[1] The meaning and requirements of "interested person" who can request a trial to revoke a trademark registration under Article 73 (6) of the Trademark Act

[2] The case holding that where a trademark division registration is made by designated goods after a request for a trial on cancellation of trademark registration due to the non-use of a three-year trademark, the applicant for a trial on cancellation of trademark registration does not necessarily have an interest in all the designated goods of the registered trademark, and thus, the applicant falls under an interested party who can request a trial on cancellation

[1] An "interested party" under Article 73 (1) 3 of the Trademark Act, which may request a revocation trial on a trademark registration pursuant to Article 73 (6) of the same Act, refers to a person who has a direct and practical interest in the extinguishment of the registered trademark because it is objectively obvious that the existence of the registered trademark to be revoked may be affected by the trademark right holder's opposition against the trademark right and would be unable to use the trademark identical or similar to the registered trademark because it would be objectively affected by its legal status. In such cases, the interest of a claimant for the revocation of trademark is sufficient if there is a concern that one of the designated goods of the registered trademark may be protected by the right holder of the registered trademark and use the trademark identical or similar to the registered trademark cannot be used, and there is no need to have an interest

[2] The case holding that where a trademark division registration is made by designated goods after a request for a trial on cancellation of trademark registration due to the non-use of a three-year trademark, the person who requested a trial on cancellation of trademark registration does not necessarily have an interest in all the designated goods of the registered trademark, and thus, it constitutes an interested person who can request a trial on cancellation of registration

[1] Article 73 (6) of the Trademark Act / [2] Article 73 (6) of the Trademark Act

[1] Supreme Court Decision 2005Hu3291 Decided September 14, 2006 (Gong2006Ha, 1764)

C. S. Co., Ltd. (Patent Attorney Shin Shin-chul et al., Counsel for the defendant-appellant)

Hag-Junonian (Patent Attorney LnWn LAB et al., Counsel for the plaintiff-appellant-appellant)

December 5, 2008

1. The plaintiff's claim is dismissed.

2. The costs of lawsuit shall be borne by the Plaintiff.

The decision made by the Intellectual Property Tribunal on August 21, 2008 on the case No. 2008DaDa1599 shall be revoked.

1. Basic facts

(a) Details of the trial decision;

On January 18, 2008, the Defendant filed a request for the revocation of registration against the Plaintiff, who is the right holder of the instant registered trademark, as indicated in paragraph (b) below, on the ground that the registration of the instant registered trademark has to be revoked pursuant to Article 73(1)3 of the Trademark Act, since no trademark right holder, exclusive licensee, or non-exclusive licensee was used in the Republic of Korea for at least three consecutive years before the date a request for revocation is filed. Accordingly, the Plaintiff filed a request for a division of the instant registered trademark, and filed a request for the division of the trademark of the instant registered trademark of this case, with the divisional number No. 1 and No. 2 as to the part No. 21 of the designated goods of this case, the Patent Tribunal rendered the decision of this case cited by the Defendant on the ground that it cannot be recognized that the trademark of this case, including the divided registered trademark, was properly used for the designated goods within three years before the date of

B. The registered trademark of this case

(1) Composition:

(2) Date of application / Date of registration / Date of divisional registration / Number of registration:

August 2, 1990/ December 4, 1991/ March 14, 2008 No. 227344 of March 14, 2008

(c) Designated goods: flazin, Skin, cremation, cream, flaps, paths for cremation, spaths, spaths, labs and fumess in the classification of goods;

(d) Division number 1: Non-Nus in Category 21 of the classification of goods, and compact factorings in non- precious metal products;

(5) Division number 2: Compact of precious metal products of Category 14, classification of goods;

【Ground for Recognition: Facts without dispute】

2. Issues of the instant case

Whether the Defendant is an interested party who can seek revocation of the registration of the whole registered trademark of this case, and whether the Plaintiff used the registered trademark of this case for the designated goods for at least three consecutive years before the date of filing a request for revocation trial.

