In a case where a requester of a trial to confirm the scope of passive rights seeks confirmation that the challenged mark and the challenged trademark are identical or similar to the challenged mark, without contesting that the challenged mark and the challenged trademark are identical or similar to the designated goods, and seeks confirmation that the challenged mark do not fall under the scope of the right of the registered trademark, by alleging grounds for restrictions on the exercise of trademark rights, which are the hostile (human)

A trial to confirm the scope of a trademark right shall have res judicata effect on not only the parties to a trial but also third parties, in cases where a trial decision becomes final and conclusive as it aims at confirming whether a trademark right has an effect on a trademark which a claimant uses as the object of a trial in his/her request (hereinafter referred to as "mark subject to confirmation"). Therefore, a trial to confirm the scope of a trademark right shall have res judicata effect on not only the parties to a trial but also the third parties. Therefore, a petitioner for a trial to confirm the scope of a trademark right does not dispute that the challenged mark and the trademark of the respondent are identical or similar to the trademark subject to confirmation (designated). However, he/she has the right to continue to use the trademark under Article 57-3 of the Trademark Act (hereinafter referred to as "right to use the trademark in prior way") or seeks confirmation that the challenged mark does not belong to the scope of a trademark right, by asserting grounds for restrictions on the exercise of the trademark right, which is in violation of social order in relation to a claimant, as it is irrelevant to the confirmation of a right.

Articles 57-3 and 75 of the Trademark Act

Supreme Court Decision 2011Hu3872 Decided March 15, 2012 (Gong2012Sang, 601)

Jeju Co., Ltd.

Transmission Industry, Inc.

Patent Court Decision 201Heo10382 Decided February 23, 2012

The lower judgment is reversed. The trial decision rendered by the Intellectual Property Tribunal on October 6, 201 with respect to the case No. 2010Da769 on October 6, 201 is revoked. The total costs of the lawsuit are borne by the Plaintiff.

Judgment ex officio is made.

1. A trial to confirm the scope of a right to a trademark right is for the purpose of confirming whether a claimant's trademark right has the effect of trademark right against a trademark which is the object of a trial at the claimant's request (hereinafter referred to as "mark subject to confirmation"), and if the trial decision becomes final and conclusive, it has the effect of res judicata against not only the parties to a trial but also third parties. Therefore, a trial to confirm the scope of a right has the effect of res judicata against a third party as well as the parties to a trial, without contesting that the challenged mark and the registered trademark of the respondent are identical or similar to the trademark subject to confirmation (designated). However, a trial to confirm the scope of a right has the "right to continue to use a trademark due to prior use" under Article 57-3 of the Trademark Act (hereinafter referred to as "right to use a trademark due to prior use"), or to seek confirmation that the challenged mark does not belong to the scope of a right to the trademark right, regardless of whether there is no benefit of confirmation, and thus, a trial to confirm ex officio examination by the Intellectual Property Tribunal or ex officio.

2. According to the records, the Plaintiff did not dispute the fact that the challenged mark, such as “,” with the goods used as an invoice, is identical or similar to the registered trademark (registration number omitted) of this case and the marks and the goods used (designated goods) composed of “,” which are identical or similar to “,” while the Plaintiff filed a petition for a trial to confirm the scope of passive rights that the challenged mark does not fall under the scope of the right of the registered trademark of this case on the ground that he/she has the right to prior use.

In light of the above legal principles, the above reasons are merely the grounds for restriction on the exercise of a trademark right, and are irrelevant to the confirmation of the right to the extent that the trademark right is effective, and thus, the request for a trial to confirm the scope of a right in this case is unlawful as there is no benefit of confirmation. Thus, the Korean Intellectual Property Tribunal erred in its judgment dismissing the instant request for a trial even though it should have been investigated ex officio without the party’s explicit assertion and should have rejected the request for a trial in this case, and the court below also rendered a judgment on the merits. The court below erred by misapprehending the legal principles on the benefit of confirmation at the trial to confirm the passive scope of a right, which affected the conclusion of the judgment. Meanwhile, although the plaintiff added the defendant’s application for a trademark in this case as one of the grounds that the challenged mark did not fall under the scope of the right of the registered trademark in this case, the confirmation judgment on the scope of a right in this case is unlawful as there is no benefit of confirmation.

3. Therefore, the judgment of the court below is reversed. Since this case is sufficient for this court to directly render a judgment, the Patent Tribunal’s ruling on the case No. 2010Da769 decided Oct. 6, 201 is revoked, and it is so decided as per Disposition by the assent of all participating Justices on the bench, applying Article 99 of the Civil Procedure Act with respect to the bearing of litigation costs.

Justices Lee In-bok (Presiding Justice)