[1] In a case where trademark rights are illegally extinguished and registered, whether the duration of the trademark rights is in progress (affirmative); and in such a case, whether the trademark right holder can apply for restoration according to the procedure under Article 27 of the Decree on Registration of Patent, etc. (affirmative) / Whether such restoration registration affects the duration of the trademark rights (negative)

[2] In a case where Gap filed a judgment revoking trademark registration against a third party, other than a corporation, the trademark right holder Eul of the registered trademark " "," and the Korean Intellectual Property Trial and Appeal Board rendered a decision revoking trademark registration, and the Commissioner of the Korean Intellectual Property Office registered the extinguishment of the trademark right, and the issue of the decision to revoke the trademark registration was broken down, and the Eul applied for the restoration registration and renewal registration of the trademark right after the expiration of the application period for the renewal registration of the trademark right, and Eul filed an application for the restoration registration and renewal registration of the trademark right after the expiration of the application period for the renewal registration of the trademark right, the case affirming the judgment below which held that the trademark right is not already extinguished even if the trademark right is restored and registered, and in light of all the circumstances, the above disposition does not go against the good faith principle

[1] The registration of a trademark right is a requirement for the establishment of the trademark right, but is not a requirement for the existence of the trademark right. Therefore, even if the trademark right was illegally extinguished and registered, the validity of the trademark right is not affected, and the duration of the trademark right continues to run as it is. When the trademark right is illegally extinguished and registered, the trademark right holder may apply for its recovery in accordance with the procedure under Article 27 of the Decree on Registration of Patent, etc. In a case where the trademark right is illegally extinguished, the trademark right holder may apply for its recovery in accordance with the procedure of Article 27 of the Decree on Registration

[2] In a case where Gap filed a judgment revoking trademark registration against a third party, other than a corporation, the trademark right holder of the registered trademark " "," and the Korean Intellectual Property Trial and Appeal Board rendered a decision revoking trademark registration with excessive application, and the Korean Intellectual Property Trial and Appeal Board (Korean Intellectual Property Office) filed an application for revoking trademark registration after the expiration of the application period due to an inappropriate proposal of the chief administrative patent judge, and Eul applied for trademark restoration registration and renewal registration after the expiration of the trademark right, the case affirming the judgment below that Eul's trademark right continues to exist without extinguishment and its duration continues to exist without expiration of the trademark right, on the ground that the effect of revocation decision does not extend to Eul, and there was no application period until the expiration of the application period for renewal of the duration, and even if the trademark right has already expired, the trademark right already expired does not go to the expiration of the duration, and there were many complicated interests in the trademark right, and thus the application period for renewal of the duration and renewal of the trademark right cannot be seen as inappropriate in accordance with the above provisions of the Trademark Act.

[1] Articles 41(1) and 42(1) (see current Article 82(1)) of the former Trademark Act (wholly amended by Act No. 1403, Feb. 29, 2016); Article 27 of the Decree on Registration of Patent, etc. / [2] Articles 42(2) and 43(2) (see current Article 84(2)) of the former Trademark Act (wholly amended by Act No. 1403, Feb. 29, 2016); Article 27 of the Decree on Registration of Patent, etc.

[1] Supreme Court Decision 200Du9229 Decided November 22, 2002 (Gong2003Sang, 225) Supreme Court Decision 2013Hu2309 Decided January 16, 2014

C&L Co., Ltd. (Law Firm Dongin, Attorneys Ansan-gu et al., Counsel for the defendant-appellant)

The Commissioner of the Korean Intellectual Property Office

[Defendant-Appellant] Jatd Co., Ltd. (Law Firm Jatd, Attorneys Kim Young-chul et al., Counsel for defendant-appellant-appellant)

Seoul High Court Decision 2015Nu42253 decided February 18, 2016

The appeal is dismissed. The costs of appeal are assessed against the plaintiff.

The grounds of appeal are examined.

1. As to the grounds of appeal Nos. 2 and 3

A. Registration of trademark rights is a requirement for the establishment of trademark rights, but is not a requirement for the existence of trademark rights. Therefore, even if trademark rights are illegally extinguished and registered, the validity of trademark rights is not affected, and the duration of trademark rights continues to run as is. When trademark rights are unlawfully extinguished and registered, a trademark right holder may file an application for restoration thereof in accordance with the procedure under Article 27 of the Decree on Registration of Patent Rights, Etc. In a case where the trademark rights are illegally extinguished and registered, the trademark right holder may file an application for restoration thereof. Such restoration registration is merely a registration that restores the cancelled registration to its original state and holds the same effect as that of the cancellation of such registration from the beginning, and thus, even if the registration was restored and registered, it does not affect the duration of trademark rights (see Supreme Court Decisions 200Du9229, Nov. 22, 2002; 2013Hu

B. The reasoning of the lower judgment and the record reveal the following.

1) The Plaintiff’s trademark “” (hereinafter “instant extinguished trademark or trademark”) is a trademark registered on September 27, 200 and February 28, 2002, and its duration is up to February 29, 2012. According to Article 43(2) of the former Trademark Act (wholly amended by Act No. 1403, Feb. 29, 2016; hereinafter the same), the time limit for filing an application for renewal of its duration is six months after the trademark right expires.

