[1] Where an adjudication on cancellation of registration of a trademark is requested on the ground of non-use of a trademark under Article 73(1)3 of the Trademark Act, whether the registered trademark is used within three years before the date of request for adjudication (=the person who bears the burden of proving the existence of the registered trademark) and the exclusive or non-exclusive licensee's use of the designated goods (affirmative)

[2] The meaning and scope of "where the registered trademark is used for the designated goods" under Article 73 (1) 3 of the Trademark Act

[3] The case holding that where the registered trademark is a mark which combines English and Korean with the English name, the part of English and Korean as well as the part of Korean constitutes the main part respectively

[4] The case holding that since the trademark 1, 2, 3 "," "," and " " cannot be deemed as a trademark within the scope identical with the registered trademark, the registered trademark cannot be deemed as a trademark within the scope of identical with the registered trademark, which is a trademark holder, an exclusive licensee, or a non-exclusive licensee, whose main parts of the registered trademark "," or only the Korean language portion, which are the main parts of the registered trademark "," are different letters and used in different characters, the registered trademark cannot be deemed as being used domestically

[1] Where an adjudication on cancellation of a trademark on the ground of non-use of a trademark under Article 73 (1) 3 of the Trademark Act is requested, the respondent, under paragraph (4) of the same Article, shall not be exempted from the cancellation of the registered trademark on the designated goods related to the revocation request, unless he proves that the respondent has properly used the registered trademark in Korea within three years before the date of request for adjudication, and the trademark holder shall be responsible to prove that he has used the registered trademark within three years before the date of request for adjudication on cancellation, and the use thereof shall include not only by the trademark holder but also by the exclusive or non-exclusive licensee.

[2] The term "use of the registered trademark for the designated goods" means the use of the trademark identical to the registered trademark, and the term "the same trademark" includes not only the registered trademark itself but also the trademark in a form that can be deemed identical to the registered trademark under the transactional social norms, but also includes the use of a similar trademark, and the use thereof includes not only the use of the registered trademark but also the use of a trademark by modifying it to the extent that it does not harm the identity of

[3] The case holding that where the registered trademark is a mark in which English and Korean are combined, barring special circumstances, such as one part is marked in a remarkably small letter compared to other parts, the part in English and Korean shall be deemed respectively the main part

[4] The case holding that since trademark 1, 2, 3 "," "," and " " cannot be deemed as a trademark within the scope identical with the registered trademark, the registered trademark cannot be deemed as a trademark within the scope of identical with the registered trademark, the registered trademark cannot be deemed as having been used domestically by the trademark right holder, exclusive licensee, or non-exclusive licensee for at least one of the designated goods within three years before the date a request for revocation of registration is filed

[1] Article 73 (1) 3 and (4) of the Trademark Act / [2] Article 73 (1) 3 of the Trademark Act / [3] Article 73 (1) 3 of the Trademark Act / [4] Article 73 (1) 3 and (4) of the Trademark Act

[2] Supreme Court Decision 2004Hu622 Decided September 29, 2005 (Gong2005Ha, 1725) Supreme Court Decision 2005Hu1905 Decided June 14, 2007 / [3] Supreme Court Decision 2003Hu1437 Decided August 20, 2004 (Gong2004Ha, 1610)/ [4] Supreme Court Decision 2001Hu2542 Decided September 27, 2002 (Gong2003Hu1437 Decided August 20, 204)

Plaintiff (Patent Attorney Song-han, et al., Counsel for plaintiff-appellant)

Defendant (Patent Attorney Man-ho et al., Counsel for the defendant-appellant)

March 27, 2009

1. The decision made by the Intellectual Property Tribunal on November 5, 2008 on the case No. 2007Da3189 is revoked.

2. The costs of the lawsuit are assessed against the defendant.

The same shall apply to the order.

1. Basic facts

[Reasons for Recognition] Unsatisfy, Gap evidence Nos. 1 and 2, the purport of the whole pleadings

A. Defendant’s registered trademark

(1) Date of application / Date of registration / Number of registrations: January 14, 1999 / November 24, 1999 / No. 459323, Feb3, 199

(2) Composition:

(3) Designated goods: Dribrushes, lockings, brushes, non-dive metal mats, mercurys, boos, woos, woos, woos, woos, boos, bridges, bridges, water brus (category 21 of the product classification), and the Defendant’s registered trademark (hereinafter “instant registered trademark”).