3. Whether the Defendant is a party to the instant petition for adjudication

A. Criteria for determination

(1) “Interested party” under Article 73(1)3 of the Trademark Act, which may request a revocation trial on a trademark registration pursuant to Article 73(1)6 of the same Act, refers to a person who has a direct and realistic interest in the extinguishment of the registered trademark, as it is objectively obvious that the existence of the registered trademark to be revoked may result in damage because the trademark right is set up against the trademark right holder due to the impossibility of using the trademark identical or similar to the registered trademark, or is likely to result in damage due to the impossibility of its use (see Supreme Court Decision 2005Hu3291, Sept. 14, 2006).

(2) In this case, the interest of a claimant for the cancellation of registration is sufficient if there is a concern that even one of the designated goods of the registered trademark is against the right holder of the registered trademark and it would be impossible to use the trademark identical or similar to the registered trademark, and there is no need to have an interest in all the designated goods of the registered trademark.

B. The defendant's interest

On January 26, 2006, the Defendant filed an international application for the international trademark registration No. 539861 (CALPSO registered on June 2, 1989) with the Republic of Korea as a subsequent designation country, with natural or human punch (nific punch for cremation was revised on May 9, 2007) as the designated goods. However, on February 9, 2007, the Defendant received a notification of the provisional rejection from the Korean Intellectual Property Office on the ground that it falls under Article 7 (1) 7 of the Trademark Act, which was similar to the registered trademark of this case, and received a decision of refusal on the ground that the above grounds for rejection was not completely annulledd on July 11, 2007.

Therefore, the defendant can not register or use the trademark identical or similar to the trademark of this case due to the existence of the trademark of this case, and thus constitutes a person who has a direct and realistic interest in the extinguishment of the trademark of this case, and even if the trademark division registration of this case was made after the registration cancellation request of this case, it is identical to all the designated goods of the original registered trademark of this case.

[Grounds for Recognition: Evidence Nos. 1 through 7, empirical rule, purport of whole pleadings]

C. Judgment on the Plaintiff’s assertion

The plaintiff asserts that the "natural or artificial punch" as the original designated goods of the defendant or the "punch paper for cremation" as the revised designated goods is not only unclear what the defendant actually handles, but also because the "punch paper for cremation" and the goods of Chapters 3 and 14 among the designated goods of the registered trademark of this case do not constitute the same or similar trademark, at least there is no interest of the defendant in the part of Chapters 3 and 14.

However, the "hununch" means punching or punching a cosmetic, which is commonly used, and thus cannot be deemed as a cunching and comprehensive expression to traders or consumers. Of the designated goods in this case, not only the designated goods in Chapter 21 but also the goods in Chapter 3, which fall under cosmetics, or the materials of the compact cunching, which is the "portun" as a precious metal product, is the same use as that of the precious metal product in Chapter 14, and is common to producers, sellers, distribution channels, and consumers. Moreover, as seen earlier, the interested parties in the trademark registration cancellation trial as seen in this case do not necessarily require interests in all the designated goods of the registered trademark in this case, and thus the Plaintiff’s above assertion is without merit.

[Grounds for Recognition: Evidence Nos. 1 through 7, Evidence Nos. 1, 2, 3, experience, and purport of the whole pleadings]

4. Whether the registered trademark of this case is used as the designated goods

The Defendant asserted that the registration of the instant registered trademark should be revoked on the ground that it falls under Article 73(1)3 of the Trademark Act, but the Plaintiff, the holder of the right, did not prove that the instant registered trademark was properly used in Korea within three years before the date of the request for revocation of the instant registered trademark.

5. Conclusion

Thus, the defendant constitutes an interested party who can file a petition for the revocation of registration on the whole trademark of the registered trademark of this case and the registered trademark of this case constitutes a case where a trademark right holder, an exclusive licensee, or a non-exclusive licensee fails to prove that the designated goods were used in Korea within three years before the date a request for the revocation of registration of this case is filed, and thus, the registration of this case is revoked. The decision of this case is legitimate, and the plaintiff's claim of this case seeking the revocation is dismissed

Judges Sung-sung (Presiding Judge) (Presiding Justice)