In a case where Gap filed a petition for invalidation trial against Eul who is a trademark right holder of the registered trademark " "" with the Intellectual Property Tribunal, "the registered trademark is a mark indicating raw materials, etc. of the designated goods in a common way and it is impossible for consumers to distinguish who are related to his/her business, and thus the registration should be invalidated because it falls under Article 6 (1) 3 and 7 of the former Trademark Act, and the Korean Intellectual Property Tribunal dismissed the petition, the case holding that the above trial decision as to the grounds for invalidation of the registered trademark is legitimate, on the grounds that the registered trademark does not fall under Article 6 (1) 7, Article 7 (1) 10, and 11 of the former Trademark Act, and all the allegations by Gap as to the grounds for

In the Intellectual Property Tribunal, “A” against “B” who is a trademark right holder of the registered trademark “” filed a petition for trial to invalidate the registered trademark on the ground that “A” is a mark indicating raw materials, etc. of the designated goods in a common way and it is impossible for consumers to distinguish who are related to a person’s business, and thus, the registration must be invalidated as it falls under Article 6(1)3 and 7 of the former Trademark Act (amended by Act No. 1403, Feb. 29, 2016; hereinafter the same shall apply), but the Korean Intellectual Property Tribunal dismissed the petition.

The case holding that considering the following facts: “HEND” in the part of the registered trademark’s text and “HE Y (limited to those added with a penalty)” and “raw materials,” which are the designated goods, are sensed as “processed Amond (limited to those added with a penalty)”, and the shape of the registered trademark has no distinctiveness but has been registered with the intention of using the trademark as trademark B as trademark and actually used as trademark marking the registered trademark on the package of the Nmond product, the function of indicating its source is recognized; even if the trademark is indicated on its package, it is difficult to view that the registered trademark can function as trademark distinguishing from that of the pre-use trademark because it is difficult to distinguish the source of the trademark from that of the pre-use trademark from that of the pre-use trademark, and thus, it does not constitute a so-called “non-use trademark” under Article 6(1)7 of the former Trademark Act, and thus, it is difficult to view that there is no difference between the trademark and the domestic consumers as well as the so-known trademark as the so-called “public consumers” as the trademark.

Articles 6(1)7 and 7(1)10 and 11 of the former Trademark Act (Amended by Act No. 14033, Feb. 29, 2016);

[Defendant-Appellant] Defendant 1 and 3 others (Attorney Seo Young-young, Counsel for defendant-appellant)

Royang (Patent & Patent Attorney Lee Chang-hoon, Counsel for the defendant-appellant)

July 18, 2019

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 March 19, 2019 on the case No. 2018Da4034 shall be revoked.

1. Basic facts

A. Defendant’s registered trademark of this case (Evidence A No. 1)

1) Date of application / Date of decision of registration / Date of registration / Number of registration:

Mar. 12, 2015/ August 11, 2015/ October 7, 2015 (registration number omitted)

2) Composition:

3) Designated goods: Montreal (limited to those added by the bee and the bee and the bee and the bee and the bee and the bee) processed by the type of goods as specified in Chapter 29 as classified in the category of goods, copper mond (limited to those added by the bee and the bee and the bee and the bee and the bee are added), romond (limited to those added by the bee and the bee and the bee and the bee) cooked, hmond (limited to those added by the bee and the bee and the bee) preserved and treated;

(b) Pre-use trademarks (Evidence A 3);

1) Composition:

2) 사용상품: 스낵(허니버터칩)

3) User: Neglecting and stock company;

C. Details of the instant trial decision (Evidence A No. 2)

1) On December 4, 2018, the Plaintiff asserted that “The instant registered trademark is a mark indicating raw materials, etc. of the designated goods in a common way, and it is impossible for consumers to distinguish who are related to a person’s business, and thus, it falls under Article 6(1)3 and 7 of the former Trademark Act (amended by Act No. 14033, Feb. 29, 2016; hereinafter the same) and filed for a trial to invalidate the registration of the instant registered trademark against the Defendant, who is a trademark right holder of the instant registered trademark.”

