R clubs Fri-St. (Law Firm Sejong, Attorneys Yellow-ho et al., Counsel for the plaintiff-appellant)

Daz club Korea Co., Ltd. (Law Firm General Law Office, Attorneys Jeong Tae-won et al., Counsel for the plaintiff-appellant)

November 7, 2002

1. The plaintiff's claim is dismissed.

2. Litigation costs shall be borne by the plaintiff.

The decision made by the Intellectual Property Tribunal on June 29, 2002 on the case No. 2002Dang274 shall be revoked.

1. Basic facts

The following facts can be acknowledged in light of the whole purport of the pleadings in the statement Nos. 1-1, 2, 12, and 3-1.

A. Details of the registered service mark of this case

(1) The composition; “(2) registration number; (3) filing date/registration date; (4) December 30, 1998; (5) the holder; (3) the designated service business of an English private teaching institute for children [Attachment 2] under Article 6 [Attachment 2] of the former Enforcement Rule of the Trademark Act (amended by Ordinance of the Ministry of Industry and Economy No. 83 of February 23, 1998; hereinafter the same shall apply]; and (4) the classification of service business of an English private teaching institute for children (hereinafter referred to as the classification of service business of the former category];

B. Contents of the cited service mark

(1) The composition; "(2) registration number; (3) filing date/registration date; (4) June 19, 198 on March 14, 1995/ April 28, 1998; (5) the holder; (5) designated services; (1) the business of operating English private teaching institutes; (2) the business of providing counseling for children’s English communications; and (3) the business of providing counseling for children’s English English education; and (4) the service business related to educating children in English (category 112 of the former service business);

(c) The plaintiff's petition for invalidation of registration (Patent Tribunal No. 2002Da274)

(1) Grounds for claim

The service mark of this case is similar to the cited trademark, which is the Plaintiff’s prior-registered trademark, and its title and concept, and is registered in violation of Article 7(1)4, 7, 9, 10 and 11 of the Trademark Act, and thus, should be invalidated.

(2) The judgment of the court below

On June 29, 2002, the Korean Intellectual Property Tribunal rendered a ruling to dismiss the plaintiff's claim.

(3) Summary of the grounds for the instant trial decision

(A) Whether Article 7(1)7 of the Trademark Act is applicable

Examining the external appearance of both service marks, the cited service marks are knee and knee in the 7th place, and they are on the right side outside the fel and right side of knee in the front, and on the basis of the above points, “THE KALUB” in English language, and the bottom side of the point, “THE KSGUB” in English, and the two marks are not similar. The two marks are kngs click in the two service marks, “ or children’s private teaching institutes,” and “the children’s knish or glish glish glish glish glish glish glish glish glish glish glish glish glish glish glish glish glish glish glish glish glish glish glish glish glish glish glish glish.”

(B) Whether it falls under Article 7(1)9, 10, and 11 of the Trademark Act

The registered service mark of this case and the cited service mark of this case constitute a non-similar mark because they correspond to a mark different from the essential part and thus, even if the cited service mark is well-known and well-known, both service marks are similar, and thus there is no practical benefit in comparison, and the evidence submitted by the Plaintiff by asserting that the cited service mark is well-known and well

(C) Whether it falls under Article 7 (1) 4 of the Trademark Act

Since the registered service mark and the cited service mark of this case are similar to their essential part, there is no evidence that the registered service mark of this case has been registered by imitateing the cited service mark, the act of using the registered service mark of this case does not constitute an act contrary to good customs such as fair distribution order of goods or international trust and morality.

2. Whether the trial decision of this case is legitimate

A. Summary of the grounds for revocation of the Plaintiff’s trial decision

(1) Claim on similarity of marks

The registered service mark of this case and the cited service mark of this case are distinctive parts of the constituent parts, and both service marks are referred and conceptualally referred to in the part of the English text "Dals Clllb". Thus, both service marks are similar.

