Phon IB.V. (Pon B.V.) Patent Attorney Lee Cycle, Patent Attorney Lee Cycle, Patent Attorney Lee Cycle I.V.)

Belgium Sports Co., Ltd. (Law Firm Gelel, Attorneys Jeon Gyeong-soo et al., Counsel for the defendant

April 8, 2020

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 October 22, 2018 on the case No. 2017Da2557 shall be revoked.

1. Basic facts

A. Note 1) Defendant’s registered trademark of this case (Evidence A2)

(1) Date of application / Decision of registration / Date of registration / Date of registration renewal / Number of registration.

on March 14, 2006 / December 29, 2006 / (registration number omitted) January 18, 2007/ July 20, 2016

2) Gu sex:

3) Designated goods: Wheel chairss of Category 12 classified into goods, bicycles, bikes, bicycle wheelss, bicycle quilass, bicycle quilass timing, bicycle marking time, bicycle riding marking time, bicycle riding standards, bicycle riding pumps, bicycle riding pumps, bicycle riding presses, bicycle riding presses, bicycle riding presses, handbbs for bicycles.

B. The plaintiff's pre-use trademarks

A person shall be appointed.

C. Details of the instant trial decision

1) On August 14, 2017, the Plaintiff filed a petition for a trial on invalidation of the registered trademark of this case with the purport that the registered trademark of this case is similar to the pre-use trademark 1, well-known and well-known and well-known, and thus, it is registered in violation of Article 7(1)11 and 12 of the former Trademark Act (amended by Act No. 8190, Jan. 3, 2007; hereinafter “former Trademark Act”). The Plaintiff filed for a trial on invalidation of the registered trademark of this case with the purport that the registered trademark of this case is invalid

2) After examining the Plaintiff’s claim on October 22, 2018, the Intellectual Property Trial and Appeal Board filed the instant petition on the ground that the registered trademark of this case falls under Article 7(1)11 and 12 of the former Trademark Act, and thus, is based on the same facts as the trial decision on the invalidation of registration (hereinafter “final decision”). Furthermore, the evidence submitted by the Plaintiff alone cannot be deemed as having been known to the extent that the Plaintiff’s prior trademark 1 could be perceived as a trademark or goods of a specific person at the time of the decision of registration of the instant registered trademark, or as a trademark clearly perceived among consumers at the time of the application of the instant registered trademark, the evidence submitted in the instant petition constitutes evidence identical to the evidence of the final decision of trial. Ultimately, since the instant petition for trial was based on the same facts and evidence as the final decision of trial and thus violates the principle of res judicata, the instant petition for trial was unlawful on the ground that the Plaintiff’s rejection of the petition is unlawful.

(d) Details of the final and conclusive trial decision;

1) On March 29, 2012, 2012, E.S. LbC AW Lb (Bama) Lbrsts Lbrst’s (hereinafter “E”) filed a petition for a nullification trial on the registration of the instant registered trademark against Nonparty 2, who was the trademark right holder of the instant registered trademark, at the Intellectual Property Tribunal before the Intellectual Property Tribunal, copied the pre-use trademark 1, etc. widely known. Thus, the instant registered trademark is deemed to fall under Article 7(1)11 and 12 of the former Trademark Act and its registration should be invalidated.

2) Accordingly, the Korean Intellectual Property Tribunal has tried at E.S.’s request for the above trial. On August 19, 2013, the registered trademark of this case cannot be seen as having been used domestically by the First Used Trademark 1, etc. on or before January 18, 2007, which is the registration date of the instant registered trademark. Thus, Article 7(1)11 of the former Trademark Act under the premise that the First Used Trademark 1, etc. is known to a certain extent to the general public before the registration date of the instant registered trademark cannot be applied to the instant registered trademark. In addition, in light of the fact that the First Used Trademark 1, etc. was almost known in Korea and it is difficult to view it as a well-known and well-known trademark in a foreign country, it cannot be readily concluded that Nonparty 2 applied for the instant registered trademark for the purpose of preventing Nonparty 1 from entering the domestic market of S. or forcing entering into an agency contract, or taking advantage of the reputation of First Used Trademark 1, etc.