2) After examining the above case with No. 2018Da4034, Mar. 19, 2019, the Korean Intellectual Property Tribunal rendered a trial decision dismissing the Plaintiff’s request on the ground that “The registered trademark of this case is a mark indicating raw materials, etc. in a common way with respect to the designated goods, and it is difficult to readily conclude that the registered trademark of this case is a mark identifying goods related to a person’s business, and it cannot be deemed that it does not fall under Article 6(1)3 and 7 of the former Trademark Act.”

[Ground of recognition] Unsatisfy, entry of Gap evidence 1 to 3, purport of whole pleadings

2. Summary of the plaintiff's assertion

For the following reasons, although the registered trademark of this case should be invalidated, the decision of this case was unlawful because it was judged differently.

A. Article 6(1)7 of the former Trademark Act

The instant registered trademark is recognized as a package design of goods and has no function of indicating the source. Considering the actual use of the Defendant’s registered trademark of this case, the Defendant’s actual use of the registered trademark of this case is changing the figure of the instant trademark according to its customer and product capacity, and is using the instant registered trademark design only for “Huurmond,” and attaching a separate trademark called “” on actual packing and product advertisement. This supports that the figure portion of the instant registered trademark is merely packaging design rather than the origin indication of the goods. Furthermore, considering the result of the questionnaire conducted against ordinary consumers, it is confirmed that the instant registered trademark of this case has no function of indicating the origin of the goods. Furthermore, as the trademark of this case is widely used, the distinctiveness of the figure portion is not recognized or extremely weak.

B. Article 7(1)10 and 11 of the former Trademark Act

Even if distinctiveness is recognized on the figure portion of the registered trademark of this case, the registered trademark of this case is similar to a mark which, without permission, takes advantage of the personal guidance of the pre-use trademark, which is a well-known trademark with a prior personal seal, leading one at the time of the application for registration, and taking advantage of the personal guidance of the pre-use trademark, which is a well-known trademark with a first class of domestic category 1, and constitutes a similar mark, and the designated goods also are similar to the goods used in the pre-use trademark or have an economic relation, and there are frequent cases where ordinary consumers mislead and confuse the registered trademark of this case as if the goods used in the pre-use trademark were the business goods of the pre-use trademark. Accordingly, the registered trademark of this case is likely to cause confusion with the goods of a well-known other person under Article 7(1)10 of the former Trademark Act or to mislead consumers under Article 7(1)11 of

3. Determination as to whether Article 6(1)7 of the former Trademark Act falls under Article 6(1)7

A. Relevant legal principles

Article 6(1) of the former Trademark Act provides, “A trademark other than those as referred to in subparagraphs 1 through 6, which does not enable consumers to recognize whose goods it indicates in connection with a person’s business.” This means that even if a trademark does not fall under any of subparagraphs 1 through 6 of the same Article, a trademark which does not distinguish the source between his/her goods and another person’s goods cannot be registered. Whether a trademark has no distinctiveness is determined objectively by taking into account the concept of the trademark, the relationship with the designated goods, and the circumstances of the transaction society, etc. The trademark should be determined objectively by taking into account the concept of the trademark, the concept of the designated goods, the relationship with the designated goods, and the circumstances of the transaction society. If it is difficult to recognize the distinctiveness of the goods of another person under generally accepted social norms or it is deemed inappropriate to enable a specific person to monopoly the trademark (see, e.g., Supreme Court Decision 2012Hu2951, Dec

B. Specific determination

1) The part of the text of the instant registered trademark, “HONEY BUTER ALND,” “processed Amond (limited to those added by a beer and a burner),” which is the designated goods, indicated “raw materials, etc.,” and thus, has no distinctive character, since it is directly sensed as being indicated in relation to “raw materials, etc.” as the designated goods.

2) Meanwhile, the shape portion of the instant registered trademark is melting in color with a sign as a whole on the basis of yellow color. The upper part combines the shape such as “,” and forms the same shape as “,” which sets up below the shape, and is combined with “the shape as “,” at the bottom. However, examining the bottom in detail, it is difficult to see that the shape portion of the instant registered trademark is melting a liquid on the surface portion of the upper body figure that shapes the burner blter, and as such, it is difficult to see that the entire part of the trademark is melting the origin of the goods as seen below, and it is difficult to see that it is a combination of the parts in which the Montreal is melting the entire part, and it is not suitable to see that it is a combination of the parts in which the whole part is melting with the designated goods in light of its function, such as an expression “distinctive,” or an expression of the shape and shape of the instant registered goods in light of the foregoing blurging function.

