[1] Whether a trademark for which a trial decision on invalidation of trademark registration has become final and conclusive falls under " another person's registered trademark by an earlier application" under Article 7 (1) 7 of the former Trademark Act (negative)

[2] The case holding that where a trial decision to invalidate the registration of a quoted trademark becomes final and conclusive after a trial decision to maintain a rejection ruling on the ground that it is similar to the cited trademark, the trial decision to invalidate the trademark is unlawful

[1] When a trial decision to invalidate a trademark becomes final and conclusive, the trademark right is deemed to have never existed from the beginning, unlike the time when a trial decision to revoke the trademark registration becomes final and conclusive or when the trademark right was cancelled due to other circumstances (see Article 71 (3) of the former Trademark Act (amended by Act No. 5083 of Dec. 29, 1995). Thus, even if a trademark was registered at the time of an application for a trademark, if a trial decision to invalidate the trademark becomes final and conclusive after the registration becomes final and conclusive, the cited trademark shall be deemed not to have existed from the beginning, and the cited trademark shall not be deemed to have existed at the time of the application for the trademark registration, and therefore, the cited trademark shall not be deemed to constitute a "other person's registered trademark by an earlier application"

[2] The case holding that in a case where a trial decision to invalidate the registration of a cited trademark becomes final and conclusive after a trial decision to invalidate the registration of a cited trademark is rendered on the grounds of the similarity between the cited trademark and the cited trademark, the trial decision to invalidate the trademark becomes final and conclusive before the decision to invalidate the registration of the cited trademark becomes final and conclusive, and in a case where the decision to invalidate the registration of the cited trademark becomes final and conclusive after the decision to invalidate the registration of the cited trademark becomes final and conclusive, as long as the decision to invalidate the trademark is recognized to have no cited trademark at the time of the trial decision

[1] Articles 7(1)7 and 71(3) of the former Trademark Act (amended by Act No. 5083 of Dec. 29, 1995) / [2] Articles 7(1)7, 70-2 and 71(3) of the former Trademark Act (amended by Act No. 5083 of Dec. 29, 195)

[1] Supreme Court Decision 90Hu281 delivered on March 22, 1991 (Gong1991, 1284), Supreme Court Decision 93Hu139 delivered on May 27, 1994 (Gong1994Ha, 1838), Supreme Court Decision 94Hu1121 delivered on November 22, 1994 (Gong195Sang, 111), Supreme Court en banc Decision 93Do839 delivered on May 16, 1996 (Gong196Sang, 1783), Supreme Court Decision 96Hu566 delivered on October 25, 196 (Gong196Ha, 345), Supreme Court Decision 97Hu1979 delivered on March 14, 1997 (Gong196Ha, 197).

Applicant (Patent Attorney Lee Chang-soo, Counsel for defendant-appellant)

The Commissioner of the Korean Intellectual Property Office

Korean Intellectual Property Office Decision 96Na1064 dated October 27, 1997

The decision of the court below is reversed, and the case is remanded to the Intellectual Property Tribunal.

The grounds of appeal are examined (to the extent of supplement in case of supplemental appellate brief).

1. According to the reasoning of the decision of the court below, the court below determined that the decision of rejection by applying Article 7 (1) 7 of the former Trademark Act (amended by the Ordinance of the Ministry of Trade, Industry and Energy No. 5083 of February 29, 1998) was justifiable, and that the trademark of this case is registered by the earlier application and its designated goods are similar to those of the cited trademarks, and its name and appearance are similar to those of the designated goods, and thus, if they are used together, it may cause misconception and confusion about the origin of the goods. Thus, the decision of rejection by applying Article 7 (1) 7 of the former Trademark Act (amended by the Ordinance of the Ministry of Trade, Industry and Energy No. 5083 of December 29, 1995) is justified, and further, the decision of invalidation as to whether the trademark of this case continues the invalidation trial as to the cited trademark.

2. When a trial decision to invalidate the registration of a trademark becomes final and conclusive, the trademark right is deemed to have never existed at the beginning, unlike when a trial decision to revoke the registration of the trademark becomes final and conclusive or a trial decision to revoke the registration of the trademark was cancelled due to other circumstances (see Article 71(3) of the former Trademark Act). If a trial decision to invalidate the registration of a trademark at the time of an application for registration becomes final and conclusive later, the cited trademark shall be deemed not to have existed at the time of the application for registration of the trademark, and the quoted trademark shall not be deemed to have existed at the time of the application for registration of the trademark. Accordingly, the quoted trademark shall not be deemed to constitute a "other person's registered trademark by an earlier application" under Article 7(1)7 of the former Trademark Act (see, e.g., Supreme Court Decisions 96Hu566, Oct. 25, 1996; 96Hu801, Mar.

However, according to the records, the court below's decision on March 9, 1998 that the trademark of this case cannot be registered on the ground of the similarity with the cited trademark can be acknowledged as a final and conclusive judgment on the invalidation of registration against the cited trademark on March 9, 1998, which was subsequent to the decision of the court below. Thus, even if the time of the final and conclusive judgment on the invalidation of registration of the cited trademark is subsequent to the decision of the court below, such decision becomes final and conclusive prior to the final and conclusive ruling on the rejection of the trademark of this case, and as long as the retroactive effect is recognized on the decision of the court below

Therefore, the ground of appeal pointing this out is with merit.

3. Therefore, without examining the remaining grounds of appeal by the appellant, the decision of the court below is reversed, and the case is remanded to the Intellectual Property Tribunal corresponding to the original judgment. It is so decided as per Disposition by the assent of all participating Justices.

Justices Son Ji-yol (Presiding Justice)