Where only some of the designated goods of a trademark registered with two or more goods as designated goods are subject to invalidation, whether it is possible to render a trial for invalidation only with respect to the designated goods whose grounds for invalidation exist.

The purport of Article 71 (1) of the Trademark Act is to invalidate all of the designated goods which are legally entitled to trademark registration even though there is a ground for invalidation only for the designated goods, and to avoid such excessive measures because it is unnecessary, harsh, and unreasonable to invalidate all of the remaining designated goods which are legally entitled to trademark registration. Accordingly, in a case where a trademark is registered with two or more designated goods, it is reasonable to judge the invalidation of trademark registration only for the designated goods whose ground for invalidation exists, and where it is obvious that there is no ground for invalidation in all of the registered goods and there is no ground for invalidation in all of the registered goods, and such interpretation shall be identical to the former Trademark Act (wholly amended by Act No. 4210, Jan. 13, 1990). This provision shall also apply to a case where a request for invalidation trial is made with respect to two or more designated goods and registered with three or more goods as the designated goods.

Article 46 of the former Trademark Act (amended by Act No. 4210 of Jan. 13, 1990) (Reference to Article 71 of the current Trademark Act)

[Plaintiff-Appellant] Plaintiff 1 and 1 other (Law No.1358, Sep. 24, 1985) (Law No.1985, Jan. 1425, 1980) (Law No.1983, Nov. 24, 1980)

Patent Attorney Shin-chul, Counsel for the plaintiff-appellant

Patent Attorney Park Jae-soo, Counsel for the defendant-appellant

Korean Intellectual Property Office Decision 92Hun-Ba35 Dated December 21, 1992

Of the original adjudication, the part of the designated goods of the registered trademark of this case against the respondent with respect to the remaining designated goods other than precious metals (Bail and its reproduction), shall be reversed, and the case shall be remanded to the Korean Intellectual Property Office for Appeal.

The remaining grounds of appeal by the respondent shall be dismissed, and all costs of appeal by this part shall be borne by the respondent.

We examine the grounds of appeal.

On the first ground for appeal

1. Article 8 (2) of the former Trademark Act (amended by Act No. 4210, Jan. 13, 1990; hereinafter the same) provides that the trademark is recognized remarkably among consumers as a trademark by using the trademark prior to its application shall be registered notwithstanding the provisions of paragraphs (1) through (3), 5, and 6. Thus, the standard should be strictly interpreted, since the trademark is originally granted a special right to a mark that cannot be used exclusively by a specific person. On the other hand, once the trademark is registered, the scope of the trademark must be recognized considerably throughout the country since it has an effect on the discharge of military service. Since the trademark has been registered, it has been engaged in business activities over a long time in a specific region, and there has been advertising in the regional broadcasting or newspaper, or there has been a long-term publicity advertisement for a trademark similar to the trademark, it is difficult to deem the trademark as a trademark falling under Article 8 (2) of the same Act.

2. According to the reasoning of the original decision, it is true that the court below did not make an explicit decision as to the argument of the respondent that the trademark of this case (No. 111772) is a mark with distinctiveness since the trademark of this case was remarkably perceived by the user for more than 30 years prior to the filing of the application. However, considering the records, it is difficult to find that the evidence of the theory of the lawsuit alone is not sufficient to recognize that the trademark of this case was remarkably recognizable by the consumers as the trademark of the respondent throughout the nation. The court below held that the trademark of this case is not a mark with distinctiveness. Thus, the decision of the court below is proper, and even if the court below did not deliberate and decide on the above issue, it does not affect the result of this case.

Therefore, there is no reason to discuss.

On the second ground for appeal

1. According to the reasoning of the original decision, the court below determined that the designated goods of the trademark of this case were all the goods specified in Category 44 of the classification of goods such as bail, precious metals and their imitates at the time of registration, and the trademark of this case constitutes a mark indicating raw materials or quality under Article 8 (1) 3 of the former Trademark Act in a common way, and the trademark of this case cannot be deemed to have been annulled solely on the waiver or registration of some designated goods which have the grounds for invalidation during the trial of this case. Further, if a trademark of this case is registered with two or more designated goods as the designated goods, even if a request for the invalidation trial of the whole registration is made, if only some of the designated goods are the grounds for invalidation, the judgment of invalidation shall be invalidated only on the designated goods which have the grounds for invalidation, and the purport of Article 46 of the same Act shall be invalidated wholly or additionally, and the trademark of this case shall be rejected on the ground that Article 8 (1) 3 (1) (excluding the registered goods) and Article 9 (1) (1) (1) (1) (i) of the registered goods) of the same Act.