3) Judgment on the Plaintiff’s assertion

A) The Plaintiff asserted that the instant registered trademark has no distinctiveness since the Defendant used the instant registered trademark as a package design.

However, even if a design and trademark are not in exclusive or selective relationship, if it is deemed that it is used for the purpose of indicating the source of another product that can be deemed as a trademark’s essential function, the above use is deemed as trademark use (see, e.g., Supreme Court Decisions 2009Hu665, May 14, 2009). Whether it is being used as a trademark should be determined by the determination of whether the mark indicated in the actual transactional system is used as a product’s identification mark, by taking into account the relation with the product, the mode of use of the mark, the well-known and well-knownness of the registered trademark, and the user’s intent and use circumstances (see, e.g., Supreme Court Decisions 2010Da20044, Mar. 29, 2012; 2010Da58261, Mar. 28, 2013).

그런데 ① 피고는 이 사건 등록상표를 상표로 사용할 의사를 가지고 상표등록 출원을 하였고 실제로 허니버터아몬드 제품의 포장지 전면에 이 사건 등록상표를 표시하는 방식으로 사용하여 온 점, ② 이 사건 등록상표 중 ‘허니버터아몬드’ 문자 부분은 식별력이 없고, 도형 부분만이 지정상품과 관련하여 식별력이 있는 점, ③ 다양한 연령층의 소비자들이 저렴한 가격 등의 이유로 높지 않은 주의력으로 제품을 고르는 과자, 스낵 등의 상품에는, 새로운 제품을 쉽게 이해할 수 있도록 초코파이, 새우깡, 허니버터아몬드 등의 식별력 없는 문자상표를 제품의 상표로 흔히 사용하고 있어, 포장 전면에 표시된 도형상표가 상품의 식별표지로서 주로 사용되고 있는 점, ④ 수요자들 역시 과자, 스낵 등의 상품의 경우 포장 전면에 표시된 도형으로 제품의 출처를 식별하는 것이 일반적인 점 등을 고려할 때, 이 사건 등록상표 중 도형 부분은 상표로서의 출처표시기능이 인정된다고 보아야 한다.

Therefore, the plaintiff's above assertion is without merit.

B) In addition, the Plaintiff argues that the instant registered trademark does not function as a source indication in light of the fact that the Defendant used the figure portion of the instant registered trademark in various ways according to its customer and product capacity, and only “Huurmond” used the instant registered trademark design among “Huurur”. The Plaintiff asserted that the instant registered trademark does not function as a source indication, but its function cannot be denied solely on the ground that the trademark right holder uses different trademarks with respect to the same product group in strategic distinction, and two or more trademarks can be displayed on one product (see, e.g., Supreme Court Decision 2011Do13441, Feb. 14, 2013), and that even if the trademark is marked on the product, the instant registered trademark cannot function as a product mark separately. Therefore, the Plaintiff’s assertion is without merit.

C) The Plaintiff asserts that according to the result of the consumer survey (Evidence A No. 9), the figure portion of the instant registered trademark can be seen as not being recognized as a product display.

However, according to the statement in Gap evidence No. 9, 30% reply to the question whether the image of five products can be distinguished from what company products can be presented to the respondent, and 52.8% reply to the question that 52.8% cannot be separated. The distinctiveness of the mark is not required to be specifically recognizable as a product of a certain company, but can be recognized as a product mark of a certain group, and there is sufficient response to the answer that it is impossible to distinguish it as above. Further, it appears that the registered trademark (A) of this case and the plaintiff's trademark (D) can be distinguished from the appearance of the trademark (D) of this case, and 30% reply to the purport that 52.8% cannot be separated from the figure of the packaging. Accordingly, the plaintiff's assertion that the figure of the registered trademark of this case cannot be concluded as a product release.

A person shall be appointed.

D) The Plaintiff asserts that the figure and composition of the instant registered trademark are identical and similar diagrams are used as packaging designs of the same product, and thus, they have no or extremely weak distinctiveness of the instant registered trademark.