(2) As to the violation of Article 8(1) of the Trademark Act

The registered service mark of this case and the cited service mark of this case are similar and similar to the designated service business as seen above. Since the registered service mark of this case was applied after the cited service mark was applied for, the registered service mark of this case is registered in violation of Article 8 (1) of the Trademark Act as to the principle of seafarers.

(3) Claim as to violation of Article 7 (1) 4 and 11 of the Trademark Act

(A) The defendant's representative director, Kim Jae-jin entered into a contract with the plaintiff's telegraphage International International (hereinafter only referred to as LCI) and used the service mark "kb" with the permission of the plaintiff as to the registered service mark of this case, despite the plaintiff's well-known knowledge that the plaintiff has the right to the registered service mark of this case, the contract of this case unilaterally with the above LCI conflicts with the trust relationship between the contracting parties by unilaterally destroying the contract with the above LCI, and registered LCI's trade name in the contract with him as the registered service mark of this case without permission, which constitutes an act that is likely to disturb the public order or good customs as provided by Article 7 (1) 4 of the Trademark Act.

(B) The registered service mark of this case is used as a service mark the trade name included in “Ltd”, which represents a corporation in English. Although the holder of the right to the registered service mark of this case is an internal individual that has no relations with a foreign corporation, it might cause parents who are interested in English education, which is the main consumers of the registered service mark of this case, to mislead and confuse them as being a foreign corporation by the holder of the right to the service mark of this case. In addition, at the time of the application for the registered service mark of this case, LCI had a very known fact that it was a franchise in charge of the overall world’s “cator” among domestic consumers, so if Defendant or Kim Jae-jin uses the registered service mark of this case, it might cause ordinary consumers to confuse them as being operated by LCI or the company permitted by it, which is operated by the private educational institute.

(C) The instant service mark includes not only the Plaintiff’s overall LCI’s trade name, but also the part of the constituent elements of “khsclb”, an abbreviation of the cited service mark. Of these, “kksclb” has already been recognized as the source of LCI at the time of the registration of the instant registered service mark, and consumers will be aware of the instant registered service mark as a mark indicating LCI’s business. Furthermore, the instant registered service mark includes the instant registered service mark in the English language of LCI, the actual right holder of the instant registered service mark, and thus, ordinary consumers might be aware of the instant registered service mark as the service mark of “LCI” as a result.

(D) Therefore, the registered service mark of this case is filed by copying the trade name of a foreign corporation, the representative director of the defendant, in violation of the trust relationship, and it is filed by using the cited service mark as a part of the component of the "Kksclb", which is known and well-known in the Republic of Korea as the abbreviation of the cited service mark. Thus, it is against the public order and good morals, and it is also against the service mark that is likely to mislead consumers, and constitutes Article 7 (1) 4 and 11 of the Trademark Act.

(4) Claim as to violation of Article 7 (1) 9 and 10 of the Trademark Act

The cited service mark and its abbreviation "Daz club" have already been recognized as indicating the source of LCI among domestic consumers at the time of the application for the registered service mark of this case. The registered service mark of this case is identical to LCI's "Daksclb" or its abbreviation, which is the main part of the cited service mark, and therefore, it constitutes Article 7 (1) 9 and 10 of the Trademark Act in relation to the cited service mark or "Daz club".

B. Determination

(1) Determination as to the similarity of the registered service mark of this case and the cited service mark

(A) In determining the similarity of trademarks, the similarity of trademarks shall be determined on the basis of whether there is a concern for misconception or confusion as to the origin of goods by objectively, comprehensively, and separately observing the external appearance, name, and concept of the trademark, and the combined trademark consisting of letters, letters, and figures is not necessarily called or conceptualized by the whole name or shape of the constituent part. Thus, if each constituent part is not combined to the extent that it is natural if observing separately, the similarity shall be determined by comparing the trademark that is simply called and conceptualized by only a part of the constituent part, and if each constituent part is indivisible to the extent that it is natural if observing separately, the similarity shall be determined by comparing the entire constituent part of the two trademarks in principle (see Supreme Court Decision 98Hu829, Apr. 23, 199).