3) A lawsuit seeking revocation of the trial decision was not filed within the objection period against Es. Accordingly, the trial decision became final and conclusive at that time.

[Ground of recognition] Facts without dispute, Gap evidence 1, 2, Eul evidence 2, the purport of the whole pleadings

2. Summary of the parties’ assertion

A. The plaintiff

For the following reasons, the registered trademark of this case should be invalidated, but the decision of this case was unlawful because it judged differently.

1) At the time of the instant request for a trial, the Plaintiff submitted new evidence that was not submitted at the time of the instant request for a trial, and this is sufficient evidence to reverse the conclusion of the final and conclusive trial decision, and thus, the allegation that the registration invalidation of the instant registered trademark does not violate the res judicata doctrine

2) At the time of the decision to register the instant registered trademark, the Plaintiff’s pre-use trademarks were recognized as trademarks among general consumers on bicycles, etc., but the instant registered trademark is identical or similar to the Plaintiff’s pre-use trademarks and marks, and the designated goods are also identical or similar to the Plaintiff’s designated goods. Therefore, the instant registered trademark constitutes a trademark that is likely to mislead consumers as prescribed in Article 7(1)11 of the former Trademark Act

3) In addition, the Plaintiff’s pre-use trademarks have been recognized as trademarks indicating the Plaintiff’s goods to domestic or foreign consumers (U.S. and Canada) at the time of application for the trademark of this case. The registered trademark of this case is identical or similar to the pre-use trademarks and used for unlawful purposes, such as taking advantage of the reputation of the pre-use trademarks and obtaining unfair profits, and falls under Article 7(1)12 of the former Trademark Act.

4) Ultimately, the instant registered trademark falls under Article 7(1)11 or 12 of the former Trademark Act and its registration should be invalidated.

B. Defendant

For the following reasons, the registered trademark of this case cannot be invalidated, and thus, the decision of this case as stated above is legitimate.

1) Even according to the evidence newly submitted by the Plaintiff at the time of the instant request for a trial, it cannot be deemed that the Plaintiff’s pre-use trademark was well known to the extent that it could be perceived as a trademark or product of a specific person at the time of the registration decision of the instant registered trademark, or that it constitutes a well-known trademark considerably recognizable among consumers

2) Therefore, the evidence submitted to the instant trial is not to reverse the conclusion of the final and conclusive trial decision, and constitutes evidence identical to the evidence of the final and conclusive trial decision. Ultimately, based on these evidence, the instant trial claim claiming that the registration of the instant registered trademark falls under Article 7(1)11 and 12 of the former Trademark Act and is null and void by the same facts and evidence as the final and conclusive trial decision, and thus, should be dismissed in violation of the principle of res judicata.

3. Whether the petition for trial of this case violates the principle of res judicata.

A. Relevant legal principles

Article 163 of the Patent Act applied mutatis mutandis under Article 77 of the former Trademark Act provides that “When a trial ruling under this Act becomes final and conclusive, no person may request a trial again on the same facts and the same evidence.” Therefore, when a trial ruling under the Trademark Act becomes final and conclusive, no person may request a trial again on the same facts and the same evidence. Here, “the same fact” refers to the specific fact requiring confirmation in relation to the trademark right concerned; “the same evidence” includes not only the evidence related to the fact and not only the same evidence as the evidence of the final and conclusive trial ruling, but also the evidence which has not been sufficiently considerable to reverse the final and conclusive trial ruling (see, e.g., Supreme Court Decision 9Hu2402, Jun. 26, 2001).

