Dokweb Co., Ltd. (Patent Attorney Kim Dong-sik, Counsel for the defendant-appellant)

Defendant

July 28, 2010

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 April 28, 2010 on the case 2009Da2430 shall be revoked.

1. Basic facts

A. The registered trademark of this case

(1) Date of application / Date of registration / Number of registration: April 13, 2007 / January 14, 2008 (registration number omitted)

(2) Marks: VSP

(3) Designated goods: Class 9 of the classification of goods; Class 9 of the former voltages; Class 5 of the former voltages; the former voltages; and the former voltages; and

(4) Trademark right holder: plaintiff

(b) a challenged mark;

(i)marks: VSP UNT;

(ii)products: Sheet protection machine, net-time compensation device, brain protection system;

(c) Users: Defendant;

C. Details of the instant trial decision

The defendant filed a claim for a trial to confirm the scope of the right of the plaintiff's registered trademark of this case with the purport that the challenged mark does not fall under the scope of the plaintiff's right, and the Korean Intellectual Property Trial and Appeal Board tried to confirm the scope of the right of the trademark of this case, and as a result, the challenged mark was used as a sponsor link and led the general public only to attract them through w.dipree.com, which is the web site of the defendant's website, and it is difficult to see that the challenged mark does not fall under the scope of the right of the registered trademark of this case.

2. The parties’ assertion and the issues of the instant case

A. Summary of the plaintiff's assertion

The Defendant indicated the “VSPNT” of the challenged mark, including the instant registered trademark VSP, along with the Defendant’s Internet homepage address (www.dipree.com) of the non-party 1 corporation’s representative, and displayed an advertisement that the Defendant sells various products corresponding to the designated goods of the instant registered trademark, and in fact, the Defendant advertised various net electric power compensation devices corresponding to the designated goods of the instant registered trademark within the connected non-party company’s website and entices actual purchase at the same time, and thus, it should be deemed as an act of using the trademark under the Trademark Act. Accordingly, the challenged mark falls under the scope of the right of the instant registered trademark.

B. Summary of the defendant's assertion

The challenged mark is merely a so-called “slphone link” that induces consumers, and it is not intended to indicate the source of goods, which are the essential function of the trademark, and it is difficult to regard it as a trademark or a trademark use, and it does not naturally belong to the scope of the right of the trademark

Even if the challenged mark is deemed to have the function of indicating the source of the goods, the registered trademark 5SP of this case is the abbreviation of "Vloage Sag Proteg", which means the net prepact compensation device or voltager and has no distinctive character as it falls under the general name or common name of the goods in the transaction of the goods in question. Thus, even if the challenged mark uses the above VSP, it does not fall under the scope of the right of the registered trademark of this case.

C. Key issue of the instant case

Whether the challenged mark used as a sponsor link has the function of indicating the source of the goods, and whether the trademark of this case is a common name used as a word or abbreviation of the nature or function of the goods such as the net circuit compensation machine, and even if the challenged mark is used, it does not fall under the scope of the right.

3. Whether the challenged mark falls under the scope of rights of the registered trademark of this case.

A. Criteria for judgment

According to Article 75 of the Trademark Act, an owner of a trademark right, an exclusive licensee or an interested person may request a trial to confirm the scope of a trademark right in order to confirm the scope of the right of the registered trademark. The scope of a trial to confirm the scope of a trademark right is a trial to confirm which specific marks are subject to confirmation, focusing on the registered trademark right, and the purpose is to determine the effect of the registered trademark on the challenged mark and confirm the composition of conflict or

Therefore, it is natural that the trademark subject to confirmation does not fall under the scope of the registered trademark right if the trademark subject to confirmation does not fall under the scope of the trademark right. Thus, in the adjudication to confirm the scope of the trademark right, it is necessary to first examine whether the trademark subject to confirmation falls under the scope of the trademark right under the Trademark Act, and then examine the similarity of both marks in the next step, and further examine and determine whether the trademark subject to confirmation falls under the grounds for limiting the effect of the trademark right under the Trademark Act (see Supreme Court Decisions 82Hu24 delivered on October 26, 1982, 94Hu27 delivered on April 14, 1995, etc.).

However, with regard to the concept of a trademark, Article 2 (1) of the Trademark Act defines "trademark" as a mark used by a person who produces, processes, certifies, or sells goods as a business to distinguish goods related to his/her business from the goods of another person, and it can be visually recognized as a mark, letter, figure, three-dimensional shape, color, action or any combination thereof, or any other combination thereof, or any other combination thereof." Thus, in order for a trademark to constitute a trademark, the appearance of the mark must be visually recognizable such as symbols, letters, diagrams, etc., and further, the distinctiveness of the trademark should have the function of indicating the origin of the goods in distinguishing the goods from other goods.

B. Specific review

(1) Facts of recognition

(A) The plaintiff is a person who sells the registered trademark of this case after manufacturing the net pre-payment compensation machine, etc., and the defendant also is a representative director of the non-party UNTRA Co., Ltd. who manufactures the net pre-payment compensation machine, etc.

