In a case where Gap corporation, the user of the pre-use trademarks comprised of "BLACK HLE", filed a petition for a registration invalidation trial against Eul-owner of the registered trademark " " "", which includes "electric fluorging and spagic insects" on the designated goods, and the Korean Intellectual Property Tribunal rendered a trial ruling cited by the Korean Intellectual Property Tribunal, the case holding that the registered trademark falls under Article 7 (1) 12 of the former Trademark Act and should be invalidated for registration.

A corporation, the user of pre-use trademarks, comprised of “BLACK HLE” and “BLE,” filed a petition for a registration invalidation trial against B of the trademark right holder B of the registered trademark “,” which includes “electric flag extraction, fladicide,” etc. on the designated goods, and made a trial ruling cited by the Intellectual Property Trial and Appeal Board.

Considering the period, method, mode, scope of use, advertisement contents, etc. of the pre-use trademarks in light of trade circumstances or social norms, the pre-use trademarks appear to have widely been recognized among domestic consumers as marks indicating Gap company's maternity goods at the time of the filing date of the registered trademark, even if their appearance are not identical to the registered trademark, where the registered trademark "BLAL" and "BL" are referred to and conceptualally similar to those of the pre-use trademarks, the registered trademark and the pre-use trademarks are identical or similar to their name and concept, and where the pre-use trademarks are referred to as "a device that makes it impossible for the pre-use trademarks to promptly go away from piracy," and the prior-use trademarks are marks that emphasize or suggest excellent efficacy, or that the pre-use trademarks are marks that are identical or similar to the pre-use trademarks 1 to those of the pre-use trademarks prior to their application for trademark registration, and thus, they cannot be seen to have been found to have been inconsistent with the concept of the pre-use trademarks being put in the first and second-use trademarks.

Article 7(1)12 of the former Trademark Act (wholly amended by Act No. 1403, Feb. 29, 2016) (see current Article 34(1)14)

Plaintiff (Law Firm Western, Attorney Park Jong-young, Counsel for the plaintiff-appellant)

Bab Co., Ltd. (Patent Attorney Kim Gi-ri et al., Counsel for the defendant-appellant)

June 28, 2018

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 August 23, 2017 on the case No. 2016Da3730 shall be revoked.

1. Basic facts

A. The registered trademark of this case

1) Registration number / filing date/registration date: (Registration number omitted) / July 3, 2013/ August 14, 2014

2) Composition:

(iii) Designated goods: sand strawers, tykes, water sprinks, swimming ear-frames for swimming purposes, life jackets, earphones, earphones, earphones, emergency rescue straws, protective earets, mortars for sports purposes, mortars, calculating devices, sponsorgs, first-frequency insects, electric killing insects, electric pesters, and electric shock and spambling equipment, in category 9 of goods.

4) Trademark right holder: Plaintiff

B. First Used Trademark

1) First Used Trademark 1

(A) Composition: Bluculation

(b) Goods using: Brackers, hairers, removal equipment, etc.;

C) Prior user: Defendant

2) First Used Trademark 2

(A) Composition: BLACK HOLE

(b) Goods using: Brackers, hairers, removal equipment, etc.;

C) Prior user: Defendant

C. Details of the instant trial decision

1) On November 25, 2016, the Defendant filed for a trial to invalidate the registered trademark of this case against the Plaintiff on the ground that “The registered trademark of this case is identical or similar to the pre-use trademarks widely known as indicating the goods of a specific person at the domestic place, and is designated goods of goods identical or similar to those of the pre-use trademarks, and thus, constitutes a trademark filed for unjust purposes with the pre-use trademarks to acquire intangible values, such as credit and high quality accumulated in the pre-use trademarks.”

2) On August 23, 2017, the Korean Intellectual Property Tribunal rendered the instant trial ruling citing the Defendant’s request for a trial on invalidation on the ground that “The registered trademark of this case is identical or similar to the pre-use trademarks recognized as indicating the goods of a specific person in the Republic of Korea and applied for unlawful purposes, and its registration should be invalidated under Article 7(1)12 of the former Trademark Act (wholly amended by Act No. 14033, Feb. 29, 2016; hereinafter the same).”