(B) The registered service mark of this case is a mark consisting of the English letters “LCI LG Lbs Ltd.,” and the English letters “LCGs Ltd.,” and the cited service mark is a trademark consisting of the English letters and the English characters “LCGs Ltd.,” and the cited service mark is a figure where the English flag is damaged in the original design, etc. and the two arms are faced with each other, and the cited service mark may separately observe the registered service mark of this case and the cited service mark of this case by dividing them into each constituent part of the registered service mark of this case and the cited service mark of this case into the English language “THE KIDS CLB,” and the cited service mark of this case. The cited service mark of this case may separately observe each constituent part.

However, in the parts of the registered service mark of this case and the cited service mark of this case, the term "Dalsclb" combines the English language "Clllb," which is an English language language at the middle school level, which is the English language at the middle school level of "Dalb", and in light of the English diffusion level in Korea, the designated service business of the instant registered service mark and quoted service mark, "children's English Institute of Education," which is the designated service business of the instant registered service mark, shall be deemed as the non-distinctive part by enabling consumers to use such mark in the designated service business. In addition, in addition, in relation to the parts of the registered service mark of this case, "Liguage Lt. d." and the cited service mark "Engulb clb" with the meaning "international language clubs corporation" and the cited service mark, the designated service business is not directly recognized as the designated service business in relation to the above designated service business.

Therefore, the registered service mark of this case is an essential part of its composition with its distinctiveness only, and the cited service mark is an essential part with distinctiveness only. The cited service mark of this case is an essential part with distinctiveness. In comparison with the registered service mark of this case and the cited service mark of this case, it is apparent that both trademarks cannot be identical or similar in any aspect of their appearance, name, and concept, and thus both service marks are similar to those of the overall observation.

(C) As to this, the Plaintiff asserts to the effect that, as the Plaintiff’s overall trademark of LCI, which is the common part of the instant registered service mark and the cited service mark, both of the instant registered service mark and the cited service mark are similar to the name and concept, both of the instant registered service mark and the cited service mark, not only acquired distinctiveness as the Plaintiff’s overall trademark, but also in the actual transactional world.

In light of the whole purport of the oral argument in the statement of evidence No. 8-1 through No. 8, the facts that the term “children’s English private teaching institute business” provided by the Plaintiff was introduced several times in the domestic daily newspapers, etc. on the name of “Daz club” may be acknowledged. However, such circumstance alone is insufficient to recognize that the title “Daz club” was acquired as the Plaintiff’s overall service mark at the time of the application for the cited service mark or the registered service mark of this case. Unless there are special circumstances, such as that the cited service mark or registered service mark is particularly well-known, or that the use of the cited service mark is not likely to cause confusion among consumers even if the cited service mark or the designated service mark is particularly high, the similarity between the cited service mark and the cited service mark is objectively determined based on the composition of both service marks, and whether the two service marks are similar in consideration of the actual status of the goods used in the real trade. Therefore, the Plaintiff’s above assertion is without merit.

(2) Determination as to whether Article 8(1) of the Trademark Act is violated

In order for a registered service mark to be deemed to fall under Article 8(1) of the Trademark Act in relation to the cited service mark, both service marks should be identical or similar. As seen above, the registered service mark of this case and the cited service mark cannot be deemed to be identical or similar. Therefore, the Plaintiff’s assertion that the registered service mark of this case constitutes Article 8(1) of the Trademark Act in relation to the cited service mark is without merit.

(3) Determination as to whether Article 7 (1) 4, 9 through 11 of the Trademark Act is violated

(A) In order for a registered service mark to be deemed to fall under Article 7(1)4(b)9 through 11 of the Trademark Act as a trademark which imitates the cited service mark, the first registered service mark itself should be the premise that the cited service mark itself is similar to or identical to the cited service mark. The cited service mark at the time of the application for the registered service mark should be known and clarified among domestic consumers, or even if the cited service mark or its use service is not always widely known and clearly known, it should be known to the extent that it can be perceived as a specific person’s service mark or service business if it is at least a general transaction in Korea.

