Where an examiner of the Korean Intellectual Property Office decided to reject trademark registration for the applicant Gap's applied trademark " " "," the case holding that the applied trademark cannot be registered because it constitutes Article 7 (1) 12 of the Trademark Act in relation to the pre-use trademark " and ","

Where the examiner of the Korean Intellectual Property Office decided to refuse trademark registration on the ground that the applicant Gap's applied trademark " " " constitutes Article 7 (1) 12 of the Trademark Act, the case held that the trademark applied for trademark registration cannot be seen as falling under Article 7 (1) 12 of the Trademark Act in relation to the pre-use trademark since the applicant's designated goods were recognized as the trademark of a specific person between European consumers or traders, such as Itaria and Austria, at least at least at the time of the application date of the trademark with the designated goods as "bicycles, etc., and when compared with the applied trademark, the pre-use trademark 1 is similar only to the location of the part, the pre-use trademark 2 is identical, the name is identical, and the appearance and name of the part are identical to the pre-use trademark 2. In light of all circumstances, even if some of the designated goods of the applied trademark do not have any economic relation with the pre-use trademark, the trademark applied for trademark registration cannot be seen as falling under Article 7 (1) 12 of the Trademark Act.

Article 7 (1) 12 of the Trademark Act

Plaintiff (Patent Attorney Kim Jong-soo, Counsel for the plaintiff-appellant)

The Commissioner of the Korean Intellectual Property Office

R&C Patent Attorney J&C et al. (Patent Attorney Jin-ho et al., Counsel for the defendant-appellant)

October 31, 2014

1. The plaintiff's claim is dismissed.

2. The costs of lawsuit shall be borne by the Plaintiff, including the part resulting from the supplementary participation.

The decision made by the Intellectual Property Tribunal on June 26, 2014 on the case No. 2013 Won7074 shall be revoked.

1. Basic facts

A. The applied trademark of this case

1) Date/application number: November 26, 2010 (application number 1 omitted)

2) Marks:

3) Designated goods: Not less than 12 wheel chairss, two bicycles, bicycles for bicycle racing, bicycles for mountain use, bicycles for mountain use, bikes, bicycle tubes for bicycle riding, bicycle wheelss, quitoves for bicycle riding, vexs for bicycle riding, straws for bicycle riding, vexs for bicycle riding, bicycle riding vexs for bicycle riding, bicycle riding vexs for bicycle riding, caps for bicycle riding, vexs for bicycle riding, vexetator for bicycle riding, vexetator for bicycle riding, vexet for bicycle riding, vexet for bicycle riding, vexet for bicycle riding, vexet for bicycle riding, vexet for bicycle riding, vexet for bicycle riding, vexet for bicycle riding, vexet for bicycle riding, vexet for bicycle riding, vexet for transporting vehicles or vexetator for bicycle riding, vexet for transporting machinery or tools for bicycle riding, vexling machine for bicycle riding.

B. First Used Trademark

1) First Used Trademark 1

A) Marks:

(b) Goods for use: the equipment for mountain skiing and related clothing, shoes, hats, caps, labels;

2) First Used Trademark 2

A) Marks:

(b) Goods for use: the equipment for mountain skiing and related clothing, shoes, hats, caps, labels;

C. Details of the instant trial decision

1) At the time of filing an application on November 26, 2010 of the applied trademark of this case, the applicant was Nonparty 1. On May 27, 2011, the applicant was changed to the Plaintiff, who is the husband (No. B. 36), and the examiner of the Korean Intellectual Property Office cannot obtain trademark registration on September 2, 2013 on the ground that “the applied trademark falls under Article 7(1)12 of the Trademark Act.”

2) On September 27, 2013, the Plaintiff filed a petition with the Intellectual Property Trial and Appeal Board for a trial against the aforementioned decision of rejection. On June 26, 2014, the Intellectual Property Trial and Appeal Board dismissed the Plaintiff’s petition for a trial on the ground that “The trademark applied for registration is a trademark similar to the pre-use trademark recognized as indicating the goods of a specific person by domestic and foreign ordinary traders or consumers, and thus constitutes Article 7(1)12 of the Trademark Act, since the trademark applied for registration for unjust purposes.”

