Pacific Co., Ltd. (Patent Attorney Han-chul, Counsel for the defendant-appellant)

Loraal (Attorney Hwang Young-young, Counsel for the plaintiff-appellant)

February 20, 2004

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 July 11, 2003 on the case No. 2002Da3082 shall be revoked.

1. Basic facts

[Evidence: Descriptions of Evidence A1 to 5]

A. The registered trademark of this case

(a) Registration number: No. 534795;

(2) Date of application/registration: November 11, 2002

(3) Marks:

(4) Person entitled to registration: Plaintiff

(5) Designated goods: “The category of goods listed in Table 1 attached to the former Enforcement Rule of the Trademark Act (amended by Ordinance of the Ministry of Commerce, Industry and Energy No. 146 of December 24, 2001, hereinafter “the former classification of goods”) No. 3” (hereinafter “the former classification of goods”) of Article 6 of the former Enforcement Rule of the Trademark Act (amended by Ordinance of the Ministry of Commerce, Industry and Energy”).

(b) A quoted trademark;

(a) Registration number: No. 501495;

(2) Date of application/registration: December 6, 1999/ September 17, 2001

(3) Marks:

(4) Person entitled to registration: Defendant

(5) Designated goods: Category 3 of the former Product Classification: "flag, general flower, bath; diesel for shower, chemical equipment, human body shielde, fluorcation, fluorcation, fluorcation, fluorcation, fluorcation, fluorcation, handcing, brush, brudging, fashion, brush, handbing, brush, handbing, brush, brush, bruthelel, brust, brust, brust, brush, brush, brush, brush, gluoring, gresting, gresting, gresting, glust, glust, greshing, greshing, greshing, greshing, greshing, greshing, glush, gresh, greshing,

C. Details of the instant trial decision

The defendant filed for a registration invalidation trial against the plaintiff pursuant to Article 71 (1) 1 of the Trademark Act, asserting that the registration of the registered trademark of this case is to be invalidated because it is applied for or registered by imitateing the cited trademark widely recognized as the defendant's trademark at home and abroad for the purpose of gaining unfair profits, and that the registered trademark of this case is likely to mislead consumers, and thus, it is likely that the registration should be invalidated. The Korean Intellectual Property Tribunal deliberated on it as 200Da3082, July 11, 2003, and rendered the decision of this case citing the defendant's request for a trial on the invalidation of registration pursuant to Article 71 (1) 1 of the Trademark Act.

D. Summary of the grounds for the instant trial decision

(1) The registered trademark of this case is composed of the combination of “kn't kn't kn't k't l' and “h't l't l't l't l't l't l't l't l't l't l't l't l't l't l't l't l't l't l't l't l't l't l't l', and the cited trademark of this case is composed of the combination of “h't l't l' and "h't l't l't l't l't l't l', and the cited trademark of this case can be divided into “h't l't l't l't l', and it constitutes Article 8 of the Trademark Act.

(2) In addition, since the cited trademark has already been widely recognized as a defendant's trademark by ordinary consumers or traders at the time of the registration ruling of the instant trademark, if the instant trademark similar to the cited trademark is used on the designated goods, it may cause general consumers to mislead or confuse the source of goods. Accordingly, the instant registered trademark constitutes Article 7 (1) 11 of the Trademark Act.

(3) Therefore, the registered trademark of this case falls under Article 8 and Article 7 (1) 11 of the Trademark Act, and the registration of this case must be invalidated without any need to further examine the remaining points.

2. Whether the trial decision of this case is legitimate

A. The plaintiff's assertion

In light of the fact that the part of the cited trademark’s trademark’s trademark’s “prehion .........” is indicated as “slogy ......................, in the actual advertisement, it is merely perceived as Slogan, a mere publicity phrase of goods, and there is no special distinction to distinguish one’s goods. Thus, the essential part of the cited trademark’s trademark and the cited trademark’s trademark’s nature, name, and concept are different, and thus, the decision of this case, which deemed that the trademark of this case falls under Article 8 and Article 7(1)11 of the Trademark Act, shall be revoked as unlawful, on the premise that both trademarks are similar.

B. Determination

(1) With respect to whether the trademark of this case and the cited trademark applied earlier are similar to each other, the trademark of this case is a character trademark composed of a combination of “kn't kn't kn't k't k't k' and “h't k't h't h't h't h't h't h', and the cited trademark is a character trademark composed of “h't h't h't h't h't h't h' and h't h', and its overall appearance is less than above, but in its name and concept, both trademarks can be conceptualized and conceptualized by only a part of their constituent parts unless they are indivisible to the extent that they cannot be natural in the trade.” The trademark of this case is referred to as “l't h't h't h't h't h't h't h't h't h't h't h't h't h't h't h't h't h't h't h't h't't h'

In light of the fact that the phrase "I Don Don Don Don" is located under the front of the publicity phrase and is used independently from the phrase "LREL", the plaintiff asserts that the part "I Don Don Don Don Don" of the cited trademark is merely one publicity phrase and does not function as an identification for goods of others. However, whether a trademark has a special distinction for distinguishing the source of goods of others should be objectively determined by considering the concept of the trademark, the relationship with the designated goods, the circumstances of the trade society, etc., and the part of the cited trademark is written in the advertisement of the designated goods. The mere fact that a part of the trademark is written in the advertisement of the cited trademark, the part of "I Don Don Don Don" among the constituent parts of the cited trademark, has a distinctive character for other goods, the above argument is without merit.

(2) Furthermore, the designated goods of both trademarks are identical or similar to each other, inasmuch as their use, quality, producers, sales channels, and the scope of consumers, etc. are all of the designated goods of the two trademarks.

(3) Therefore, the registered trademark of this case is identical or similar to the cited trademark which was filed earlier and its marks and designated goods, so so long as it falls under Article 8 of the Trademark Act, the registration of this case shall be invalidated without considering whether it falls under Article 7 (1) 11 of the remaining Trademark Act, etc.

3. Conclusion

Therefore, the plaintiff's claim of this case seeking revocation on the premise that the decision of this case is unlawful is dismissed as it is without merit. It is so decided as per Disposition.

Judges Lee Jae-hwan (Presiding Judge)