In a case where the actual use of a trademark is modified so that it can be seen as identical or similar to the subject trademark, and the use of the trademark is more likely to mislead or confuse consumers into the source of goods than the case where the registered trademark is used as it is in relation to the subject trademark, whether the use of the trademark in actual use can be seen as the use of the trademark similar to the registered trademark in a trial on cancellation of trademark registration on the ground of unlawful use as provided by Article 73(1)2 of the Trademark Act (affirmative); and whether it is necessary to determine whether the subject trademark is widely and well-known (negative)

Article 73(1)2 of the Trademark Act provides that trademark registration may be revoked in cases where an owner of a trademark right intentionally uses a trademark similar to the registered trademark on designated goods or uses a trademark similar to the designated goods on goods similar to the designated goods, which misleads consumers as to the quality of goods or makes them confused with goods related to business of another person, by regulating that he/she does not use his/her registered trademark in excess of the scope of his/her right to use in violation of the original purpose of the trademark system, thereby promoting safety in trade of goods, and preventing acts to disrupt the credibility or reputation of another person’s trademark from taking advantage of his/her trademark, and protecting the business reputation and rights and interests of the users of other trademarks as well as protecting the interests of the trader and consumers. On the other hand, Article 73(1)3 of the Trademark Act provides that “When an owner of a trademark right or exclusive licensee fails to use a trademark registered in Korea without justifiable grounds, it is not likely to mislead consumers as to the use of the registered trademark on the grounds that the trademark is not identical or similar to the trademark under Article 73(1) of the Trademark Act.”

Article 73(1)2 and 3 of the Trademark Act

Supreme Court en banc Decision 2002Hu1225 Decided June 16, 2005 (Gong2005Ha, 1184) Supreme Court Decision 89Hu2304 Decided September 11, 1990 (Gong2011Sang, 479) (Gong201Sang, 2096) Supreme Court en banc Decision 2010Hu2407 Decided January 27, 201 (Gong201Sang, 479)

M-sports Co., Ltd. (Bae, Kim & Lee LLC, Attorneys After Dong-dong et al., Counsel for the plaintiff-appellant)

MPC Co., Ltd. (Patent Attorney Seo Young-young, Counsel for the defendant-appellant)

Patent Court Decision 201Heo1439 Decided April 18, 2012

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

The grounds of appeal are examined.

1. Article 73(1)2 of the Trademark Act provides that a trademark right holder may revoke trademark registration in cases where the trademark right holder intentionally uses a trademark similar to the registered trademark on the designated goods, or uses the registered trademark or similar trademark on goods similar to the designated goods so as to mislead consumers as to the quality of goods or to confuse with goods related to another person’s business, by regulating that the trademark right holder does not use his/her registered trademark in excess of the scope of license in violation of the original purpose of the trademark system, thereby promoting the safety of transaction of goods, and preventing the unfair use of the registered trademark in violation of the original purpose of the trademark system. The purpose of the provision is to prevent an act of taking advantage of the credibility or reputation of another person’s trademark and to protect not only the interests of transaction parties and consumers, but also the business reputation and rights and interests of the users of another trademark (see Supreme Court en banc Decision 2002Hu125, Jun. 16, 2005). On the other hand, Article 73(1)3 of the Trademark Act provides that the trademark right holder may revoke trademark registration for reasons similar to use of the registered trademark without justifiable reason.

In other words, a trademark actually used (hereinafter “actually used trademark”) is modified to view the registered trademark as identical or similar to another person’s trademark (hereinafter “subject trademark”), and if the use of the trademark is more likely to mislead or confuse the source of goods than the case where the registered trademark is used as it is in the relation with the subject trademark, it shall be deemed that the use of the actually used trademark can be deemed a use of a trademark similar to the registered trademark in a trial on cancellation of trademark registration on the ground of an unlawful use as provided by Article 73(1)2 of the Trademark Act, and in this case, it does not require that the subject trademark has been widely and clearly known (see Supreme Court Decision 89Hu2304 delivered on September 11, 190, etc.).

2. On the grounds indicated in its reasoning, the lower court determined that: (a) the Defendant’s trademark 2, 3, and 4 used by the Defendant omitted diagrams from the Defendant’s registered trademark of this case (trademark registration number omitted); (b) the size of letters was changed to a unique shape; and (c) the letters was changed to a direction similar to the Plaintiff’s registered trademark 3, which was used by the Defendant; (b) the actual use trademark constitutes use similar to the registered trademark under Article 73(1)2 of the Trademark Act in light of the degree of its alteration, and (c) the name or concept was considerably different enough to overcome such similarity; and (d) the trademark at the time of request for a trial, as the trademark of this case was known to general consumers as the source mark of goods; and (e) the Defendant’s use of the registered trademark of this case was likely to cause confusion between the Plaintiff and the Defendant and the Defendant’s consumers as to its use of the trademark of this case; and (e) the Defendant’s use of the trademark of this case was likely to cause to confuse the Plaintiff’s use of the registered trademark as the trademark of this case.

Examining the reasoning of the lower judgment in light of the aforementioned legal doctrine and the evidence duly admitted, the lower court did not err in its judgment by misapprehending the legal doctrine regarding the trademark identity and similarity, or by failing to exhaust all necessary deliberations, or by exceeding the bounds of the principle of free evaluation of evidence against logical and empirical rules, contrary to what is alleged in the grounds of appeal.

3. 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 on the bench.

[Attachment]

Justices Shin Young-chul (Presiding Justice)