However, examining the following packing designs (No. 10 No. 10) asserted by the Plaintiff as similar to the composition and Matib, it is difficult to see that the registered trademark of this case and the shape of the figure are similar to the trademark of this case, except for the product packaging sites of Laaly Trade> and thus, it cannot be readily concluded that the Plaintiff lost or weak distinctiveness of the figure of the registered trademark of this case. Accordingly, the Plaintiff’s above assertion is without merit.

A person shall be appointed.

C. Sub-committee

In full view of the above, the registered trademark of this case does not fall under Article 6 (1) 7 of the former Trademark Act because it is difficult to regard it as a trademark which does not identify the source between its goods and another person's goods.

4. Determination as to whether Article 7(1)10 of the former Trademark Act falls under Article 7(1)10

A. Relevant legal principles

In the case of a well-known trademark under Article 7 (1) 10 of the former Trademark Act, even if the trademark itself is not a similar trademark, if it is deemed that the trademark is easily connected with another person's well-known trademark or goods or is closely related to another person's trademark or goods, etc. and causes misconception or confusion as to the origin of goods, the trademark cannot be registered (see, e.g., Supreme Court Decision 2001Hu2870, May 28, 2002). The term "known trademark" refers to not only the trademark is widely known to consumers, but also the trademark is widely known to the general public as well as the quality of goods using the trademark due to its quality of goods, and it is hard to indicate the main body of the trademark (see, e.g., Supreme Court Decision 2002Hu2563, Jul. 9, 2004); whether the trademark is well-known or not, based on social norms, such as the quantity of use of the goods or trade name used for business, the scope of goods or trade name, etc.

B. Review of the pre-use trademark recognition guidance

1) According to the overall purport of the pleadings, the following facts can be acknowledged in relation to the recognition of pre-use trademarks, according to the evidence Nos. 12 and 13 (including each number).

A) The pre-use trademarks are about the front package of “Hubter chips” products, which were sent on August 1, 2014 by neglect and stock companies.

B) Helter chips was developed with the view that the neglect chips and the 10 to 20 women, the major purchasing floor of capital chips, are good good, and they achieved sales KRW 5 billion in total for three months at the time of withdrawal by obtaining a large amount of machine through online and social network services (SNS) around the 10 to 20th age immediately after the release. On November 2014, 2014, cumulative sales KRW 13.6 billion and cumulative sales KRW 20 billion at the end of December 2014. On March 2015, the cumulative sales amount exceeded KRW 40.3 billion.

다) 이와 같이 허니버터칩이 큰 인기를 끌면서 2014. 10.경 씨유(CU), 세븐일레븐, 지에스(GS) 25 등 편의점 3사에서 모두 스낵류 판매량 1위를 차지하였고, 2014. 11.경에는 허니버터칩에 대한 수요 물량이 생산량을 넘어서서 돈이 있어도 못 먹는 과자로 언론에 보도되기도 하였다.

D) If the search period from January 1, 2014 to August 11, 2015, the search period of NAN searches “Hub chips”, the number of 110,10,103 items from NAB Round, 66,760 items from NAB Kack to NAV, 7,937 items from NAV news, 112,604 items from NAB NAN, 3,677 items from NAB NAN. The phrase “N” calls for “N where NAN chips are sold” during the same period. The phrase “N” is searched.

2) In light of the former status of the registered trademark as seen earlier and the sales period and scale of the attached products, it may be deemed that the pre-use trademark is a well-known trademark recognized as the trademark of a specific person with respect to the products using the trademark. However, considering the facts recognized earlier and the overall purport of the statement No. B. 24, the following circumstances, namely, the pre-use trademark started to be used from August 1, 2014, and its period of use falls short of eight months as of March 12, 2015, ② it is difficult to view that the pre-use trademark was considerably known to consumers as the source mark for a short period of eight months, and it is difficult to view the fact that the pre-use trademark was used as the trademark at least 20 days after the date of application for the trademark of this case, and ③ it is difficult to view the fact that the pre-use trademark was used as the mark indicating its source to the extent that it appears to have been widely known to consumers (see, e.g., Supreme Court Decision 2000Du100.

C. Sub-committee

Therefore, as long as the pre-use trademark cannot be seen as a well-known trademark, the registered trademark of this case does not fall under Article 7 (1) 10 of the former Trademark Act without considering the remaining points.

