[1] Whether a well-known character or its name is a well-known and well-known trademark whenever used in a trademark (negative), and the standard of its determination

[2] Whether using the title of a famous work or its character as a trademark falls under Article 7 (1) 4 of the Trademark Act (negative)

[1] The so-called character appearing in a famous work or its name can not be determined to be widely known to consumers as the product mark of a specific group or trademark, because it is a customer attraction. In such a case, the character or its name can be used in a trademark such as indicating the source of the product or quality assurance function. In such a case, if the character or its name is used in a trademark through the commercialization business, the character itself is well-known and its use in the trademark itself is widely known to consumers or if it is the product mark of a specific group carrying on the commercialization business of the character, it can not be determined to the extent that it can be perceived as the product mark of the specific group or trademark. Thus, whether the character or its name is commercialized, and whether the character or its name can be widely known in terms of social norms, should be determined in full view of whether the character or trademark becomes widely known within the country.

[2] The name of the title or character of a work cannot be deemed as a work that is defined as a subject of copyright protection under Article 2 subparag. 1 of the Copyright Act because it is difficult to view it as an expression of ideas or emotions by itself, and anyone can freely use it, barring special circumstances. Thus, even if a work or character is well-known or well-known, it cannot be said that the name of the work or character is embodied, apart from its own property value inherent in the work or character itself. Thus, insofar as the act of using the trademark upon registration cannot be deemed as an act of infringing on copyright, it cannot be deemed as an act of directly infringing on the property value inherent in the work, and it cannot be deemed as an act of going against public order or good public morals under Article 7(1)4 of the Trademark Act.

[1] Article 7 (1) 4 and 11 of the Trademark Act / [2] Article 7 (1) 4 of the Trademark Act, Article 2 subparagraph 1 of the Copyright Act

[1] Supreme Court Decision 96Do139 delivered on September 6, 1996 (Gong1996Ha, 3077), Supreme Court Decision 96Do1727 delivered on April 22, 1997 (Gong1997Sang, 1679), Supreme Court Decision 98Hu843 delivered on May 30, 200 (Gong200Ha, 1566) / [2] Supreme Court Decision 77Da90 delivered on July 12, 197 (Gong1977, 10198)

Kim Young-chul (Patent Attorney No. Gaun et al., Counsel for the defendant-appellant)

Kim Jong-hwan (Attorney Kim Jong-sik et al., Counsel for the plaintiff-appellant)

July 3, 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 February 27, 2003 on the case No. 2002Dang2194 shall be revoked.

1. Basic facts

The following facts may be acknowledged in light of the whole purport of the pleadings in the descriptions of Gap evidence 1, Gap evidence 2-1, Eul evidence 2-2, and Eul evidence 3.

A. Details of the registered trademark of this case

(1) The composition; "(2) registration number; (3) the filing date / the registration date / the registration date; (4) the right holder March 28, 200 on April 12, 199 / March 28, 200; and (5) the designated goods of the Defendant; (3) the right holder; (4) the classification of products under Article 6 [Attachment Table 1] of the Enforcement Decree of the Trademark Act.

(b) The plaintiff's petition for invalidation of registration (Korean Intellectual Property Tribunal No. 2002Da2194)

(1) Grounds for claim

The registered trademark of this case is the name or its abbreviation of a character, which is the well-known trademark of another person, and it is filed by the defendant without any right as to the work, to gain unjust profits by taking advantage of the recognition map of the work famous by the defendant. Thus, it does not fall under the provisions of Article 7 (1) 4 of the Trademark Act, and the registered trademark of this case is similar to the trademark of "Robert V" or "ROBO TAE-KONV" (hereinafter referred to as "human trademark" or "human trademark"), which is the trademark widely known to consumers or traders as indicating the trademark or goods of a specific person, and its registration should be invalidated because it falls under Article 7 (1) 11 of the Trademark Act, which is the same as the goods using the cited trademark.

(2) The judgment of the court below

On February 27, 2003, the Korean Intellectual Property Tribunal rendered a ruling to dismiss the plaintiff's claim.

(3) Summary of the grounds for the instant trial decision

(A) Whether Article 7 (1) 11 of the Trademark Act is applicable

With respect to goods used by the Plaintiff or clothes, which are designated goods of the instant registered trademark, the evidence alone presented by the Plaintiff cannot be deemed to have reached the extent that consumers or traders would be informed of the trademark or goods of a specific person at the time of determining the registration of the instant registered trademark. Thus, the instant registered trademark cannot be deemed to fall under Article 7 (1) 11 of the Trademark Act in relation to the cited trademark.