[Reasons for Recognition] Evidence Nos. 1, 2, 3, Eul 36, 42, and 43 (including a branch number; hereinafter the same shall apply) and the purport of the whole pleadings

2. Grounds for revocation of the instant trial decision by the Plaintiff’s assertion and the issues of the instant case

A. Grounds for revocation of the Plaintiff’s instant trial decision

1) It is difficult to view that the pre-use trademarks are known to the extent that they can be recognized as indicating the goods of a specific person by domestic and foreign consumers or traders at the time of application for the trademark of this case, and there is no economic relation with the goods used by the pre-use trademarks of this case.

2) Therefore, the trademark of this case does not fall under Article 7(1)12 of the Trademark Act.

B. Key issue of the instant case

The issue of this case, which is arranged by the plaintiff's above assertion, is whether the trademark of this case constitutes Article 7 (1) 12 of the Trademark Act.

3. Whether the trademark of this case constitutes Article 7(1)12 of the Trademark Act

A. Criteria for determination

Article 7(1)12 of the Trademark Act provides that trademark registration may not be granted for "a trademark which is identical or similar to a trademark (excluding a geographical indication) recognized as indicating the goods of a specific person between domestic or foreign users, or which is used for unlawful purposes, such as obtaining unjust profits or inflicting losses on the particular person." This provision provides that "a trademark which is recognized as indicating the goods of a specific person from domestic or foreign users is not registered in the Republic of Korea." This provision aims to obtain unjust profits by taking advantage of the business reputation, etc. of a third party which is embodied in the trademark subject to reproduction by registering and using the trademark which is recognized as indicating the goods of a specific person, or to use it for the purpose of impairing the value of the trademark subject to reproduction or interfering with the domestic business of the owner of the trademark subject to reproduction, etc. It shall be determined to the extent that the applicant’s trademark is economically and objectively identical or similar to the registered trademark at the time of using it, as well as to the extent that the applicant’s business is recognized as one of the designated goods subject to reproduction, and whether it is identical or similar to the extent of use.

B. Facts of recognition

In addition to the purport of the whole pleadings, the following facts shall be recognized in each statement of evidence set forth in sub-paragraphs 1 through 50:

1) A Austria’s skibh was established in Austria since the 1950s in order to manufacture and sell skiing and skibts. From 1973, “DYNIT” trademarks were manufactured and sold to European countries. DYNAF IT Gmbh was established in Austria around 1996, and the said company was merged into Salewa Group to which the Defendant’s Intervenor Company belongs.

2) From 2005 to 2005, the Defendant’s Intervenor Company sold skiing goods, skids and booms, caps, health boars, whites, and sports musical music programs using a mark which shapes skidsing off the same snow as “”. The Defendant completed trademark registration with respect to the above mark in the European Union (2005), Switzerland (2006), Canada (2007), Taiwan (207), and Taiwan (2007), New Zealand (209), Hungary (2010), Chile (200), and in Chile (2010), trademark registration with respect to text marks such as pre-use trademarks 2, such as pre-use trademarks 2, in the European Union (198), Japan (199), the United States (200), Canada (201), Austria (2001), Austria (2007, 20707, 20708).

3) The sales revenue of the goods sold by the Defendant Company using the pre-use trademarks has continuously increased since 2005, and around 5,162,536 oil ( approximately 6.9 billion won) in Italian in 209, approximately 5,097,754 oil ( approximately 6.8 billion won) in Austria, approximately 4,912,327 oil ( approximately 6.6 billion won) in Germany in Germany, approximately 4,236,934 oil ( approximately 5.7 billion won) in France, approximately 3,579,419 oil ( approximately 4.8 billion won) in Switzerland, approximately 1,262,167 oil ( approximately 1.7 billion won) in the United States, approximately 736,4363 billion won in Switzerland, and approximately 6.3 billion won in Switzerland.

