(a) Scope of “other persons” under Article 73(1)1 of the Trademark Act;

(b) The case reversing the original adjudication which concluded that the trademark right holder had used the registered trademark to another person on the sole ground that the representative of the food business operator who used the registered trademark is the seat of the trademark right holder;

(a) “Other person” under Article 73(1)1 of the Trademark Act refers to a person who, separately from the owner of the trademark right, independently engages in business activities under his own account and responsibility. A person who has a business relationship with the owner of the trademark right or has a principal business relationship with the owner of the trademark right, uses the registered trademark under the supervision of the owner of the trademark right for operating income of the owner of the trademark right cannot

B. Where the representative of the food company's business registration using the registered trademark is registered in the name of the owner of the trademark right, if the wife independently and jointly operates the food company under his own account and responsibility, it shall be deemed to fall under another person under Article 73 (1) 1 of the Trademark Act. However, if the husband is the actual management entity, but only the business registration is made in the name of the owner of the trademark, it shall not be deemed that the other person uses the registered trademark, on the ground that it is not sufficient to conclude that the wife is the actual management entity of the food company and the owner of the trademark is not related to the food company, on the ground that the wife is the representative of the registered business registration as reported to the head of the tax office having jurisdiction over the food company, the actual management entity of the food company should have deliberated more and judged whether to use the registered trademark. However, the original decision which concluded that the trademark owner used the registered trademark on the ground that the representative is not the owner of the trademark is not the owner of the trademark, was reversed by misapprehending legal principles or incomplete deliberation.

Article 73(1)1 of the Trademark Act

A. Supreme Court Decision 84Hu10 delivered on March 25, 1986 (Gong1986, 706) 88Hu943 delivered on May 23, 1989 (Gong1989, 1003) 92Hu1431 delivered on March 23, 1993 (Gong193Sang, 1300)

claimant 1 and two others

Attorney Park Jae-sik et al., Counsel for the defendant-appellant

Supreme Court Decision 91DaDa1469 delivered on October 29, 1993

The original adjudication shall be reversed, and the case shall be remanded to the Korean Intellectual Property Trial Office.

We examine the grounds of appeal.

On the first ground for appeal

According to the reasoning of the original decision, the court below recognized that “○ Food,” whose name is registered as a representative, used a trademark similar to the registered trademark of this case for goods identical to the designated goods from 1988 to August 31, 1990 without the establishment of the right to use, and thus, even if the above “foreign person” is a person who is a trademark right holder, it cannot be deemed as a justifiable use by the trademark right holder, and therefore, the registered trademark of this case cannot be exempted from the revocation of registration pursuant to Article 73(1)1 of the Trademark Act, where the trademark right holder allows another person to use a trademark similar to the registered trademark of this case for at least six months without the establishment of the exclusive license or non-exclusive license.

However, the other person stipulated in subparagraph 1 above refers to a person who is separate from the owner of a trademark and independently conducts business activities under his own account and responsibility. A person who uses the registered trademark under the supervision of the owner of the trademark for the profit of the owner of the trademark, has a business relationship with the owner of the trademark or a principal business relationship with the owner of the trademark, and is not a person who uses the registered trademark under the supervision of the owner of the trademark for the profit of the owner of the trademark (see each of the Decisions 86Hu66, Oct. 26, 197; 88Hu943, May 23, 1989).

In light of relevant evidence and records, the court below determined that the respondent used the registered trademark of this case as "○ Food" only because the representative of the business registration of "○○ Food" using the registered trademark of this case is "foreign person", the respondent used the registered trademark of this case. If "○○ Food" operated the registered trademark of this case independently from the respondent and under his/her own account and responsibility, it shall be deemed that the respondent who is the husband of this case is the actual business entity, but if only the registered trademark of this case was placed in the name of the wife for convenience, it shall not be deemed that the other person uses the registered trademark of this case. Thus, in light of the nature of the registered business registration as reported to the head of the competent tax office, it is insufficient to conclude that the respondent is unrelated to the above business entity.

Therefore, even though the court below should have deliberated more on the actual management entity of the above "○ Food" and judged whether to use the registered trademark of this case, it concluded that the respondent used the registered trademark of this case solely on the ground that the representative of the business registration is not the respondent. Thus, the original decision contains an error of law by misapprehending the legal principles under Article 73 (1) 1 of the Trademark Act, or by failing to exhaust all necessary deliberations, which affected the conclusion of the decision, and thus, it is reasonable to point this out.

Therefore, the necessity to determine the remaining grounds of appeal is reversed, and the case is remanded to the Korean Intellectual Property Office for further proceedings consistent with this Opinion. It is so decided as per Disposition by the assent of all participating Justices on the bench.

Justices Kim Jong-soo (Presiding Justice)