(b) Those actually used;

(a) Actually used trademark 1: (Color trademark)

(b) Practically used trademark 2: (Color trademark)

(c) Practically used trademark 3: (Color trademark)

C. Details of the instant trial decision

On November 16, 2007, the Plaintiff filed an appeal for invalidation of the registration by asserting that the registered trademark of this case falls under Article 73(1)2 and 3 of the Trademark Act, and that the registration is null and void. On November 5, 2008, the Intellectual Property Trial and Appeal Board dismissed the Plaintiff’s appeal on the ground that the registered trademark of this case does not fall under it.

2. Whether the registered trademark of this case falls under Article 73 (1) 3 of the Trademark Act

(a) Legal doctrine;

Where an adjudication on cancellation of a trademark on the ground of non-use of a trademark under Article 73 (1) 3 of the Trademark Act is requested, unless the respondent who is a trademark right holder proves under Article 73 (4) that not only one of the designated goods related to a request for cancellation of the trademark is properly used in the Republic of Korea within three years before the date of the request for adjudication, the cancellation of the registered trademark relating to the designated goods related to a request for cancellation is not exempted. Thus, the defendant is responsible to prove that he used the registered trademark of this case within three years before the date of the request for cancellation of the trademark, and the use thereof includes not only by the trademark right holder but

On the other hand, the term "use of the registered trademark for the designated goods" means the use of the trademark identical to the registered trademark, and the term "the same trademark" includes not only the registered trademark itself but also the trademark that can be deemed identical to the registered trademark in terms of trade social norms, but also includes the use of a similar trademark, but also includes the use of the registered trademark by modifying it to the extent that it does not harm the identity of the trademark as a distinctive mark in light of trade norms (see Supreme Court Decision 2004Hu622, Sept. 29, 2005).

(b) Markets:

(1) The fact that the non-exclusive licensee of the instant registered trademark has used the trademarks 1, 2, and 3 as designated goods of the instant registered trademark within three years before the date on which the instant request for revocation of registration was filed is not a dispute between the parties.

The instant registered trademark consists of two parts of ordinary letters such as “FODYS” and “complication” in Korean. As can be seen, in the event that the trademark is a mark in which English and Korean characters are combined, barring special circumstances, such as one part is marked in a conspicuous small language compared to other parts, the English and Korean characters are respectively the main parts of the registered trademark (see Supreme Court Decision 2003Hu1437, Aug. 20, 2004).

In light of the above legal principles, the trademarks 1, 2, 1, and 2, which are composed of different letters, only the main parts of each of the instant registered trademarks, or the parts of the Korean language, are identical to the marks of the instant registered trademark, which are composed of English and Korean together with the upper and lower parts.

Next, the trademark 3 in real use is a mark consisting of changing letters into the Korean language part, changing the remainder, excluding the first letter, into printed letters, and changing not only the part, but also the part, “Y” into “i”, and the entire mark has a three-dimensional sense.

As can be seen, changing letters into letters and making marks have three-dimensional dimensionals with the registered trademark of this case is not likely to undermine the consistency with the registered trademark of this case. Of that, changing the part “Y” to “i” does not have any difference in its appearance, and as a result, the Korean language “Y” is combined with the two. However, if the part, which constitutes the main part of the English text, is changed to the printed body, and the remaining part except the first letter, is changed to the printed body, it cannot be said that there is a significant difference in its overall appearance, and thus, it goes beyond the scope of its identity.

(2) In addition to the trademarks 1, 2, and 3 in actual use, the Defendant asserted that he properly used the marks in the same form as the instant registered trademark (the marks indicated on the photograph pictures No. 9 No. H1, H2, and No. 12-2 of the evidence No. 12-2 among the photographs No. 9 (hereinafter “actually used trademarks 4”) within three years prior to the filing date of the request for a trial, and submitted the evidence No. 9, No. 12-1, 2, 3, etc. as evidence.

However, No. 12-1, 2, and 3 of the evidence No. 12-12 were printed out on the Internet homepage of Korea Hudis Co., Ltd., a non-exclusive licensee of the trademark of this case. They were not submitted in the instant trial proceeding, and they were first submitted in the instant litigation proceeding, and it is difficult to believe that such pictures were posted on the date indicated in each film. The remaining evidence submitted by the Defendant alone is insufficient to recognize the fact that trademark 4 was used within three years prior to the date of the instant request for a trial.

(3) Therefore, the registered trademark of this case constitutes a case where a trademark right holder, an exclusive licensee, or a non-exclusive licensee fails to prove that at least one of the designated goods was used in Korea within three years before the date a request for cancellation of registration of this case was filed.

3. Conclusion

Therefore, without determining the remainder of the plaintiff's remaining arguments, the registered trademark of this case cannot be exempted from its revocation, and since the decision of this case with different conclusions is inappropriate, the plaintiff's claim seeking its revocation is justified and it is so decided as per Disposition.

Judges Noh Tae (Presiding Judge)