2017Hu2178. Revocation of registration (or award)

Plaintiff

Attorney Park Jong-hwan et al., Counsel for the plaintiff-appellant

Defendant:

Law Firm Hannnn, Counsel for the plaintiff-appellant

[Defendant-Appellee] Plaintiff 1 and 4 others

Patent Court Decision 2017Heo2628 Decided August 24, 2017

February 13, 2020

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

The grounds of appeal are examined.

1. Regarding ground of appeal No. 1

A. Article 73(1)8 of the former Trademark Act (amended by Act No. 14033, Feb. 29, 2016; hereinafter the same) provides that trademark registration may be revoked in cases where an exclusive or non-exclusive licensee (hereinafter referred to as “user”) misleads consumers as to the quality of goods or makes them confused with goods related to another person’s business by using the registered trademark or similar trademark on the designated goods or similar goods. The purport of the provision is to promote safety in the transaction of goods by imposing a supervisory duty on the licensee instead of allowing a trademark right holder to freely grant a right to use the trademark, thereby regulating that the licensee does not use the registered trademark beyond the scope of the right to use the trademark beyond the scope of the right to use the trademark against the original purpose of the trademark system (see, e.g., Supreme Court Decision 2009Hu329, Apr. 15, 2010).

Pursuant to Article 73(1)8 of the former Trademark Act, in determining whether confusion exists between a trademark actually used by a licensee (hereinafter referred to as "actually used trademark") and another person's trademark (hereinafter referred to as "subject trademark"), the appearance, name, and concept of each trademark shall be objectively and comprehensively observed. However, in light of the degree of transformation of a trademark from a registered trademark and degree similar to the subject trademark, specific types of the trademark used for actual inspection, relationship between the trademark and the subject trademark, period of use of each trademark, degree of common consumers known, etc., whether there is objective concern that confusion may occur between the goods of the subject trademark and the goods of the subject trademark (see Supreme Court Decisions 2012Hu227, Oct. 11, 2012; 2013Hu1314, Oct. 15, 2015).

In light of the scope within which a trademark right holder may exercise the right of prohibition (Articles 66(1)1 and 65(1) of the former Trademark Act) and the principle that the scope of exclusive use of a trademark should be distinguished (Article 50 of the former Trademark Act), whether the aforementioned circumstances should be determined to the extent that it can be evaluated as unlawful use of the registered trademark under the social norms by carefully examining the aforementioned circumstances among the registered trademark, the actual use trademark, and the subject trademark.

B. According to the reasoning of the lower judgment and the evidence admitted by the lower court, the Nonparty established on February 24, 2006 Honghae F&D Co., Ltd. (hereinafter “red Honghae F&D”), and Honghae F&D manufactured and sold the subject trademarks (used and sold laver).

2) The registered trademark of this case (designated goods are classified into category 29, namely, ' Kim, U.S., protruding, and protruding,’ and the trademark rights of this case were originally owned by another person, but the Nonparty completed the registration of transfer on August 29, 2012. In addition, on July 25, 2012, the Nonparty filed the instant application for the registration of the designated service business under the "Sales Agency Business, Business of Sale Agency Business, Business of Malaver Sale Mediation, and Business of Malaver Sale Mediation, etc., which was conducted on July 25, 2013, and completed the registration on July 25, 2013. 3) The Defendant purchased the instant registered trademark in the realization procedure conducted pursuant to the Incheon District Court's order for seizure of trademark rights (2011TTTTT 3281) and allowed the use of the instant registered trademark to the instant corporation and P. P. P.D.

4) The above companies (hereinafter referred to as "users of the registered trademark of this case") have used the same package as the previous emblem of "third party", and have been used in goods, such as "laver, laver, laver, and laver," which added "B" to the registered trademark of this case since July 2014.

5) Even though the Defendant acquired the instant registered trademark on September 23, 2013, the third party, a licensee, stated in the column, etc. of “the company history” on the website, “the commencement of sale of the third party in the year 1980, which was prior to the incorporation of the non-party company,” “the commencement of sale of the third party,” and “the establishment of the red sea food, which is the telegraph of Honghae F&D,” in 190. The third party, a licensee, used the red sea F&D’s character on its website until the date of closing the argument in the lower court.

