[1] Requirements and time of determination for constituting “a trademark used for an unlawful purpose” under Article 7(1)12 of the Trademark Act (=the time of filing an application for a registered trademark)

[2] 선사용서비스표 “ ”, “ ”, “ ”, “ ”, “わらわら”의 사용자인 갑 외국회사가 등록상표 “ ”의 등록상표권자 을 주식회사를 상대로 등록상표가 구 상표법 제7조 제1항 제12호 등에 해당한다는 이유로 등록무효심판을 청구한 사안에서, 등록상표는 부정한 목적을 가지고 출원한 것이라고 단정할 수 없는데도 이와 달리 본 원심판결에 법리오해의 위법이 있다고 한 사례

[1] Article 7(1)12 of the Trademark Act provides that trademark registration shall not be granted to a trademark which is identical or similar to a trademark (excluding a geographical indication) recognized as indicating goods of a particular person by domestic or foreign users, and which is used for unjust 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 particular person from domestic or foreign users shall not be registered in the Republic of Korea. The purpose of this provision is to obtain unjust profits by taking advantage of the business reputation, etc. of the trademark which is embodied by a third party through the registration of the trademark and use of the trademark, or to inflict harms on the trademark right holder by impairing the value of the trademark subject to reproduction or interfering with the business in the Republic of Korea of the trademark right holder. Therefore, if a trademark falls under this provision, the determination of whether an applicant is identical or similar to the trademark subject to reproduction with the registered trademark, shall be made based on the economic recognition of the applicant's trademark to the extent that the applicant's trademark is identical or similar to the registered trademark, the extent of the trademark's use or similar trademark.

[2] 선사용서비스표 “ ”, “ ”, “ ”, “ ”, “わらわら”의 사용자인 갑 외국회사가 등록상표 “”의 등록상표권자 을 주식회사를 상대로 등록상표가 구 상표법(2001. 2. 3. 법률 제6414호로 개정되기 전의 것) 제7조 제1항 제12호 등에 해당한다는 이유로 등록무효심판을 청구한 사안에서, 등록상표는 을 회사가 선등록서비스표 “ ”, “ ” 및 실사용 표장 “WARAWARA”, “ ”, “ ”, “ ”, “ ”에 축적된 자신의 독자적인 영업상 신용 및 인지도에 기초하여 그 사업영역을 확장하기 위해 출원한 것으로 볼 수 있을지언정 갑 회사의 국내시장 진입을 저지하거나 대리점계약의 체결을 강제할 목적 또는 갑 회사의 선사용서비스표들의 명성에 편승하여 부당한 이익을 얻을 목적 등 부정한 목적을 가지고 출원한 것이라고 단정할 수 없는데도 이와 달리 본 원심판결에 법리오해의 위법이 있다고 한 사례.

[1] Article 7 (1) 12 of the Trademark Act / [2] Article 7 (1) 12 of the Trademark Act

[1] Supreme Court Decision 2010Hu807 decided July 15, 2010 (Gong2010Ha, 1597)

E&D Partnership (Patent Firm Shin & Lee, et al., Counsel for the defendant-appellant)

A. Shaymonte (Attorney Jeon-sung et al., Counsel for the plaintiff-appellant)

Patent Court Decision 201Heo5861 Decided January 18, 2012

The judgment below is reversed, and the case is remanded to the Patent Court.

The grounds of appeal are examined.

1. Article 7(1)12 of the 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 particular person between domestic or foreign consumers, and which is used for unjust 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 particular person by domestic or foreign consumers shall not be registered in the Republic of Korea. It is intended to obtain unjust profits by using the trademark reproduced by a third party on the commercial credit, etc. incorporated in the trademark subject to reproduction, or by using the trademark which is used for the purpose of damaging the value of the trademark subject to reproduction or interfering with the domestic business of the owner of the trademark subject to reproduction. In order to fall under this provision, whether an applicant of the trademark subject to reproduction is entitled to obtain the same or similar trademark as the trademark, the trademark should be recognized as a trademark among domestic or foreign consumers, and whether the applicant of the trademark has the same or similar trademark, to the extent that it is objectively recognized as one of the designated as an applicant's or similar trademark under social norms.

2. The reasoning of the judgment below and records reveal the following. (1) The Plaintiff filed an application for the registration of the service mark “ 1” or “ 2” with respect to the Defendant’s registered service mark “ 1” or “ 1” on September 5, 2001, and obtained the registration of the service mark “1” under Chapter 42 separate from the service business (hereinafter the above registered service mark “1”) on June 24, 2003, and the Defendant’s prior-registered service mark “ 2” or the Defendant’s prior-registered service mark “ 0-registered service mark” were copied by the Defendant’s prior-registered service mark as indicated in the judgment of the court below, and the Defendant’s prior-registered service mark “ 0-registered and prior-registered 2” or “ 0-registered service mark was also deemed to have been clearly recognized as indicating the Defendant’s prior-registered service mark’s specific service mark among the Defendant’s prior-registered and prior-registered service marks “ 10-registered and prior-registered service marks”. Thus, the Plaintiff’s right to appeal was lawful.

3. Examining the aforementioned circumstances in light of the legal principles as seen earlier, the instant registered trademark is deemed to have been filed by the Plaintiff in order to expand its business territory based on its own business credit and awareness accumulated in the prior registered service marks and marks of actual use, and it cannot be readily concluded that the instant registered trademark has been filed with unjust purposes, such as preventing the Plaintiff from entering the Defendant’s domestic market, forcing the conclusion of an agency contract, or taking advantage of the Defendant’s reputation, thereby gaining unfair profits.

Nevertheless, the court below held that the registered trademark of this case constitutes "a trademark used for an unlawful purpose" under Article 7 (1) 12 of the Trademark Act on the grounds that the Plaintiff applied for, registered, or used prior-registered service marks. The court below erred by misapprehending the legal principles on "a trademark used for an unlawful purpose," which affected the conclusion of the judgment. The ground of appeal assigning this error is with merit.

4. Therefore, without further proceeding to decide on the remaining grounds of appeal, the lower judgment is reversed, and the case is remanded to the lower court 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 Jeon Soo-ahn (Presiding Justice)