B. Specific review

1) Article 7(1)1 and 12 of the former Trademark Act, which is the grounds for invalidation as asserted by the Plaintiff in filing a petition for a trial on invalidation of the registration of this case, was based on the same grounds for the trademark of this case, which is the same right as the final and conclusive trial decision, and thus, the instant petition for a trial constitutes a claim based on “same fact.” Ultimately, the issue of whether the instant petition for a trial violates the res judicata doctrine is determined by whether the evidence submitted by the Plaintiff was identical to, or not identical to, the final and conclusive trial decision. Accordingly, in the instant case, whether the evidence submitted by the Plaintiff is identical to, the final

2) Article 7(1)11 of the former Trademark Act

A) The purport of Article 7(1)11 of the former Trademark Act that provides that a trademark that is likely to deceive a consumer shall not be registered, is to prevent misconception or confusion among general consumers as to the quality, origin, etc. of goods using a trademark recognized as a trademark of a specific person, and to protect the trust thereof. Thus, in order to determine that there is a concern for consumer to deceive a consumer, any trademark or its products are not necessarily well-known, but at least in general transactions in the Republic of Korea, it should be known to the extent that they can be perceived as a specific person’s trademark or goods. In such a case, if there are special circumstances to believe that a trademark identical or similar to the trademark is used on designated goods identical or similar to the goods using it, or that it is used by the trademark right holder to the extent that it is not possible to mislead or confuse general consumers as to its source. Meanwhile, the standard for determining whether a trademark that became the subject of a request for a trial for invalidation of registration could only be made at the time of determining whether it is a "trademark likely to mislead a consumer."

B) However, in full view of the evidence newly submitted by the Plaintiff at the time of the instant request for a trial, the following facts: (a) evidence Nos. 83, 84-1, 2, 85, 95, 127-1 through 7, and 128-9, which can be seen as materials that can identify the degree of perception in the Republic of Korea of the pre-use trademarks at the time of December 29, 2006, among the newly submitted evidence at the time of the instant request for a trial; (b) evidence Nos. 83, 84-1, 2, 85, 95, 127-1 through 7, and 128-1 through 9, the trade name “Belgium-sports Asian”, “Sero Sports Asian,” the non-party 1, who runs the wholesale and retail business of the pre-use trademarks from around 202, imported and sold the bicycles affixed by the Plaintiff from the Plaintiff on Nov. 29, 2005.

Ultimately, the facts acknowledged earlier alone cannot be deemed to have been known to the extent that the product using the pre-use trademarks is domestically recognizable as a trademark or product of a specific person. Thus, the registered trademark of this case cannot be deemed to constitute a trademark that is likely to deceive consumers under Article 7(1)11 of the former Trademark Act without further review of the remainder of the issues. Therefore, the evidence submitted by the Plaintiff in this case constitutes evidence identical to the evidence of a final and conclusive trial decision, which is not sufficiently able to reverse the conclusion of the final and conclusive trial decision in relation to whether it falls under Article 7(1)11 of the former Trademark Act.

3) The part concerning Article 7(1)12 of the former Trademark Act

A) Article 7(1)12 of the former Trademark Act provides that “a trademark which is identical or similar to a trademark which is recognized as indicating goods of a particular person by domestic or foreign consumers, and is used for unjust purposes, such as obtaining unjust profits or inflicting losses on the particular person.” The purport of the provision is that the trademark is not registered in the Republic of Korea, thereby impairing the intangible value of the well-known trademark, such as business credibility or customer attraction personnel, etc., incorporated into the well-known trademark, or hindering the business domestically of the well-known trademark right holder, or using it for the purpose of obtaining unjust profits by using it. In order to constitute a well-known trademark, it is necessary that the trademark is widely recognized among consumers or traders that it is used for goods of a specific person, and specifically, whether the trademark is well-known or not should be determined based on the objective criteria for determining whether the trademark falls under one of the above criteria for determining whether it is widely known or not, such as the period, method, volume, volume, scope of use of the trademark, trade volume, trade volume, or social norms.