5. Determination as to whether Article 7(1)11 of the former Trademark Act is applicable

A. Relevant legal principles

In order to establish a concern for deceiving consumers as stipulated in Article 7 (1) 11 of the former Trademark Act, the pre-use trademark or its goods are not necessarily well-known, but at least it should be known to consumers or traders to the extent that it can be perceived as a trademark or goods of a specific person if they are used in domestic general trade. In such a case, if a trademark identical or similar to the pre-use trademark is used on the designated goods identical or similar to the above goods, it may cause general consumers to mislead or confuse the origin of the goods under the above provision (see Supreme Court Decision 95Hu262 delivered on September 26, 195). Meanwhile, in light of the above provision, if the pre-use trademark is used to prevent misconception or confusion between general consumers as to the origin of goods using the trademark recognized as a trademark of a specific person and to protect the trust of the goods using the pre-use trademark, it is not identical or similar to the pre-use trademark to the extent that it can be widely known among general consumers or traders, and it is not identical or similar to the pre-use trademark 97.

B. Whether the registered trademark of this case and the pre-use trademark mark are identical or similar

A person shall be appointed.

(i) the name and concept;

The phrase of both trademarks, “hymanmond” and “hyman chips” represent designated goods or goods as raw materials, and thus, they have no distinctive character. Thus, the similarity of both trademarks should be determined mainly on the similarity of the overall appearance of marks, including diagrams, rather than the similarity between names and concepts derived from the non-distinctive part. However, even when comparing the names and concepts derived from the text of both trademarks, the registered trademark of this case is “hymanmond” and the pre-use trademark is called “hyman chips” and thus, its title is different. The registered trademark of this case is concepted as “hyman chips including altered and butter.” On the other hand, the pre-use trademark is concepted as “hyp including altered and butter chips” and its concept differs in terms.

(ii) External appearance;

A) First, comparing the appearance of both trademarks, the instant registered trademark forms a pattern such as “,” on the basis of yellow color. The pre-use trademark combines the word “compact-to-compact” on the upper left side of the upper body with the word “calbee” in red color shape, wherein a considerable area on the upper left side, such as “,” and the word “calbee” in white shape. On the upper right side of the upper part, there is a difference between the word “Calbee” and the word “10% of the growth capital” in the painting shape.

B) Next, comparing the appearance of both trademarks’ interruptions, the instant registered trademark with the English “HOEY BUTER ALND” is indicated as the upper part of the trademark, such as “,” and there is a difference between the pre-use trademark and the English “HOEY BUTERCHIP” as “,” in that the pre-use trademark is indicated as the upper part of the trademark.

(C) Finally, comparing the appearance of both trademarks at the bottom, the instant registered trademark is based on the composition that the body body is melted on the surface of the body of the color with the shape of the burner, such as “the” and the shape of the two trademarks is combined with the structure that the body body flows out along with the burners. The left side of the registered trademark is combined with the part that the Montreal is accumulated before the cover. At the bottom of the upper side of the figure, the shape is changed with the shape that the bees flow out on the floor, and the shape of the bees, such as the shape and the chip, such as the children’s animation, and the shape of the bees, such as the chip, are altered with the appearance of the bees, and the shape of the bees, which is the largest size of the shape of the chip, and the remaining shape of the bees, are altered with the appearance of the bees, and the remaining shape of the bees, which is less than the size of the bees.

D) If so, both marks have common points in that they describe burners, altered, altered bees, etc. on the basis of yellow. However, it is difficult to view that the dominant impressions that the appearance of two trademarks is similar when observing the appearance in a emulious and separated manner based on the direct perception of ordinary consumers due to differences in the method of expression as seen earlier.

C. Sub-committee

Therefore, insofar as the registered trademark of this case and the mark of the pre-use trademark are not identical or similar, the registered trademark of this case does not fall under Article 7 (1) 11 of the former Trademark Act without considering the remaining points.

6. Conclusion

Therefore, the plaintiff's assertion on the invalidation of the trademark of this case is without merit, and the decision of this case, which is identical with this conclusion, is legitimate. Therefore, the plaintiff's claim seeking the revocation of the decision of this case is dismissed as it is without merit. It is so decided as per

Judges Lee Jong-young (Presiding Judge)