[Grounds for recognition] The descriptions and images of Gap evidence Nos. 1 and 2, and the purport of the whole pleadings

2. The parties' assertion

A. The plaintiff's assertion

1) The instant registered trademark does not fall under Article 7(1)12 of the former Trademark Act for the following reasons.

A) The registered trademark of this case is clearly different from the pre-use trademarks as a whole from its appearance and concept, and is composed of “blocule,” which is a four-dimensional figure, so there is a difference between the pre-use trademarks and the pre-use trademarks, so the registered trademark of this case and the pre-use trademarks are different from the pre-use trademarks, so they cannot be deemed identical or similar marks.

B) In light of the Defendant’s use period, sales amount, supply size, advertisement period, and size of Defendant’s products used by the pre-use trademarks, etc., the percentage of Defendant’s products used by the pre-use trademarks in the market is very low, advertisement frequency is low, and advertisement methods are limited to media or means with extremely low radio wave. Thus, pre-use trademarks cannot be deemed to be recognized as trademarks among domestic consumers as trademarks indicating Plaintiff’s products.

C) On August 13, 2009, the transfer of the registered trademark of this case, the applicant for the trademark of this case filed a trademark application with the mark identical to the registered trademark of this case as the designated goods and operated a business after being registered. In light of the fact that the scope of the business has been gradually expanded, the business related to the designated goods of the registered trademark of this case was prepared while expanding the scope of the business, the creativity of the pre-use trademarks is not high, and there was no negotiation or dispute between the Plaintiff and the Defendant, the Plaintiff cannot be deemed to have committed an unlawful purpose

2) Nevertheless, the instant trial decision that was otherwise determined is unlawful and thus ought to be revoked.

B. The defendant's argument

1) The instant registered trademark constitutes Article 7(1)12 of the former Trademark Act for the following reasons.

A) The registered trademark of this case and the pre-use trademark of this case constitute trademarks identical or similar to the appearance, name, and concept of the mark.

B) In full view of the sales and sales size of the goods used by the pre-use trademarks, the details of distribution and advertisement, and the award details, the pre-use trademarks are widely recognized as the Defendant’s trademark among domestic and foreign business entities and users in the United States, Japan, Hong Kong, etc.

C) The registered trademark of this case and the pre-use trademark of this case were widely known domestically and overseas prior to the filing date of the registered trademark of this case, and the registered trademark of this case and the pre-use trademark of this case are identical or very similar to marks, and products with the same designated goods or goods are included in the same product, etc., the registered trademark of this case constitutes trademarks applied for the purpose of obtaining economic benefits by taking advantage of the defendant'

2) Therefore, the trial decision of this case cannot be deemed to have violated the law as alleged by the plaintiff.

3. Whether the registered trademark of this case falls under Article 7 (1) 12 of the former Trademark Act

A. Criteria for determination

Article 7(1)12 of the former Trademark Act provides that trademark registration may not be granted for "a trademark which is identical or similar to a trademark (excluding a geographical indication) recognized as indicating the goods of a specific person between domestic or foreign users, or which is used for unlawful purposes, such as obtaining unjust profits or inflicting harms on the particular person." This provision provides that "a trademark which is recognized as indicating the goods of a specific person from domestic or foreign users is not registered in the Republic of Korea." This provision aims to obtain unjust profits by taking advantage of the business reputation, etc. of a third party which is embodied in the trademark subject to reproduction by registering and using the trademark which is recognized as indicating the goods of a specific person, or by impeding the domestic business of the owner of the trademark subject to reproduction, etc. It shall be determined to the extent that the applicant’s trademark is economically recognized as a trademark of the same or similar trademark from domestic or foreign users, and that the applicant’s business is identical or similar to the registered trademark (see, e.g., Supreme Court Decision 2007Da1272077, Feb. 2, 19, 201

B. Whether the pre-use trademarks are known

1) Facts of recognition

The following facts may be acknowledged according to the respective descriptions of Gap evidence 1, 7, 8, and Eul evidence 1 through 23 (including branch numbers), images, and the purport of the whole pleadings:

A) The representative of the Korean item development corporation, around 2001, the non-party, who was registered as the patent on May 18, 2005, filed an application for patent on the invention of the above maternity sedition system and obtained patent registration on the 2005.

