205Heo9091. Nullification of registration (Trademarks)

Man-man

Jungyang-gu Busan Metropolitan Government Mangsan-dong

Patent Attorney Lee Jae-soo, Counsel for the defendant-appellant

Hando Education Co., Ltd.

Seoul Mapo-dong 275 ELMalar Building

For replacement of representative director;

Patent Attorney Shin Jae-ok et al., Counsel for defendant-appellant

may 3, 2006

June 7, 2006

1. The plaintiff's claim is dismissed.

2. The litigation costs shall be borne by the plaintiff.

The decision made by the Intellectual Property Tribunal on September 27, 2005 on the case No. 2004Da1967 shall be revoked.

1. Basic facts

(a) Details of the trial decision;

The Defendant filed for a registration invalidation trial on the ground that the registered service mark of this case as described below B is similar to the Defendant’s service mark of comparable trademark and service mark as described in the Defendant’s (hereinafter referred to as “the comparative trademark”), and that the goods and service business of the comparative trademark and the designated service business of the registered service mark of this case are similar to each other, and that “the service mark which is likely to mislead consumers” as defined in Article 7(1)11 of the Trademark Act (hereinafter referred to as “service mark” is indicated as “trademark in the law, but is indicated as “service mark”)” and its registration should be invalidated.

In relation to the above request for adjudication, in a case where the registered service mark of this case, which is similar to the registered service mark widely known as the trademark of a specific person, is used for the designated service business similar to the goods and service business of the comparable trademark, there are special circumstances that may be mistaken that the registered service mark of this case is used by the right holder of the comparable trademark. Thus, the registered service mark of this case falls under Article 7 (1) 11 of the Trademark Act and becomes invalid, and thus, the registered service mark of this case was rendered a trial decision of this case, which

B. The registered service mark (1) of this case / The filing date of the registration (1)/ the (1)/ the registration number: January 29, 2001 / May 7, 2004 ( April 30, 2004)/ the 100529 (2): Platon (3): The designated goods: the book publishing business, the textbook publishing business, and the learning paper publishing business (No. 41 category of service business): The Plaintiff.

(c) Products and service business using comparative trademarks consisting of (1) (a) comparative trademarks consisting of (2) comparative trademarks (2) comparative trademarks consisting of (2) comparative trademarks consisting of (2) comparative trademarks: Educational business, such as each learning place, Korean language study or reading debate guidance business;

[Ground for Recognition: Facts without dispute]

2. The plaintiff's assertion

A. The registered service mark of this case and the comparative trademark are not likely to cause mistake and confusion as to the source of service business, and the comparative trademark cannot be deemed as a trademark known to the extent that the comparative trademark can be perceived as a specific person’s trademark among general consumers or traders in the transaction society. Thus, even if the registered service mark of this case is used for the designated service business, it is used by a person in a special relationship with the right holder of the comparative trademark, and it is not likely to cause mistake and confusion as to the source of service business.

B. The Defendant, while knowing that the registered service mark of this case is being used by the Plaintiff, uses the comparable trademark. Thus, it cannot be deemed as a well-known trademark because it falls under Article 23 (No. 6) of the Korean Intellectual Property Office Trademark Examination Criteria.

In addition, even if the comparative trademarks acquired well-knownness, the Defendant acquired the well-knownness of the registered service mark of this case as an unfair means of filing an objection after the publication of the application for the registered service mark of this case, as long as the decision on the registration of the registered service mark of this case is delayed by the method of filing an objection, such as TBB, etc. with huge funds, and thus, it cannot be protected as it goes against the law as an malicious act abusing the legal provisions.

C. Therefore, the registered service mark of this case does not constitute “service mark which is likely to deceive consumers” under Article 7(1)11 of the Trademark Act, and the decision of this case should be revoked.

3. Determination

A. Criteria for judgment

If a trademark which is the subject of a request for a trial for invalidation of registration is likely to deceive a consumer as prescribed by Article 7(1)11 of the Trademark Act, it shall be known to the extent that the registered trademark or other trademark (existing trademark) compared to the registered trademark or the designated goods is not necessarily well-known, but at least to consumers or traders in general transactions in the Republic of Korea, if the trademark or goods are deemed to be a trademark or goods of a specific person, it shall be recognized as such. In such a case, if there are special circumstances to believe that the trademark identical or similar to the existing trademark is being used in the goods identical or similar to those of the goods using it, or is used by the right holder of the existing trademark to the extent that it is not possible to mislead or confuse the source (see Supreme Court Decision 2001Hu3187, Mar. 11, 2004).

B. The facts acknowledged as to whether the comparable trademark is widely known (1) (A) the Defendant entered into a contract with Mebling (name setting) to develop the name to be used for the goods and services of the comparable trademark on November 2000, and finally confirmed the name "Meblaston" at the end of March 2001 after conducting a survey on the level of demand, after which several names were identified, and after conducting a survey on April 4, 2001, the Defendant applied for trademark 1 of the comparable trademark on April 4, 2001 and filed for trademark registration on December 23, 2002.

Trademark registration was made on September 26, 2001, and trademark registration was made on April 15, 2003.

