[1] Requirements and criteria for determining whether a registered trademark falls under Article 7 (1) 11 and 12 of the Trademark Act

[2] The meaning of "a trademark that is contrary to the public order or good customs" under Article 7 (1) 4 of the Trademark Act

[3] Requirements for an application for trademark registration to fall under Article 7 (1) 4 of the Trademark Act, and whether the registration or use of a trademark which imitates another person's trademark that is neither widely nor clearly known constitutes the above provision (negative)

[4] The case holding that the above registered trademark cannot be deemed to fall under Article 7 (1) 4 of the Trademark Act on the ground that a person with experience in importing raw materials, etc. attached with the comparable trademark is expected to import and sell goods, etc. using the comparable trademark later in Korea with the knowledge that there was no trademark registration of the comparable trademark, and applied for and registered the registered trademark similar to the comparable trademark, and then the transferee of the comparable trademark demanded to grant the domestic exclusive right to sell the above raw materials or pay the cost for using the registered trademark

[1] Article 7 (1) 11 and 12 of the Trademark Act / [2] Article 7 (1) 4 of the Trademark Act / [3] Article 7 (1) 4 of the Trademark Act / [4] Article 7 (1) 4 of the Trademark Act

[1] [2] [3] Supreme Court Decision 96Hu2296 delivered on October 14, 1997 (Gong1997Ha, 3467), Supreme Court Decision 2002Hu1362 delivered on May 14, 2004 (Gong2004Ha, 1873) / [1/2] Supreme Court Decision 97Hu3623 delivered on December 24, 199 (Gong200Sang, 309) / [1] Supreme Court Decision 90Hu1413 Delivered on February 26, 1991 (Gong1991, 1091), Supreme Court Decision 2001Hu184, 1891 delivered on April 8, 2003, Supreme Court Decision 2004Hu189364 delivered on April 26, 2004) / [208Hu3684 delivered on April 26, 2004)

Rob Blob Blob Block Roco World (Patent Attorney Kim Jong-soo et al., Counsel for the plaintiff-appellant)

Kim Gyeong-hee (Patent Attorney Park Jong-hee, Counsel for the defendant-appellant)

Patent Court Decision 2004Heo3959 delivered on December 3, 2004

The appeal is dismissed. The costs of appeal are assessed against the plaintiff.

1. As to the grounds of appeal on Articles 7(1)1 and 7(1)12 of the Trademark Act

In order for a registered trademark to be the subject of a request for a trial for invalidation of registration to constitute “a trademark likely to mislead or mislead consumers” as provided by Article 7(1)11 of the Trademark Act, it must be known to the extent that at least in general transactions in Korea at the time of the decision of registration of the registered trademark, the trademark or goods of another person compared to the registered trademark or the designated goods are to be recognized as a trademark or goods of a specific person (see Supreme Court Decision 2001Hu184, 1891, April 8, 2003). In order to fall under Article 7(1)12 of the Trademark Act, it should be clearly recognized as indicating the goods of a specific person between domestic or foreign consumers at the time of the application of the registered trademark (see Supreme Court Decision 2002Hu1362, May 14, 2004). Whether a trademark falls under this provision should be determined based on whether it is objectively known to the extent of the use period, mode and scope of use of the other person’s trademark or its goods.

In light of the above legal principles and the records, the court below is just and correct to determine that the trademark of this case does not fall under the grounds for invalidation of registration under Article 7 (1) 11 and 12 of the Trademark Act, on the grounds that it is not known among domestic consumers as a mark indicating a specific person's goods at the time of the application or decision of registration of the trademark of this case or that the trademark of this case consisting of " " "" is considerably recognized as a mark indicating a specific person's goods at the time of the application or decision of registration of the trademark of this case or it is difficult to be known among domestic consumers as a mark indicating a specific person's goods, and it does not fall under the grounds for invalidation of registration under Article 7 (1) 11 and 12 of the Trademark Act, and there is no error of law such as misunderstanding of legal principles, incomplete deliberation, and violation of the rules of evidence, etc.

2. As to the ground of appeal on Article 7(1)4 of the Trademark Act

"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 content that the user uses on designated goods violates the public order or good customs, which is the normal moral sense of the general public (see Supreme Court Decision 96Hu2296, Oct. 14, 1997). The above provision is a provision with respect to the nature of the trademark itself, and there are separate reasons for registration separately in each subparagraph of Article 7 (1) of the Trademark Act, with regard to a trademark deemed contrary to the purpose of the Trademark Act. In light of the fact that the Trademark Act adopts the principle of the crew rule that recognizes the applicant as having the right to choose a trademark on the premise of the freedom of choice, and thus, in order to fall under the above provision, it appears that the composition of the trademark itself goes against the public order or good customs and thus, it does not constitute an act of using another person's trademark without permission or an act of using another person's trademark on the grounds that it does not violate the order or good customs of the trademark.

In light of the above legal principles and records, in this case, where the composition of the trademark of this case or its contents are used on the designated goods, it cannot be deemed that the trademark of this case is considerably recognized by foreign consumers as a mark indicating the goods of a specific person, or it cannot be deemed as known among domestic consumers as a mark indicating the goods of a specific person, and further, the court below's decision that the trademark of this case cannot be seen as being a trademark of this case where the Manam, which was imported from the U.S. branch office of Japan, U.S., U.S., a seller of U.S., a seller of U.S., a seller of U.S., for the "made fibres" of U.S., U.S., a seller of U.S., the comparative trademark of this case, was established only for "made yarn, etc." which is similar to the trademark of the comparative trademark, and the trademark of this case cannot be seen as being domestically imported and sold as the goods of the comparative trademark of this case, and it cannot be seen that the contract of this case was concluded with the Plaintiff and the trademark of this case.

3. Conclusion

Therefore, the appeal is dismissed, and the costs of appeal are assessed against the losing party. It is so decided as per Disposition by the assent of all participating Justices.

Justices Yang Sung-tae (Presiding Justice)