B) On May 7, 2002, the Defendant was established for the purpose of running the maternity and Paris shock business, and completed the registration of transfer by taking over the above patent from the Korea Items Development Co., Ltd. on February 8, 2006. Around that time, the Defendant produced the maternity sedes with pre-use trademarks (hereinafter “Defendant products”) and sold them to the Ministry of Health and Welfare, the Korea Centers for Disease Control and Prevention, and the Korea Centers for Disease Control and Prevention, public health clinics, etc.

C) On August 31, 2007, the Defendant entered into a contract with the Korean Senior Citizens Association of 503 (4,0240,000 won), on March 28, 2008 with the Korean Senior Citizens Association of 386 (3,080,000 won), and on July 18, 2008, 38 (3,02.60,000 won) were sold to the Korean Senior Citizens Association of 100,000,000 annual sales price of the Defendant products to the Korean Public Health Center of 10,000,000,000 or more of the Defendant products to be sold to the Korean Senior Citizens Association of 20,000,0000,000 won, and the Defendant entered into an agreement with the Korean Senior Citizens Association of 20,0000,000 or more of the Defendant’s products to sell the Defendant’s products to the Korean Public Health Center of 10,010,000,00.

D) On June 16, 2010, the Defendant entered into a contract with the Public Procurement Service to supply 7,00 (a contract amounting to 518,000,000 won) and 1,500 (a contract amounting to 150,000,000 won) for the discharge of harmful animals, including the Defendant’s products, to the Public Procurement Service. On June 24, 2011 and June 20, 2012, the Defendant supplied 10,000 (a contract amounting to 720,000,000,000 won) for the discharge of harmful animals, including the Defendant’s products, and supplied them to the Public Procurement Service. The supplied products were supplied to the Defendant’s Si/Gun/Gu (public health center), public health center, military welfare center for senior citizens, etc.

E) Sales of Defendant Product recorded approximately KRW 1.66 million in 2010, approximately KRW 1.177 million in 201, KRW 698 million in 2012, and KRW 220 million in 20 million in 2013.

F) From around 2006, the Defendant continuously paid advertising expenses of KRW 1 million to KRW 1,90,000 to KRW 1,90,000,00 in each of the media that the primary consumers of the withdrawing period such as livestock newspapers, the old age, the Korean Economic Newspapers, the Disease Control Association, and the concentrated environmental newspapers, and advertised the Defendant’s products. The details are as follows.

(1) "A 10,000 Mari-do 20,000 Mari-si per day of the Mari-si and 10m Mari-si Mari-si Mari-si Mari-si (A30 Mari-si on May 15, 2013)"

(2) Article 2(1) of the Act provides that “The effects of air purification are to be made; the export of international quality-certified products are to be exported; the “Blue Track” (the Livestock Examination of July 13, 2007)

(3) “Blocopage and smell removal.” Korean and international patents “Blocopty Track” (Slocopty on August 25, 2008)

(4) The term "the Nowon-gu Senior Citizens Center" (the Nowon-gu Day Day Daytime Examination dated June 6, 2008).

(5) “Blostune” in front of a person or livestock bullying (Flostm Blost livestock in June 2009).

(6) "Blue Track Track for indoor use (Korean Economic Examination dated July 25, 2008)" as is the reputation of Blucker.

G) The Internet portal site server server and the following are posted a total of 531 tables with respect to the Defendant’s product, and are represented by:

(1) "Abrupter, from among the brupters, brushers, fluorse, and that the Paris is also fluorcated. So, he/she selected as a bructor (as of June 17, 201)."