(B) In order to sell the products produced by the non-party company, the Defendant purchased the key of the “VSP CC” from “the following drums” to use the sponsor link, and then, indicated the name of the product, such as the net spC, which he manufactured and sold, under the sponsor link, and then indicated the name of the product, such as w.dipree.com on the website address of the non-party company at the bottom of the sponsor link, if the Internet user enters the “VSP” into the English Alpha, which constitutes the instant registered trademark, then the challenged mark was printed out on the search screen as a sponsor link, and if the Internet user characters the above sponsor’s address or website address, it was set up and moved to the website of the non-party company.

(C) On the Internet homepage of the above www.diperee.com, which is the address of the non-party company operated by the defendant, if the non-party company enters the Internet homepage, products with trademarks, such as “Niltrip”, “deepfree”, and “Saglefe”, which are registered by the defendant or the non-party company, are indicated separately in relation to the products produced and sold by the non-party company, and no products with separate marks for confirmation are indicated.

(D) Meanwhile, “VSP”, the instant registered trademark, is widely used as the abbreviations of “Vloptage Sags” among ordinary consumers or traders of the instant cruise system, and, in fact, when entering “VSP” in the Internet search hold, multiple sponsor links related to the net assessment system are printed out.

(2) Specific determination

According to the above facts, the defendant can be deemed to purchase the challenged mark from the Internet evasion site and use it as a sponsor link. In general, if the advertiser purchases the keyboard link expected to be input by the consumer when the consumer intends to purchase goods or services, it means an advertisement in which the advertiser's advertising is allowed to damage the web page on the web page when the user enters the keyboard question in accordance with the list of the advertiser's keyboard or the web page containing the relevant contents (see subparagraph 1).

However, as seen above in the facts of recognition, the marks used by the defendant play the role of inducing general consumers or traders to the Internet homepage of the non-party company, and it is difficult to view that the marks subject to confirmation have been used as the intention to distinguish the products produced and sold by the defendant or the non-party company from those produced and sold by the non-party company, or that the products made by the non-party company, which are registered by the defendant or the non-party company, are limited to those affixed with the trademark, such as “NTP”, “NTP”, “NFE”, and “S-FREE”, which are separate trademarks registered by the defendant or the non-party company, and thus it is difficult to view that the marks subject to confirmation have used the products produced and sold by the defendant or the non-party company as the intention to distinguish them from the products produced and sold by others or used them for the indication of the origin of the goods.

The plaintiff argues that the challenged mark was used as a trademark indicating the source of the goods, since the specific products, such as the net prepact compensation machine, etc. are written down on the lower part of the challenged mark, it cannot be ruled out at all the possibility that the challenged mark can be seen as performing the function of indicating the source of the goods, in indicating the products, such as the net prepact compensation machine, etc., produced and sold by the defendant or the non-party company, at the search space of the website as shown in the attached Table 2. However, it is only less than the extent that the Internet advertiser notifies the users of the information about the products produced or sold by the Internet advertiser in advance. On the other hand, the act of indicating the products on the lower part of the challenged site's search site's search site's display of the products itself, or displaying, exporting or importing them for that purpose, as well as the act of displaying, exporting or importing them, displaying or importing them on the products, and therefore, it does not constitute a violation of Article 2 of the Trademark Act.

In addition, even if the challenged mark used as a sponsor link as the plaintiff's assertion has the function of indicating the source of goods produced and sold by the defendant or the non-party company, or the use of a trademark is likely to be seen as a trademark or a trademark use, in full view of the overall purport of the pleadings in the written evidence Nos. 6, 8, and 9, the "VSP" is recognized as being used as a abbreviation of the English language "Volage Sler", which refers to the net time compensation system in the trade sector that handles the net time compensation system, and therefore it is difficult to conclude that the "VSP" has reached the stage of the ordinary name or the official name of the net time compensation system, even if it is difficult to conclude that the term "VSP" has reached the stage of the ordinary name of the net time compensation system or the official name.

Thus, since the part of the "VSP", which is the whole part of the challenged mark, is relatively weak in distinguishability, if the part of the "VSP" in the latter part with a separate distinctive character is combined, the challenged mark is not similar in view of the registered trademark of this case as a whole, and it is difficult to see that it falls under the scope of the right.

(3) Sub-decisions

Therefore, the challenged mark has the function of "slphone link" which induces Internet users to the Internet homepage of the non-party company, and it does not have the function of indicating the source of the product produced and sold by the defendant or the non-party company, as it does not fall within the scope of the right of the trademark of this case.

4. Conclusion

Therefore, the trial decision of this case, which is the same conclusion, is legitimate, and the plaintiff's claim for revocation is dismissed as it is without merit. It is so decided as per Disposition.

[Attachment]

Judges Cho Jae-chul (Presiding Judge)