C. We examine these circumstances in light of the legal principles as seen earlier.

After the trademark right of the instant registered trademark was transferred to the Defendant, the user of the instant registered trademark used the instant registered trademark, without using the instant registered trademark as it was, and instead using the trademarks identical to the marks used by Honghae F&D. The trademarks and goods used (laver, laver, laver), which were modified, are identical and similar to the marks and designated services (laver sales agency, sales brokerage, etc.) of the instant similar service marks owned by the Nonparty, in comparison with the marks and designated services (laver sales agency, laver sales brokerage, etc.) of the instant similar service marks owned by the Nonparty, and there is a high possibility for consumers to have the recognition that they are identical with or succeeded to the said business.

Therefore, there is room to view that the specific usage attitude of the licensee of the trademark of this case using the trademarks in actual use exceeds the scope of confusion that may normally arise due to the identity or similarity of the trademark and the designated goods itself in relation to the subject trademarks of Hong Sea F&D, and it can be evaluated as an illegal use of the trademark under social norms.

D. Nevertheless, the court below did not properly deliberate and decide on the above circumstances, and where trademark rights are transferred, it is anticipated that the confusion between the trademark rights holder and the previous trademark rights holder may occur as to the source from the beginning, and thus, it is unlawful to use the trademark even if the confusion between the source is caused

For reasons that the trademark right of the instant registered trademark cannot be seen as being transferred by the Defendant to which the right of use was transferred, determined to the effect that the use of the trademark in actual use by the licensee of the instant registered trademark does not constitute Article 73(1) Subparagraph 8 of the former Trademark Act. In so determining, the lower court erred by misapprehending the legal doctrine on the unlawful use by the licensee under Article 73(1) Subparagraph 8 of the former Trademark Act, thereby adversely affecting the conclusion of the judgment. The ground of appeal assigning this error is with merit.

A. The subject trademark under Article 73(1)8 of the former Trademark Act is required to be known at least to the extent that it is recognizable to consumers or traders in the Republic of Korea as a trademark or goods of a specific person (see, e.g., Supreme Court en banc Decision 2012Hu1521, Dec. 26, 2013). However, where a trademark is transferred, it shall be included in “where consumers mislead consumers as to the quality of goods or make them confused with goods related to another person’s business” and “the subject trademark” does not specifically limit the scope of “the subject trademark”. Thus, the subject trademark may be considered as a trademark subject to confusion even if it falls within the scope of the right of the relevant registered trademark or is not a registered trademark under the Trademark Act (see, e.g., Supreme Court Decision 2002Hu1225, Jun. 16, 2005).

B. We examine the above circumstances in light of the aforementioned legal doctrine.

The licensee of the instant registered trademark and Honghae F&D, the user of the subject trademark, are juristic persons with separate legal personality. If there exists objective concerns that consumers might mislead the quality of the subject trademark or confuse the source of goods between the subject trademark and the goods of the subject trademark by using the subject trademark actually used, it is necessary to prevent these acts in order to protect consumers’ interests, etc. Accordingly, the subject trademarks of Honghae F&D shall be deemed to fall under another person’s trademark as stipulated in Article 73(1)8 of the former Trademark Act. The circumstance that the subject trademark falls under the scope of the right of the instant registered trademark, or Honghae F&D, the user of the subject trademark, was permitted by the Nonparty, the previous owner of the trademark, to use the instant registered trademark, does not affect such conclusion.

C. Nevertheless, the lower court determined that the use of the trademark in actual use by the licensee of the instant registered trademark cannot be deemed as falling under Article 73(1)8 of the former Trademark Act on the ground that the “other person” under the above provision does not include F&D in Hong Sea, the user of the subject trademark. In so determining, the lower court erred by misapprehending the legal doctrine on other person under Article 73(1)8 of the former Trademark Act, thereby adversely affecting the conclusion of the judgment. The allegation in the grounds of appeal assigning this error is with merit.

3. Conclusion

Therefore, without examining 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 Jo Hee-de

Justices Kim Jae-hyung

Justices Min You-sook

Justices Lee Dong-won