② “저는 인터넷 쇼핑에서 ‘블랙홀’이라는 것을 작년에 샀습니다. …블랙홀은 효과 훌륭합니다.(2007. 9. 17.자)”

(3) "Bloker" shall be equipped with only one unit of an apparatus which induces a bloaker (as of June 13, 201).

(4) “Equipment removal equipment - Blus & Blus & Blus & Blus (on September 15, 2010)”

(5) “Blocker of a studio, installed indoors, and opened in the same room of a company, the lowest strawer of a company, “Blocker” (on May 13, 2013).

H) Before July 2013, the Defendant manufactured and distributed the following contents: (a) the Defendant’s product was introduced in Thailand and Japan’s broadcasts, including Korea’s terrestrial MBC Broadcasting Program “FC Spanishing Social”; (b) the Defendant’s product obtained not only the Republic of Korea but also the Chinese and the PC International Patent; and (c) the product awarded the German International Invention Prize (IEN2000).

I) On June 2013, the number of visitors visiting the Defendant’s website (website address omitted) reached approximately 380 persons on an average daily basis. The frequency in which pre-use trademarks were entered in the search fishing on the website of the Defendant Product Sale Agency (hereinafter “Sweb”) 209, February 2010, March 3, 2010, respectively (i.e., “i and ii heading out”, “i and ii heading out”, “i and ii heading out”), February 2, 2011 (i and iii heading out), April 4, 2012 (i and 3 heading out), and June 4, 2013 (i through heading out, “a heading out”, “a heading out”, “a heading out”, “a heading out”, and “a heading out”, respectively.

(j) In the event that “BLACK HLE” is entered into the Internet portal site NAV search site, it is linked to the link at Gmarket and No. 11 (a) together with an advertisement related to the locker set aside.

2) Specific determination

A) In light of the transactional situation or social norms by comprehensively taking account of the period, method, mode, scope of use, advertisement details, etc. of the pre-use trademarks known from the above facts, it is reasonable to deem that the pre-use trademarks were widely recognized as marks indicating the Defendant’s protegrative product among domestic consumers as of July 3, 2013, the filing date of the instant registered trademark.

B) As to this, the Plaintiff asserts that, in light of the Defendant’s use period, sales volume of Defendant’s products used by the pre-use trademarks, sales amount, sales size, advertisement period and size, etc., the portion of Defendant’s products used by the pre-use trademarks in the market is very low, advertisement frequency is low, and advertisement methods are limited to media or means with very low radio wave, pre-use trademarks cannot be seen as being recognized as trademarks among domestic consumers as trademarks indicating Plaintiff’s products.

In light of the following circumstances revealed from the above facts, i.e., the advertisement of the defendant's product has been made mainly by the main consumers of the hair back, the sales of the defendant's product continued to maintain a certain level from various companies to the filing date of the trademark of this case since 2010, and the sales of the defendant's product continued to have been distributed to livestock farmers, etc. by entering into a supply contract with the Public Procurement Service, and the defendant's product has characteristics used intensively in a certain period of one year, it cannot be deemed that the sales amount of the defendant's product is small, and it cannot be deemed that the collection reported in the media, etc., and the number of off-line advertising and advertising expenses are smaller than the small amount. Thus, even if it is determined based on the market for trading at a more general maternity market than the mother-up market related to the livestock industry, it is difficult to conclude that the pre-use trademarks were not known among general consumers as indicating the defendant's product. Therefore, the plaintiff's above assertion is rejected.

C. Whether the mark is similar

(i) preparation for appearance, name, and concept;

A) The registered trademark " " " of this case is indicated in the highest group of characters in Korean in small letters, and the center part is a mark consisting of three parts above the top in which "BL HAL" in English is placed, and the two parts are composed of three parts below the top in Korean. However, the pre-use trademarks are composed only of "BLACK HLE" in Korean or in English. Thus, the registered trademark of this case and pre-use trademarks of this case are composed only of "BLE" in Korean or in English. Thus, the registered trademark of this case and pre-use trademarks of this case are different in terms of the composition and shape of letters, letters, letters, letters, and designs, etc., and their appearance are not identical and similar.