2) On January 12, 2007, Nonparty 1 filed a petition for revocation of registration against the Intervenor joining the Defendant, who is not the Plaintiff having the trademark right, on the extinguished trademark of this case. The Intellectual Property Trial and Appeal Board rendered a decision to revoke the registration of the said trademark (hereinafter “instant revocation decision”), and the said decision became final and conclusive, and the Defendant registered the extinguishment of the trademark right of this case on November 20, 207.

3) On November 1, 2007, after the decision on revocation of the instant case was rendered, Nonparty 1 filed an application for “” (trademark 2 omitted; hereinafter “trademark 2 or trademark right 2”) and “” (trademark 3 omitted; hereinafter “trademark 3 or trademark 3”) on November 1, 2007, and obtained trademark registration on August 28, 2008. The extinguished trademark of this case and the designated goods of the trademark 2 or 3 are mutually similar to those related to cremation. On December 18, 2008, Nonparty 3 was transferred from Nonparty 1 to Defendant Intervenor.

4) Nonparty 2, who was the chief judge of the instant revocation trial, visited the Plaintiff at latest after having a problem in the instant revocation trial decision. Around April 2009, Nonparty 2 visited the Plaintiff to request a retrial on the instant revocation trial decision, and suggested measures to take over the trademark 2 from Nonparty 1 as a solution. However, Nonparty 2 did not notify the Plaintiff of the fact that trademark 3, other than trademark 2, was registered. The Plaintiff accepted the second method and was transferred a trademark 2 from Nonparty 1 on April 14, 2009.

5) The Plaintiff became aware of the existence of trademark 3 around September 2012, 2012, after the time limit for filing an application for registration to renew the duration of the trademark right in this case. The Plaintiff filed a lawsuit seeking revocation of the instant revocation decision on April 22, 2013. However, the Plaintiff’s dismissal decision became final and conclusive on the ground that “the Plaintiff’s lawsuit was unlawful since it did not have the standing to file a lawsuit seeking revocation because it was not a party, etc. to the instant revocation decision,” and the Plaintiff’s lawsuit was not unlawful (Supreme Court Decision 2013Hu2309 Decided January 16, 2014). However, the foregoing Supreme Court’s ruling is not effective against a third party, even if a trial ruling accepting it in a trademark revocation trial filed against a third party, other than the owner of the trademark right, and thus, the Commissioner of the Korean Intellectual Property Office shall not register the extinguishment of trademark right on the ground of such trial decision, and even if the trademark right holder was registered upon extinguishment, even if it may also include an application for restitution in accordance with Article 27 of the Decree.”

6) On January 28, 2014, the Plaintiff applied for the restoration registration and the renewal registration of the duration of the trademark right to be extinguished in the instant case. The Defendant registered the restoration registration of the trademark right on January 28, 2014, and again registered the extinguishment of the trademark right on the ground of the expiration of the duration, and refused the registration for the renewal of the duration of the extinguished trademark right in the instant case on June 10, 2014 (hereinafter “instant disposition”).

C. The lower court determined that, since the effect of the decision on revocation of this case does not extend to the Plaintiff, the Plaintiff’s trademark right to the extinguishment of this case ought to continue to exist and continue to exist without extinguishment, and that, in so doing, the term of the trademark right to the extinguishment of this case expired on February 29, 2012, and the term of the trademark right to the extinguishment of this case was expired until six months have passed thereafter, and thus, the trademark right was extinguished by the expiration of the term of the trademark right, and the trademark right already extinguished was registered for restoration as long as it had already been extinguished.

Such determination by the lower court is in accordance with the legal doctrine as seen earlier, and contrary to what is alleged in the Plaintiff’s grounds of appeal, there were no errors by misapprehending the legal doctrine on the renewal registration or restoration registration

2. Regarding ground of appeal No. 1

The lower court determined that the instant disposition did not go against the good faith principle on the following grounds.

1) Since a number of interests can be complicatedly connected to trademark rights, the expiration of the duration of trademark rights and its renewal should be determined uniformly in accordance with the provisions of the Trademark Act.

2) Although it is difficult to view the inappropriate proposal of Nonparty 2 as the Defendant’s public opinion list, and thus, it cannot be said that the period of application for trademark right duration renewal registration and duration renewal registration differs, apart from whether the Plaintiff can claim damages on the ground that the Plaintiff could immediately file an application for restoration registration for the extinguishment of trademark right in this case.

3) The Plaintiff, regardless of Nonparty 2’s proposal, was entitled to file an application for the registration of restitution of trademark rights extinguished in this case with the legal expert’s advice, and further filed an application for the renewal of the duration, but did not accept Nonparty 2’s proposal and did not take the above method.

Examining the record in light of the relevant legal principles, the lower court did not err by misapprehending the legal doctrine on the principle of good faith, contrary to what is alleged in the grounds of appeal.

3. Therefore, the appeal is dismissed, and the costs of appeal are assessed against the losing party. It is so decided as per Disposition by the assent of all participating Justices on the bench.

Justices Kim Seon-soo (Presiding Justice)