[1] Requirements for determining “a trademark used for an unlawful purpose” under Article 7(1)12 of the former Trademark Act and the time of application for such determination (=the time of application for the registered trademark)

[2] The case holding that the applicant of the registered trademark " " applied for the registered trademark " in order to imitate the pre-use trademarks " " " " and " for an unlawful purpose

[1] The purport of Article 7 (1) 12 of the former Trademark Act (amended by Act No. 8190 of Jan. 3, 2007) is that a trademark which is widely recognized as a trademark of a specific person among domestic or foreign consumers is not registered in the Republic of Korea. The purpose of Article 7 (1) 12 of the same Act is that a trademark which causes damage to a trademark right holder by causing harm to the intangible value of a well-known trademark such as business reputation or customer smoking personnel, or impeding the business in the Republic of Korea of the well-known trademark right holder, or that a trademark which is used for the purpose of obtaining unfair profits by using such imitate trademark shall not be permitted to use the trademark identical or similar to the well-known trademark of a specific person for an unlawful purpose. Whether a trademark of a specific person constitutes an well-known trademark should be determined on the basis of whether an applicant's use period, method, pattern and scope of use of the trademark, etc., whether there is an unlawful purpose of negotiation between the applicant's trade relationship and the applicant's economic relationship.

[2] The case holding that in full view of the similarity degree of the registered trademark " " " and the pre-use trademarks " " "," and the above pre-use trademarks ", degree of well-knownness of the above pre-use trademarks, economic relation between the designated goods of the registered trademark and the pre-use trademarks, and the progress of trademark dispute, the applicant of the above registered trademark applied for the above registered trademark for the purpose of using the pre-use trademarks for unlawful purpose such as intending to obtain unfair profits by copying the pre-use trademarks, or to inflict losses on the pre-use trademarks users.

[1] Article 7 (1) 12 of the former Trademark Act (amended by Act No. 8190 of Jan. 3, 2007) / [2] Article 7 (1) 12 of the former Trademark Act (amended by Act No. 8190 of Jan. 3, 2007)

[1] Supreme Court Decision 2004Hu3379 Decided April 14, 2005

Plaintiff (Patent Attorney Kim Jung-soo et al., Counsel for the plaintiff-appellant)

A. Shakia Shama (Patent Attorney Ayang-ho et al., Counsel for the defendant-appellant)

Patent Court Decision 2009Heo3602 Decided January 27, 2010

The part of the lower judgment against the Defendant is reversed, and that part of the case is remanded to the Patent Court.

The grounds of appeal are examined.

1. The purport of Article 7(1)12 of the former Trademark Act (amended by Act No. 8190, Jan. 3, 2007; hereinafter the same) is that a trademark which is widely recognized as a trademark of a specific person among domestic or foreign consumers is not permitted to be used for any purpose of causing damage to an owner of a trademark right by causing damage to the business reputation or intangible value, such as customer attraction, etc., incorporated into the well-known trademark by using the trademark after registering or using the trademark, or impeding the business in the Republic of Korea. Thus, in order to fall under the above provision, whether an applicant falls under a well-known trademark should use the trademark identical or similar to the well-known trademark of a specific person for an unlawful purpose. Whether it constitutes an well-known trademark should be determined on the basis of the period, method, mode and scope of use, etc. of the trademark, whether the applicant is objectively known to the general public in terms of trade circumstances or social norms, and whether the applicant has any unlawful purpose to determine whether it constitutes an identical or similar trademark or not.

2. After compiling the adopted evidence, the court below acknowledged the facts as stated in its reasoning, and determined that the defendant's trademark " "" and "" (hereinafter referred to as "pre-use trademarks") clearly recognized at least among general consumers or traders in Japan around August 4, 2005, which is the filing date of the trademark of this case (registration No. 691722), as a trademark of a specific person, at least as to the consignment goods, and these trademarks fall under the trademark of this case as a whole. However, among the designated goods of the trademark of this case, the court below determined to the purport that "golization, juthrization, juthrization, juthrization, juthrization, juthrization, juthrization, juthrization, e.g., ground-making, e., baltonization, baltonization, e., e., e., e., e., g., 1200s.

3. We examine the judgment of the court below in light of the aforementioned legal principles and records.

According to the facts duly admitted by the court below, as of August 4, 2005, the defendant's pre-use trademarks established in Japan, which were the filing date of the trademark of this case, are widely known trademarks that are considerably recognized as the defendant's trademark among consumers as to "contest products related to the table , such as table , table slurbry, and purbry" in Japan, in addition to the "contests, table , and purbry products" as of August 4, 2005, which are the filing date of the trademark of this case. The trademark of this case and the pre-use trademarks of this case are commonly used as "Butf" in English language with the intent of "burbly" as well as goods using the pre-use trademarks of this case, and the designated goods of this case are similar to one of the pre-use trademarks of this case, or are economically related to each other, and the plaintiff applied for trademark registration of this case from around 10, 1989 to the defendant's new trademark or new trademark sale of this case.

As seen above, considering the degree of well-knownness of the pre-use trademarks, the similarity between the registered trademark and the pre-use trademarks, the economic relation between the designated goods of this case and the goods of the pre-use trademarks, and the process of trademark dispute between the plaintiff and the defendant, the plaintiff is deemed to have applied for the trademark of this case including the designated goods of this case as part of the designated goods in order to obtain unfair profits by copying the pre-use trademarks, which are well-known trademarks in Japan, or to inflict losses on the defendant, who is the user of the pre-use trademarks.

Nevertheless, as seen earlier, the lower court determined that the part on the designated goods of this case is not deemed to have been filed by the Plaintiff for the purpose of using them for an unlawful purpose, and thus does not fall under Article 7(1)12 of the former Trademark Act. In so doing, the lower court erred by misapprehending the legal doctrine on “unfair purpose” under the above provision, thereby adversely affecting the conclusion of the judgment. The allegation in the grounds

4. Therefore, the part of the lower judgment against the Defendant is reversed, and that part of the case is remanded to the lower court for further proceedings consistent with this Opinion. It is so decided as per Disposition by the assent of all participating Justices.

Justices Shin Young-chul (Presiding Justice)