B) In full view of the evidence newly submitted by the Plaintiff at the time of the request for the trial of this case, the Plaintiff sold the bicycle products affixed with the pre-use trademarks in Canada since 1996; the Plaintiff registered the domain name "cerveo.com" on May 16, 1997; the Plaintiff’s products attached with the pre-use trademarks were repeatedly posted on the pre-use trademarks, such as magazines published in Canada prior to the filing date of the trademark of this case; the Plaintiff’s products attached with the pre-use trademarks were searched and posted on the Internet portal site; and the Plaintiff’s products attached with the pre-use trademarks were searched and posted on the pre-use trademarks; and the Plaintiff’s products attached with the pre-use trademarks were sold on the pre-use trademarks prior to the filing date of the trademark of this case.

C) Meanwhile, the Plaintiff’s evidence No. 143 is merely a material that estimates sales in the United States and Canada from 2001 to 2005, based on the Plaintiff’s sales revenue in 2014 products, such as bicycles for which the pre-use trademarks are used by the chief of the legal office, (i) the official display rate in the United States and Canada, (ii) the official average annual exchange rate in Canada/U.S., and (iii) the business specialization information as an element to consider the sales revenue in the United States and Canada, and thus, it cannot be acknowledged that sales of products using the pre-use trademarks are not recognized during the period from 2001 to 2005. Otherwise, there is no objective material that can objectively verify sales sales, advertising size and method, and the mode of business activity in the United States and Canada of products, such as bicycles for which the pre

D) Ultimately, the fact of recognition alone does not constitute a well-known trademark widely recognized among consumers or traders that pre-use trademarks are used in goods of a specific person in the United States and Canada.

E) Furthermore, as seen earlier, even if based on the evidence newly submitted by the Plaintiff at the time of the instant request for a trial, it cannot be deemed that the pre-use trademarks were known as indicating the goods of a specific person in the Republic of Korea, as long as the pre-use trademarks were not known as indicating the goods of a specific person in the Republic of Korea, the pre-use trademarks cannot be deemed as domestically-known trademarks at the time of March 14, 206

F) Ultimately, the facts acknowledged earlier cannot be deemed to constitute a well-known trademark in Korea or in the United States and Canada, and the registered trademark of this case cannot be deemed to constitute a trademark used for an unlawful purpose under Article 7(1)12 of the former Trademark Act without further review of the remainder of the issues. Therefore, in this case, the evidence submitted by the Plaintiff in this case constitutes evidence identical to the evidence of final and conclusive decision regarding whether it falls under Article 7(1)12 of the former Trademark Act.

(c) arranging the results of the review;

In full view of the foregoing, the registered trademark of this case cannot be deemed to fall under Article 7 (1) 11 and 12 of the former Trademark Act based on the newly submitted evidence in the instant trial decision. Thus, all of the above evidence constitutes evidence identical to the evidence of the final and conclusive trial decision, which is not sufficient to reverse the conclusion of the final and conclusive trial decision. Ultimately, the instant trial request is based on the same facts and evidence as the final and conclusive trial decision, and is not allowed as it violates the principle of res judicata.

4. Conclusion

Therefore, the trial decision of this case rejected the appeal of this case does not have any illegality as alleged by the plaintiff, and the plaintiff's claim seeking the revocation is without merit.

Judges Lee Hong-hoon (Presiding Judge)

(1) The original registered trademark of this case was filed by Nonparty 1, who is the representative of the defendant, or Nonparty 2, with the application for trademark registration. On March 28, 2018, the registration of transfer of trademark was completed on the ground of transfer to the defendant.

Note 2) The original “Cervivo S.A..” established in Canada in 1995 by the producer and sales of the bicycle products attached with the pre-use trademarks. The Plaintiff acquired the “Cervine v.o S.A...” around 2012, and for convenience, the Plaintiff is the Plaintiff, including “Cervho S.A....” and the Plaintiff.

Note 3) In the case of evidence A, 131, 133, 135, 136, and 138, all evidence attached with a branch number shall be included. However, evidence withdrawn on the second date for pleading as of November 1, 2019 shall be excluded.