(B) Whether Article 7 (1) 4 of the Trademark Act is applicable

As a result of the Plaintiff’s use of the cited trademark on clothes, etc., which are the designated goods of the instant registered trademark, insofar as there is no proof that the quoted trademark is widely known to the consumers as the Plaintiff’s work or its title, and the mere fact that the cited trademark was applied for an imitate of such cited trademark does not constitute Article 7(1)4 of the Trademark Act.

2. Whether the trial decision of this case is legitimate

A. Summary of the grounds for revocation of the Plaintiff’s trial decision

(1) As to the violation of Article 7 (1) 11 of the Trademark Act

The cited trademark is already widely known and well-known to the domestic consumers as the Plaintiff’s copyrighted work or its title prior to the filing date of the instant registered trademark. The Plaintiff entered into a contract with Switzerland, one of the commercialization businesses using the cited trademark, which is widely and well-known and well-known trademarks, to allow the cited trademark to be used as a trademark of clothes, etc. handled by the above company. The above company, pursuant to the above agreement, sold the cited trademark prior to the date of decision on the registration of the instant registered trademark by attaching it to the clothes, etc., which are goods identical or similar to the designated goods of the instant registered trademark, and such content became widely known to the general public through a report of various media media prior to the date of decision on the registration

Therefore, the cited trademark is widely and well-known and well-known as a copyrighted work, and the above company permitted by the plaintiff to use it as a trademark of clothes, etc., and such fact is reported several times through the media, and the trademark of this case becomes known to its consumers or traders prior to the date of decision on the registration of the trademark of this case. Thus, the trademark of this case, which is similar to the cited trademark, is registered in violation of Article 7 (1) 11 of the Trademark Act and whose designated goods are goods identical or similar to the goods using the cited trademark, should be invalidated.

(2) As to the violation of Article 7(1)4 of the Trademark Act

(A) The registered trademark of this case is already applied with the purpose of unfair competition in order to take advantage of the intangible property value accumulated in the cited trademark with knowledge of the existence of the cited trademark, which is already recognized as a trademark by consumers prior to the filing date of the application for registration, and such trademark is deemed to be contrary to the public order and morality under Article 7(1)4 of the Trademark Act, and thus its registration shall be invalidated.

(B) The registered trademark of this case is a trademark which imitates the cited mark widely known as the Plaintiff’s work’s title among consumers prior to the filing date, and today’s well-known work or the commercialization business using characters in the work, and considering that the work or character itself has the property value as a trademark, the act of registering as trademark by imitateing another’s work or its title is an act of unfairly deceiving the property value of the copyright holder’s copyrighted work or its title, and thus, it shall not be allowed as an act violating the public order and customs as stipulated in Article 7(1)4 of the Trademark Act.

B. Determination

(1) Determination on the well-known and well-knownness of the cited trademark

(A) The so-called character appearing in a famous work or its name is so-called character as a product mark of a specific group that can be widely recognized to consumers, or if it is a product or trademark, it can not be concluded that the product or trademark is widely known to the extent that it can be perceived as a product or trademark of such group, and in such a case, it can be used as a trademark such as indicating the source of the product or quality assurance function. In such a case, if the character or its name is used as a trademark through the commercialization business, the trademark itself used as a trademark is well-known, or if it is the product or trademark of such group, it can not be concluded that the trademark or trademark is widely known to the extent that it can be perceived as a product or trademark of such group (see Supreme Court Decision 98Hu843, May 30, 200), and whether the trademark or trademark itself can be widely known to a specific person in terms of social norms or the extent of its sale, and whether the trademark or trademark itself can be widely known to the specific person.

(B) Comprehensively taking into account the overall purport of arguments as indicated in Gap's 4 and 5 evidence Nos. 1, 2, 6 through 9, Gap's 10 evidence Nos. 1 through 6, and Gap 12-1 through 18, the plaintiff was the copyright holder of the video and art No. 9 ("the work of this case") first made public on July 27, 1976, "RoBOTE-KON-V". The work of this case created by the plaintiff was opened on the Internet homepage of this case No. 970's character No. 976, animation work of this case was opened on the Internet homepage of this case No. 1976, animation contract with the plaintiff No. 97, animation contract with the plaintiff No. 99, animation company's representative on the Internet homepage of this case's 90,000's character on the Internet homepage of this case.