(B) We examine the facts that the registered service mark of this case is similar to the cited service mark or that it is not identical with the cited service mark. Considering the whole purport of the argument in the statement Nos. 1, 2, and 10 of evidence Nos. 5-1, 2, and 7, and No. 1 through 8 of evidence Nos. 8, the fact that the chain of children’s English Institute of Education operated by LCI was introduced from May 1995 to domestic newspapers, etc. from around May 1995 can be acknowledged. However, there is no evidence to deem that the "Dagdong" falling under the cited service mark or its abbreviation, as the service mark of the plaintiff or the above LCI, was well known and clearly among domestic consumers, or that it was recognized as a specific person’s service mark.

Therefore, we cannot accept the Plaintiff’s assertion purporting that the registered service mark of this case constitutes the registered service mark of this case falling under Article 7(1)4 and 9 through 11 of the Trademark Act, under the premise that the registered service mark of this case is similar to the cited service mark of this case or the registered service mark of this case, and that the cited service mark or the service mark of this case constitutes a specific person’s trademark at the time of application for the registered service mark of this case.

(4) Determination as to whether an act of worship violates Article 7(1)4 of the Trademark Act

(A) For the purpose of Article 7 (1) 4 of the former Trademark Act, the term “trademarks which are contrary to the public order or good customs” refers to a case where the composition of the trademark itself or the meaning or content that the trademark gives to the general consumers when used on the designated goods goes against the public order and good customs, which is the normal moral sense of the general public, or where the act of using a trademark which imitates another’s trademark without permission, as if it were used for the registration of the trademark to take advantage of the reputation, such as the trademark or its trade name, which is widely and well-known and well-known, violates good customs such as fair goods distribution order or international trust and morality.

(B) Examining the case’s return to this case, comprehensively taking account of the whole purport of argument as to evidence Nos. 1, 9, 10, and 11-1 and 2 of evidence Nos. 1 and 11-2, the defendant’s representative director entered into a license agreement with LCI on February 10, 1995 where the above Kimjin-jin’s act of operating his business using the trademark for children’s English education programs provided by LCI and No. 3 of this case’s trademark law as its main purpose is to protect children’s English education programs and No. 7 of this case’s trademark right holder’s registered service mark No. 7 of this case’s trademark law, which is contrary to the principle of trust and good customs of LCI on June 21, 1998, the above agreement terminated by notification of termination of the contract by the owner of the trademark right, which is contrary to the principle of trust and good customs of the defendant’s trademark right holder’s trademark right holder or its registered trademark under the name of this case’s trademark law.

(5) Determination as to the Plaintiff’s assertion

The Plaintiff asserts that the registered service mark and the cited service mark in this case are identical and similar to the registered service mark and the cited service mark in this case, even though they are used in relation to their designated service business and they are non-distinctive parts, they cannot be ruled out that both of the registered service marks in this case and the cited service mark in this case are identical and similar to their titles and concepts. However, in determining the similarity of the combined trademark or service mark of letters, letters, or diagrams, the parts without distinctiveness in relation to the designated goods or the designated service business cannot be deemed to function as trademark. Thus, the Plaintiff’s assertion that only those parts with distinctiveness other than those can be called as a trademark by the non-distinctive part or by the non-distinctive part can not be determined as a similar because they can not be viewed as a trademark or service mark without distinctiveness. Thus, the Plaintiff’s assertion cannot be accepted.

C. Sub-committee

Therefore, the decision of this case, which dismissed the plaintiff's appeal on the ground that there is no ground for invalidation of the plaintiff's assertion, is justifiable.

3. Conclusion

Therefore, the plaintiff's claim of this case is dismissed as it is without merit, and it is so decided as per Disposition.

Judges of the Kimchi (Presiding Judge)