(B) The defendant from November 21, 2001 to April 2004, the registration date of the service mark of this case from around November 21, 2001

30. 이전까지 약 119회에 걸쳐 한국경제신문, 서울경제신문, 매일경제신문, 중앙일보 , 조선일보, 동아일보 등의 일간신문들에 비교대상상표 2가 표시된 기업이미지 광고 또는 비교대상상표들이 표시된 사용상품 · 서비스업의 광고를 실었고, 2003년 2월경부터 2004년 4월경까지 약 51회에 걸쳐 우먼센스, 여성중앙, 여성동아, 여성조선, 주부생활 , 퀸 등의 여성잡지들에 위 내용의 광고들을 실었으며, 2003년 7월경부터 2003년 12월경까지 약 22회에 걸쳐 KBS - TV “ 저요 저요 ” 코너에 위 내용의 협찬광고를 하였고, 2001년 7월경부터 2004년 3월경까지 피고 발행의 사외보인 “ 신기한 나라 ” 에 약 16회, 피고 발행의 사내보인 “ 나라를 만드는 사람들 ” 에 약 17회에 걸쳐 사용상품 · 서비스업에 관한 내용을 비교대상상표들과 함께 게재하기도 하였다 .

In addition, around 647,00, about 00 won in 2002, about 1,634,00, about 00, and about 00 won in 203 as well as about 1,065,00,000 won in January of 2004. (c) The number of members of the goods and services using the comparable trademarks in the scope of 900 persons in 2001, about 7,900 persons in 202, about 26,400 persons in 203, about 35,600 won in June of 2004, about 10,000, about 06, about 2000 won in 1,000, about 36,600 won in 200, about 2036,500 won in 203,500.

[Ground of Recognition: Fact that there is no dispute, Eul evidence No. 2-1 to 10-9, witness Kim Jong-young, testimony of Kim Jong-hee, the purport of whole pleadings] (2)

As seen above, in light of the advertising period, advertising media, frequency of advertisements, advertising expenses, number of members, sales, etc. of the comparative trademarks, the products and services of the comparative trademarks are widely known to the general consumers as of April 30, 2004, which is the date of the decision to register the instant registered service mark, as of April 30, 2004.

In this regard, we examine the plaintiff's assertion that the defendant is a malicious trademark user, so the comparable trademark cannot be seen as a well-known trademark, and that the recognition and protection of the comparable trademark as an well-known trademark is against the legal significance.

In addition, the purpose of Article 7 (1) 11 of the Trademark Act is not to protect the existing trademark, but to prevent mistake and confusion among the general consumers as to the source of goods using a trademark already recognized as a specific person's trademark, and to protect the trust thereof. Matters on which the existing trademark or its products are known to consumers, etc. in the domestic general trade refers to the objective condition that the general consumers should be recognized in accordance with the trade situation, and even if the existing trademark seems to have been actually protected as a result of the application of the above provision, it is merely an indirect and anti-private effect that protects the interests of the general consumers (see Supreme Court Decision 2004Da20438, May 1, 2004).

3. In addition, even if the Defendant used the comparable trademark with the knowledge of the Plaintiff’s use of the registered service mark of this case, it cannot be excluded from the application of the above provision on the ground of such circumstance, and the application of the above provision is not contrary to the law, and the application of the above provision cannot be deemed as a superior legal norm that limits the application of the above provision. The Plaintiff’s assertion is without merit.

C. Whether the registered service mark of this case and the comparable trademark are similar

The comparative trademark 1 is a mark consisting of letters only, and the comparative trademark 2 is a mark consisting of letters and diagrams, and since the letter portion of the comparative trademark 2 is indicated as it is the word of the comparative trademark 1, the comparative trademark seems to be referred to all as the same.

In addition, the comparable trademarks may be named as “Natn” or “fluorn” as their characters or omitted part, and “Natn” has a unique distinctiveness compared to “fluorn” as an external fishing, referring to juveniles, middle class, and fluor, so if part of the trademarks are omitted, they may be named as “fluorn” rather than “fluorn”.

As a result, the registered service mark of this case and its title are identical when the comparable trademark is called “flaston”, so the comparable trademark and the registered service mark of this case are similar.

D. Whether the registered service mark of this case is similar to the designated service business, the designated service business of this case is the book publishing business, the textbook publishing business, and the learning paper publishing business as it is, and the textbook is a kind of book, textbook, and learning paper publishing business, and the textbook is mainly published in the form of book, and it is similar to the place of study, which is the product using the comparable trademark.

In addition, in the case of educational business entities, such as Korean language learning and reading debate guidance business, such as the service business of comparative trademarks, it is general to publish books, such as learning materials related to the educational business, and use them as teaching materials. Thus, the designated service business of the registered service mark of this case is similar to the service business of comparative trademarks.

E. Sub-committee

As seen above, the registered service mark of this case is similar to the comparable trademark, and its designated service business and its goods and service business are similar, and at the time of determining the registration of the service list of the registered service mark of this case, the comparable trademark was widely known to ordinary customers or consumers as indicating the goods and service business of a specific person. Thus, the registered service mark of this case is likely to cause mistake and confusion as to the origin of the service business by ordinary consumers, and thus, it constitutes “service mark likely to cause consumers to deceive or confuse” under Article 7(1)11 of the Trademark Act.

Therefore, the registered service mark of this case is null and void, and the decision of this case is legitimate.

4. Conclusion

Therefore, the plaintiff's claim seeking the revocation of the trial decision of this case is dismissed as it is without merit, and it is so decided as per Disposition.

Judges Lee Ki-taik

Judges Dora-ok

Judges Noh Jeong-sik