2. Article 46 of the same Act provides that where a trademark registration falls under the grounds for invalidation under any of the subparagraphs of the trademark registration, the registration shall be invalidated by a trial regardless of whether it is before or after the extinguishment, and even if the respondent renounces the trademark right to some of the designated goods during the trial of this case and the registration of cancellation is cancelled, the effect of the waiver of the trademark right does not occur at the time of cancellation of the registration, and therefore, the trademark registration on those goods which waived the trademark right shall also be subject to a trial, and therefore, the court below's decision that the trademark registration on these goods shall be null and void shall not be considered to

3. In order for the general public to mislead or deceive consumers as to the quality of goods as stipulated in Article 9 (1) 11 of the same Act, a relation between goods and goods using the trademark shall be recognized to the extent that the ordinary people make mistake or confusion as to the characteristics of the goods and the goods using the trademark in light of the fact that the trademark is ordinarily recognized by the trademark. If the meaning of the trademark has no relation with the designated goods, it shall be said that there is no concern about quality misunderstanding or misleading for consumers, and the judgment shall be based on ordinary consumers in accordance with the trade norms.

In addition, the court below's decision that the trademark of this case containing the word "sulphy" can be deemed to have indicated the raw materials or quality of the designated goods among the designated goods as precious metal when it is used in gold or gold-related products. Thus, the court below's decision that the trademark of this case falls under Article 8 (1) 3 of the same Act shall be correct, and the gold and gold can be deemed to have been combined with or can be combined with metal, in light of the circumstances where the gold and silver are used in combination or combination, and the mark "sult gold" may be used for other precious metals, such as gold and gold, because it may cause misconception of quality or to mislead consumers as being included in yellow metal, and thus, it shall not be deemed to have been erroneous.

However, if this is used for other designated goods (such as gold, silver, gold-related products) other than such precious metal products, even though they belong to Category 4 of the same Article in accordance with the Rules of the Trademark Act in accordance with the attached Table of the same kind of goods under the same Act, it is possible to recognize the metal belonging to Category 2, such as gold, silver, and white gold, and the release on bail, such as Damond, mountain, dust, mano, correction, and yellow roof, which belong to Group 1. Thus, the trademark of this case, such as gold, silver, and gold-related products, such as gold-related products, such as gold-related products, was used for the trademark of this case, which is called the "sulphy" in terms of social norms, and thus, there is no possibility to mislead consumers or cause confusion.

Therefore, the court below's decision that the trademark of this case violated the provisions of Article 9 (1) 11 of the same Act with respect to the kinds of release on bail and its imitates cannot be deemed unlawful.

4. Article 71 (1) of the current Trademark Act provides that where trademark registration or registration of additional designated goods falls under any of the following subparagraphs, a request for invalidation trial may be made, and where there are two or more designated goods, a request for invalidation trial may be made for each of the designated goods. This is unnecessary, harsh, and unreasonable to invalidate all of the remaining designated goods which are legally entitled to trademark registration even though there are grounds for invalidation only for the part concerning a specific designated goods. Thus, it is intended to avoid such excessive measures (excess measures).

Therefore, in a case where a trademark is registered with two or more goods as designated goods, if there is a ground for invalidation only for a part of the designated goods and there is no ground for invalidation as to other designated goods even if a claimant requests a trial to invalidate the trademark registration in whole, it is reasonable to make a trial to invalidate the registration only for the designated goods which have the ground for invalidation, unlike the case where the application is made, and such interpretation shall be identical under the former Trademark Act (see, e.g., Supreme Court Decision 84Hu109, Sept. 24, 1985). Accordingly, the opinion of the Supreme Court Decision 81Hu17, Mar. 22, 1983 should be modified. The same shall apply to a case where a claimant requests a trial to invalidate two or more designated goods where three or more goods are registered with them as designated goods.

5. Therefore, the lower court should examine whether the trademark of this case can be registered for the designated goods which are not precious metals, and whether the trademark registration for these goods has other grounds for invalidation.

In the original trial decision, there is an error of law by misunderstanding the legal principles on partial invalidation of trademark registration under Article 9(1)11 of the former Trademark Act and Article 9(1)1 of the same Act, and there is reason to the extent of this issue.

Therefore, among the designated goods of the registered trademark of this case among the original adjudication, the portion of the case against the respondent is reversed, and the case is remanded to the appellate court of the Korean Intellectual Property Office for further proceedings consistent with this Opinion, and the costs of appeal by the respondent for precious metal products are dismissed, and the costs of appeal are assessed against the respondent for precious metal products. The costs of appeal by the respondent for precious metal products are assessed against the defendant and the costs of appeal are assessed against the defendant. It is so decided as per Disposition by the assent of all participating Justices on the bench.

Justices Yoon Young-chul (Presiding Justice) Kim Jong-chul (Presiding Justice) and Park Jong-ho, Kim Jong-ho, Kim Jong-ho, Park Jong-ho, Park Jong-ho, Park Jong-ho, Park Jong-ho, Park Jong-ho, Park Jong-ho, Park Jong-ho