New Zealand SPS Rozera, Inc. (Patent Attorney Cha-tae et al., Counsel for the plaintiff-appellant)

U.S. (Patent Attorney Kim Young-ok, Counsel for the defendant-appellant)

May 2, 2014

Patent Court Decision 201Heo8242 Decided November 4, 2011

Supreme Court en banc Decision 2011Hu3698 Decided March 20, 2014

1. The decision made by the Intellectual Property Tribunal on July 27, 201 on the case No. 2011Da564 shall be revoked.

2. All costs of the lawsuit shall be borne by the defendant.

The text shall be as shown in the text.

1. Basic facts

A. The registered trademark of this case

(1) Date of application/registration date / Final date of renewal of the duration of trademark/trademark registration number: May 28, 1981 / September 21, 1984 / (registration number omitted) July 13, 2004

(2) Marks:

(3) Designated goods (the designated goods whose classification of goods was converted and registered on September 24, 2004): The goods category No. 18 of the category of goods “competing, sticking,” 20 of the category of goods,” and 25 of the category of goods.

(4) Trademark right holder: plaintiff

(b) a challenged mark;

(1) Marks:

(b) Goods using: Sports;

(3) Explanation of the use of the mark: a trademark consisting of a combination mark consisting of the same English as “,” and a trademark consisting of a trademark consisting of a trademark consisting of a combination mark consisting of the same as “,” and a trademark consisting of a trademark consisting of a trademark consisting of a trademark consisting of a trademark consisting of the two parts:

(d) Users: Defendant;

C. Details of the instant trial decision

(1) On March 15, 2011, the Defendant asserted against the Plaintiff that the challenged mark does not fall under the scope of the right of the instant registered trademark, and filed a claim for a trial to confirm the scope of the right.

(2) After examining the above appeal No. 201Da564, the Intellectual Property Trial and Appeal Board rendered a trial decision citing the defendant's request on July 27, 201, on the ground that "the mark subject to confirmation was specified as the subject of the trial, and even if some of the registered trademark and the subject of confirmation marks (N's parts) are similar to the trademark of this case, they cannot be an essential part because they have no distinctiveness as a simple and trace mark, and if both marks are observed in whole and in a different way, the mark subject to confirmation does not fall under the scope of the right of the registered trademark of this case, because the appearance, name, and concept are different."

(3) On August 25, 2011, the Plaintiff filed a lawsuit against the Defendant seeking the revocation of the instant trial decision with the Patent Court, and the Patent Court rendered a trial decision prior to the remanding of the Plaintiff’s claim on November 4, 2011 on the grounds of the same summary as the instant trial decision.

(4) The Plaintiff appealed to the Supreme Court on November 22, 201 with respect to the judgment prior to remand, and the Supreme Court rendered a judgment dismissing the judgment prior to remanding on March 20, 2014, on the ground that “The mark subject to confirmation was specified as the subject of adjudication, but the registered trademark and the mark subject to confirmation specified as the subject of adjudication on March 20, 2014.” However, as the trademark of this case and the mark subject to confirmation have central distinctiveness on the N’s part, if both marks are observed in whole and in a different way, the name and concept are similar to each other, thereby causing users to mislead or confuse the source of the sports goods, and thus, the judgment prior to remanding the same trademark constitutes a similar trademark. However, the judgment prior to remanding the judgment that otherwise determined is erroneous by misapprehending the legal principles on the distinctiveness of the registered trademark and the similarity of trademarks in the scope

[Ground of recognition] Facts without dispute, Gap evidence Nos. 1 through 4, the purport of the whole pleadings

2. The summary of grounds for revocation of the Plaintiff’s trial decision

A. It does not clearly specify which size the challenged mark is indicated and used in a certain position in the aspects of sports, and simply means goods using “use” as sports, and it is not clearly specified to the extent that it can be compared with the registered trademark of this case in order to encourage the appearance of the trademark by attaching the trademark on the side of sports Gap. Therefore, the trial decision of this case, considering that the challenged mark was specified, is unlawful in the judgment on the merits.

B. Since the part of the registered trademark of this case, among the trademarks of this case, "" was well known to domestic and foreign users as the mark indicating the plaintiff's new products, the registered trademark of this case can be perceived to consumers only by "the essential part," and since the size of "the part of the challenged mark" can be recognized mainly by "the part," the size of which is considerably small compared to the part," both marks are similar to those of the registered trademark of this case when observing the whole and personally. Therefore, the decision of this case which held that the challenged mark does not fall within the scope of the right of the registered trademark of this case is unlawful.

3. Whether the challenged mark is specified;

In a trial to confirm the scope of a trademark right, the challenged mark, which is the subject of a request for trial, is sufficient to specify the composition of the mark and the goods using the mark to the extent that it can be compared with the registered trademark, and further, it is not necessary to specify the specific status of the use of the challenged mark or the form of goods

A mark subject to confirmation, which consists of “sports” and “”, shall be deemed to be legally specified since it can be compared with the registered trademark of this case, consisting of designated goods as “compet, stick, debts, and sports.”

