of the Trademark Act can be applied even if it is not used as a trademark, it is contrary to the purport of the above provision to protect the rights and interests of a legitimate trademark user.

Furthermore, under Article 7(1)8 of the Trademark Act, a trademark identical or similar to the registered trademark may be registered at any time one year after the trademark is extinguished. If a trademark of a specific person is not used in applying Article 7(1)12 of the Trademark Act, the mere fact that a specific person’s trademark was registered and one year has yet to be used as a specific person’s trademark despite the extinguishment of the trademark, may prevent another person from registering the same or similar trademark from being applied Article 7(1)12 of the Trademark Act. This would result in an unreasonable reduction in the scope of application of Article 7(1)8 of the Trademark Act by extending the exclusive status of a person who does not use the trademark. Meanwhile, under Article 7(4) of the Trademark Act, if a trial decision becomes final and conclusive due to a violation of Article 7(1)12 of the Trademark Act, the legitimate trademark right holder is not entitled to Article 7(1)8 of the Trademark Act’s application for trademark registration for a specific person’s term of trademark registration under Article 7(1)7(1)7)1 of the Trademark Act without just cause.

Ultimately, Article 7(1)12 of the Trademark Act applies only where a specific person uses the trademark at the filing date of the registered trademark or intends to continue to use the trademark at least as a trademark, in full view of the purpose of the trademark as seen above, the definition of the trademark, and the purport of the relevant provisions under Article 7(1)12 of the Trademark Act.

C. Application to the instant case

1) According to the evidence Nos. 6-163 returned to the instant case and evidence Nos. 163, it is recognized that the first-board trademark company used the pre-use trademark as a trademark for the goods of the household from around 1973 to February 1991. The trademark was modified from around March 1991 to use the trademark as a trademark for sunWoD, 's prior-use trademark' or 'pred' as a trademark instead of the pre-use trademark, and the first-board industrial company came to know of the change of the trademark through advertisements around March and April 1991 and the press reported the change of the trademark on several occasions. On the other hand, since the first-board industrial company did not register the renewal of the trademark, the first-board trademark 1 was extinguished on May 9, 198; the second-use trademark 23, Jan. 23, 190; and the second-use trademark 3, 2006.

In light of the following circumstances revealed by the above facts, i.e., the pre-use trademarks have not been used as trademarks for 16 or more years from March 1991 to October 5, 2007, which were the filing date of the trademark of this case, the pre-use trademarks have not been used as trademarks; the pre-use trademarks have been actively modified by the pre-use trademarks and have been notified externally; and the renunciation of renewal of the pre-use trademarks has been made by the pre-use trademarks, it is determined that the Plaintiff, which was divided in the pre-use trademarks of the pre-use trademarks of this case and the pre-use trademarks of the pre-use trademarks, had no intention to use as trademarks any more at the time of the application

2) As to this, the Plaintiff asserts that the pre-use trademarks were used as trademarks by means of advertising, etc. from 1991 to the time of application for the trademark of this case.

According to the evidence Nos. 86-98, 99-40-50-55, 100-52-69, and 181, it is recognized that the first-use trademark and the plaintiff used words such as "the first-use trademark company and the plaintiff were newly born from March 1, 1991 to January 2005 as sunWoD's first-generation households", "the reputation of the first-use trademark", and "the second-generation household preference of the first-generation wife" as they are, as they are, advertising. However, it is a new trademark that intends to maintain the business credibility or customer attraction of the second-use trademark, and it cannot be viewed that the first-use trademark was used as a trademark prior to the filing date of the above advertisement. Furthermore, the above advertisement cannot be viewed as using the second-use trademark as a trademark prior to the filing date of the first-use trademark.

In addition, according to Gap evidence 175-179, it is recognized that some of the agents of "preferred households" are the agents of "Preferential households" on the Internet before and after the filing date of the trademark of this case, such as "Preferential Agency", "Preferential Household U.S. B. B. B. B., "Preferential Agency", "P. B. B. P. P. P. P. P. P. P. P. P. P. P. P. P. P. P. P. P. P. P. P. P. P. P. P. P. P. P. P. P. P. P. P. P. P. P. P. P. P. P. P. P. P. P. P. P. P. P. P. P. P. P. P. P. P. P. P. P. P. P. P. P. P. P. P. P. P. P. P. P. P. P. P. P. P. P. P. P. P. P. P. P. P. P. P. P. P. P. P. P. P. P. P. P. P. P. P. P. P. P. P. P. P. P. P. P. P............................................

Furthermore, according to the evidence Nos. 182-203, 217-221, it is recognized that high-ranking households, which are known as "rayer households" or "rayerer households," have been continuously traded in the middle and high market after the filing date of the instant registered trademark ( October 5, 2007), as well as after the lapse of 1991. However, given that middle and middle-standing households are products with a trademark in the past, rather than the trade time, they are products with the trademark, the time when the trademark is used is difficult.

Therefore, the above evidence alone is insufficient to recognize that the pre-use trademarks continued to have been used until the filing date of the instant registered trademark since around 1991, and there is no other evidence to acknowledge it. Therefore, the plaintiff's above assertion is not accepted.

D. Sub-determination

Ultimately, the pre-use trademarks do not use or intend to use as a specific person at the filing date of the instant registered trademark. Thus, the registered trademark of this case does not fall under Article 7 (1) 12 of the Trademark Act without examining the remaining points.

3. Conclusion

Therefore, the trial decision of this case is legitimate, and the plaintiff's claim of this case seeking revocation is without merit, and it is dismissed. It is so decided as per Disposition.

[Attachment]

Judges Cho Jae-soo (Presiding Judge)