4) The Defendant’s Intervenor consistently displayed the goods used by the pre-use trademarks in Germany’s “ISO” exhibition, and DYNNIT trading was awarded the “inward A” in 2005 (No. 10) by European Ski’s “Inward A” in 2009 (No. 11). The pre-use trademarks 2 were published in the “SKI” magazine (SK from September 1975), and “SKNIIG” magazines (Evidence 44 from September 197) published in Europe (Evidence 44).

5) From around 2009, the Defendant’s Intervenor Company manufactured products crops, stickers, news reporters, workshops, etc. and distributed 220 or more sales stores and retail stores in Italy, Austria, France, France, Germany, Switzerland, the United States and Japan (Evidence B or 14 to 20).

6) On April 14, 2011, the Intervenor Company requested Nonparty 1, the applicant, at the time of the instant application trademark, to transfer the registered trademark (registration number omitted, November 2007) with very similar marks (registration number), and Nonparty 1 demanded the Intervenor Company to transfer KRW 1.5 billion at the cost of transfer. On April 20, 2011, the Intervenor Company presented 10,000 (36,370,000) to the Defendant Company, but Nonparty 1, through Nonparty 2, “low customer,” and Nonparty 1, the applicant, at the time of the instant application trademark, knew of the value of the pertinent trademark and the pre-use trademark 1, and the mark. However, unless there is an agreement between the Parties, it would be difficult for the Defendant Company to bring about a negative measure against the Plaintiff’s product, including Korea’s brand products, and it would not be difficult for the Defendant to bring about any negative measure or market price to decline in its brand market.

C. Whether the pre-use trademarks are known in Europe

In light of the above facts, considering the use period of the pre-use trademarks, sales area, promotion details, and evaluation of the industry of products using the pre-use trademarks, the pre-use trademarks can be deemed to have been recognized as a trademark of a specific person among European consumers or traders, such as Italian, Austria, France, Germany, and Switzerland, around November 26, 2010, the filing date of the application trademark of this case with the “bicycle, bicycle, bicycle, Lao, burial, camping, etc.”

D. Whether the trademark of this case and the pre-use trademarks are identical or similar to the trademark of this case

In comparison with the applied trademark "" in this case, the pre-use trademark 1 " " " is the same as the location of the letter, and its appearance is the same as the name, while the pre-use trademark 2 " " " is the same as the appearance and name of the letter.

E. Whether there was an unlawful purpose to the Plaintiff

① The figure portion of the pre-use trademark 1 is deemed to be a melting trademark 1, and the character portion of the pre-use trademark 2 is highly creative. The trademark applied for registration contains the figure portion of the pre-use trademark 1, and is similar to the pre-use trademark as a whole. ② As seen earlier, the pre-use trademark is known to the extent that it can be perceived as a trademark of a specific person among European ordinary consumers or traders. ③ In light of the process of negotiations between the applicant for registration of the trademark and the non-party 1, it appears that the Plaintiff and the non-party 1 were aware of the existence of the pre-use trademark at the time of the application for registration of the trademark of this case, ④ The non-party 1 had a plan to start business related to the pre-use trademark of this case, and the non-party 2 may not be deemed to have been aware of the high-quality goods related to the pre-use trademark 1, including the pre-use trademark dilution goods of this case, and it may not be seen as having been related to the designated goods of this case.

F. Sub-committee

Therefore, the applied trademark of this case cannot be registered under Article 7 (1) 12 of the Trademark Act in relation to the pre-use trademark.

4. Conclusion

Thus, the trial decision of this case is legitimate based on the conclusion, and the plaintiff's claim seeking revocation is dismissed as it is without merit.

Judges Jeong Young-young (Presiding Judge)

Note 1) It shall be calculated on the basis of the exchange rate of 1,341 won (based on the rate of sale and purchase as of October 31, 2014) on one milk. The same shall apply hereinafter.