Therefore, we cannot accept the plaintiff's assertion that the challenged mark is not specified.

4. Whether the challenged mark falls under the scope of rights of the registered trademark of this case.

(a) Whether the mark is similar;

(1) Relevant legal principles

The similarity of a trademark shall be determined in accordance with whether there is a concern for ordinary consumers to mislead or confuse the origin of the designated goods in the transaction of the designated goods by observing the appearance, name, and concept objectively, comprehensively, and externally, and by observing the appearance of the trademark. In such a determination, the existence of distinctiveness that allows ordinary consumers to distinguish the goods from other goods and the strong elements of consideration shall be the major factors of consideration. The distinctiveness of a trademark is the relative and dynamic nature that may vary depending on the concept of the trademark, the relation with the goods, the nature of the market in which the goods are traded, the actual condition and method of the transaction, the characteristic of the goods, the composition of the goods, and the degree of trademark use, etc. Therefore, the existence and the strongness of the trademark shall be determined at the same time as the similarity of the trademark.

Therefore, in a case involving a trial to confirm the scope of a trademark right and a request for revocation of a trial decision, distinctiveness of a registered trademark, which is an element for determining the similarity of a registered trademark and a challenged mark, ought to be determined at the time of a trial decision, which is the standard for determining similarity of a trademark. Therefore, even if the whole or part of a registered trademark has no or weak distinctiveness at the time of the decision to register the scope of a trademark right, where the use of the registered trademark as a whole or in part becomes considerably recognizable among consumers as to whose goods are indicated or whose central distinctiveness at the time of a trial decision to confirm the scope of a trademark right by separating the whole or part of the registered trademark as a whole, the similarity of a trademark ought to be determined based on such determination

(2) Specific determination

Comprehensively taking account of the overall purport of the arguments in evidence Nos. 7-1, 2, 3, and 8-1, 2, and 9 through 18, the Plaintiff: (a) from around 1975 to around 2010, attached and sold a trademark of “the” (hereinafter “actually used trademark”) based on the first letter of Plaintiff’s abbreviations (hereinafter “actually used trademark”), such as the shape of the instant registered trademark, in each of the countries around the world; and (b) domestic sales of sports paintings and sports clothing, etc., such as sports paintings and sports clothing, amounting to approximately KRW 34.4 billion in 209, and approximately KRW 161.9 billion in total from 2004 to 2010; and (c) the Plaintiff’s “Newal management” trademark may be recognized as being selected as the Plaintiff’s brand of “New” and “Newol” in part 209.

In light of the above facts and the legal principles as seen earlier, we examine whether the challenged mark using used goods as “sports” is similar to the registered trademark of this case, which is the designated goods as “sports.”

At the time of the decision to register the trademark of this case, the shape of physicalization, such as “,” in the composition of the trademark of this case, is indicated in a common way as to “sportsization,” which is the designated goods, and there is no distinctive character. As such, the part of the pattern such as “,” such as “,” is nothing more than a simple and trace trademark that is perceived on the pattern pattern pattern, and its distinctive character was weak. However, in light of the above facts, it seems that from around 2009, “the Plaintiff’s practical use trademark” was considerably recognizable as to the goods of this case, which are “sportsization,” at least among consumers. Even if the trademark of this case is combined with other components, its constituent elements are indicated as “sportsization,” which is the designated goods, in a common way or because it is merely the background that “N,” which is a simple and sealed trademark, and thus, its distinctive character cannot be determined at the time of the trademark of this case.

On the other hand, the challenged mark is merely an addition of the word “N” with the word “n” written in an ordinary letter, and thus, it seems that the part “” is far far more than the part “” in terms of the trademark of this case, and as seen above, since the part “” in the composition of the trademark of this case is clearly perceived among consumers as to the goods “sports,” the challenged mark using the “sports” also has a central distinctive character that creates consumers’ attention.

Therefore, if the registered trademark of this case and the challenged mark are used in goods "sportsization" as different trademarks, they can be referred to and conceptualally referred to respectively as "the part" and "the part" with central distinctive character, and in such cases, they may cause misconceptions and confusions as to the origin of goods "sportsization" with the same name and concept. Thus, both marks are similar trademarks.

(b) Whether goods are identical or similar to designated goods;

As seen earlier, the designated goods of the registered trademark of this case are “compet, stick, debts, and sports,” and the goods using the challenged mark are sportsization. The goods using the challenged mark, which are goods using the challenged mark, are the same as the "sportsization" among the designated goods of the registered trademark of this case.

C. Sub-committee

The challenged mark is similar to the registered trademark of this case, and its marks are identical to the designated goods of the registered trademark of this case. Thus, the challenged mark belongs to the scope of rights of the registered trademark of this case.

5. Conclusion

Thus, the trial decision of this case which held that the challenged mark does not fall under the scope of the right of the registered trademark of this case is unlawful differently from this conclusion. Therefore, the plaintiff's claim seeking its revocation is reasonable, and it is so decided as per Disposition by the assent of all participating Justices.

Judge Han-jin (Presiding Judge)