B) As seen earlier, the registered trademark of this case is a mark consisting of the highest part in Korean, the center in English, and the lowest part in Korean and three parts above, and it cannot be deemed as being indivisiblely combined to the extent that each part is deemed natural in the transaction if it is separately observed. Of these parts, the part of the "Good Goods of the Republic of Korea exported to the world" in Korean of the highest group constitutes a mark ordinarily indicating the origin, quality, etc. of the goods, and there is no distinctive character, and the part of the "BLK HAL" in the center and its Korean sound line in Korean language is distinctive in relation to the designated goods of the registered trademark of this case, and it can be deemed that the part is an essential part, since it has a strong impression for ordinary consumers or has a high weight in the entire trademark, it is reasonable to deem that the part falls under the part.

Thus, if the registered trademark of this case is referred to as "BLL" or "BL" corresponding to its Korean translitor, both the registered trademark of this case and the pre-use trademarks of this case can be referred to as "blocor" in Korean. Thus, both the names and concepts are identical and similar.

C) As to this, the Plaintiff asserted that the part of “BLAK HAL” in the instant registered trademark is composed of “BL” in Korean, but the pre-use trademark 2 is composed of “BL” in Korean, and that the two are different from each other in terms of the word “bLAK HAL” and “BLACK HLE” in light of the level of ordinary people’s English distribution. However, in light of the level of ordinary people’s English distribution, the case where “BL” and “BLACK HLE” are different from each other cannot be considered as ordinary, and it is difficult to see that there are many persons who can recognize that the two are different English languages. In addition, pre-use trademark 1 consists solely of the part “bluor” in Korean, so there is no difference from the title of the instant registered trademark. Accordingly, the Plaintiff’s above assertion is rejected.

2) Sub-determination

Considering the fact that the trademark is similar to a trademark in determining its similarity by advertising the trademark as a voice medium or ordering goods by telephone in accordance with the wide dissemination of advertisement and publicity such as broadcasting, etc. today, the similarity of the trademark is the most important factor in determining its similarity (see Supreme Court Decision 97Hu3050, Feb. 25, 2000). Thus, even if the registered trademark and the pre-use trademark of this case are not identical in appearance, if they are named and conceptualized only by the part “BLACHAL” and “BL”, which are essential parts of the registered trademark of this case, even if they are not identical in appearance, the registered trademark of this case and the pre-use trademark of this case are identical and similar in their names and concepts, so it is reasonable to deem that the registered trademark of this case constitutes the same and similar marks.

D. Whether there exists an unlawful purpose

1) On July 3, 2013, the filing date of the instant registered trademark, the pre-use trademarks were widely recognized among domestic consumers as marks indicating the Defendant’s products. As seen earlier, the instant registered trademark is very similar to the pre-use trademarks.

2) The above evidence, Gap evidence No. 12, and the following facts revealed the overall purport of the arguments, i.e., the pre-use trademarks "BALE" and "BALE" mean the area of time space where most of the people know in light of the universal education level, "it is difficult to include light due to heavy power," and the above image of the goods using the pre-use trademarks "it is hard to see or suggest the excellent efficacy," and the goods using the pre-use trademarks are products that have significant influence on the sale of the pre-use trademarks, and it is hard to see that the above image was not widely used for the goods using the pre-use trademarks, and thus, it is hard to see that the plaintiff had no knowledge that the pre-use trademarks were used for the goods using the pre-use trademarks, such as those using the pre-use trademarks, and that there is no possibility that the plaintiff would not use the registered goods identical or similar to the pre-use trademarks, in light of the fact that the plaintiff had no knowledge of the above image of the goods using the pre-use trademarks.

4. Conclusion

In full view of all the above circumstances, the registered trademark of this case falls under Article 7 (1) 12 of the former Trademark Act and its registration is null and void. Thus, the trial decision of this case, which concluded as above, cannot be deemed to be erroneous as alleged by the plaintiff. Thus, 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 Kim Gung (Presiding Judge)