In full view of the above facts, it can be recognized that the character or its name of the instant work was widely known among domestic consumers prior to the filing date of the registration application for the trademark of this case. However, in this case where there is no assertion or proof as to the character of the instant work or the specific sales performance or business activity of the goods using the title, advertisement performance, transaction scope, etc., it cannot be said that the cited trademark has been widely known to consumers as the product mark of the Plaintiff, etc. or a specific person permitted to use the mark from the Plaintiff, etc. (hereinafter referred to as the “Plaintiff, etc.”), or that there was no assertion or proof as to the character of the instant work of this case or the content, advertisement performance, transaction scope, etc. of the instant goods, etc.

(2) Whether Article 7(1)4 of the Trademark Act is applicable

(A) "Trademarks which are contrary to the public order or good customs" under Article 7 (1) 4 of the Trademark Act refers to cases where the composition of a trademark itself or the meaning or contents that the trademark gives to ordinary consumers when used on the designated goods are contrary to the public order and good customs, which is the normal moral sense of ordinary people, or where the registration and use of a trademark which imitates another's trademark without permission, without permission, is contrary to good customs such as fair goods distribution order or international trust and morality. Therefore, in order to make a trademark which imitates another's trademark and falls under Article 7 (1) 4 of the Trademark Act, it shall be widely known to ordinary consumers or customers as a trademark in relation to the designated goods at the time of the decision of registration of the trademark (limited to cases where the trademark is recognized as a trademark between the quoted consumers, even if it comes to the extent that the trademark becomes recognizable as a trademark between the cited consumers).

(B) Examining the case back to this case, the part that the trademark of this case is similar to the cited trademark may be recognized, but further, there is no evidence to acknowledge that the cited trademark is widely known as a specific person among domestic consumers at the time of the decision to register the trademark of this case. Thus, the plaintiff's assertion that the cited trademark of this case constitutes Article 7 (1) 4 of the Trademark Act in relation to the cited trademark under the premise that the cited trademark is widely known among domestic consumers as a mark indicating the goods of the plaintiff et al. before the date of the decision to register the trademark of this case, is without merit.

(C) In regard to this, the Plaintiff asserted that the registered trademark of this case is a trademark which imitates the name of a famous other person's work or character, and that the registration should be invalidated by Article 7 (1) 4 of the Trademark Act, since the registered trademark of this case is applied for the purpose of wrongfully acquiring another person's property right which is embodied in the work, the registration of the trademark should be invalidated by virtue of Article 7 (1) 4 of the Trademark Act. Thus, the trademark of this case is the name of the Plaintiff's work or its character. The name of the work or character cannot be deemed as a work that is defined as a subject of copyright protection under Article 2 subparagraph 1 of the Copyright Act, because it is difficult to regard it as an expression of ideas or emotions by itself. Thus, unless there are special circumstances, anyone can freely use it (see Supreme Court Decision 77Da90 delivered on July 12, 197). Although the work of this case or its character is well known and well-known, it is not a property value of the work of this case or character, apart from its own or character.

Therefore, insofar as the Defendant’s act of registering and using the registered trademark of this case cannot be deemed as an act of infringing the Plaintiff’s copyright, the mere fact that the Defendant uses a mark that imitates the title of the work of this case or its character, does not directly infringe the property value inherent in the work of this case, and cannot be deemed as an act that disturbs the public order or good customs under Article 7(1)4 of the Trademark Act.

(3) Whether Article 7 (1) 11 of the Trademark Act is applicable

(A) In order to determine that there is a concern for deceiving the consumers as stipulated in Article 7(1)11 of the Trademark Act, the cited trademark or its goods are not necessarily to be well known and well-known, but at least in general transactions in Korea, it should be known to the extent that it can be perceived as a trademark or goods of a specific person if it is a trademark or goods. In such a case, if a trademark identical or similar to the cited trademark is used on the designated goods identical or similar to the said goods, it may cause general consumers to mislead or confuse the origin of the goods under the above provision.

(B) On the other hand, the evidence submitted by the Plaintiff alone at the time of the decision to register the trademark of this case cannot be deemed to have been known to the extent that the cited trademark was a trademark or goods of a specific group permitted by the Plaintiff or a trader for use of the trademark in domestic ordinary trade. As seen earlier, the cited trademark constitutes a trademark or goods of a specific person among domestic consumers prior to the date of the decision to register the trademark of this case without any need to further examine the Plaintiff’s assertion to the effect that the cited trademark of this case constitutes a trademark or goods of a specific person among domestic consumers.

C. Sub-committee

Therefore, the decision of this case, which dismissed the plaintiff's appeal on the ground that there is no ground for invalidation of the plaintiff's assertion, is justifiable.

3. Conclusion

Therefore, the plaintiff's claim of this case is dismissed as it is without merit, and it is so decided as per Disposition.

Judges Of Kimchi (Presiding Judge)