[1] Where a trial decision was rendered in a trademark-related right confirmation procedure, the grounds for a lawsuit seeking revocation of a trial decision and the standard for determining the benefit of the lawsuit

[2] In a case where Company A filed a trial to confirm the scope of a trademark right against Company B and dismissed the claim, but thereafter, Company B rendered a favorable judgment against Company A in the civil procedure, such as the prohibition of trademark infringement of the registered trademark, which was brought against Company A, the case holding that there is still a benefit in the lawsuit seeking the revocation of the said trial decision which remains effective in the Company A

[1] Where a trial decision on the confirmation of the scope of a trademark right becomes final and conclusive, even if the trial decision cannot bind the court in charge of civil and criminal infringement litigation, Article 75 of the Trademark Act provides that "the owner of a trademark right, the exclusive licensee, or the interested person may request a trial to confirm the scope of the right of the registered trademark," and Article 186 (2) of the Patent Act applied mutatis mutandis pursuant to Article 86 (2) of the Trademark Act provides that "an action against a trial decision may be brought only against the party, the intervenor, or the person against whom the request for intervention in the trial or retrial was rejected." Thus, inasmuch as a trial decision against a trial decision unfavorable to the trial decision on the confirmation of the scope of a scope of a trademark right becomes final and conclusive, seeking the revocation of the trial decision is based on the above provisions of the Trademark Act, and there is a benefit in litigation to seek the revocation of a trial decision, unless there are special circumstances where the legal interest to revoke the trial decision becomes extinct due to the circumstances after the trial decision becomes void or the

[2] In a case where Company A filed a trial to confirm the scope of a trademark right against Company B, but the Intellectual Property Tribunal rendered a trial to dismiss the claim for the reason that the challenged mark falls under the scope of the right of the registered trademark, and thereafter, Company B was judged in favor of Company A in the civil procedure brought by Company B in relation to the infringement of the trademark right of the said registered trademark, and the above civil judgment became final and conclusive while the lawsuit to revoke the trial decision was pending in the court of final appeal, the case holding that the above civil judgment, which became final and conclusive, has a legal interest to revoke the above trial decision unfavorable to Company A, notwithstanding the fact that the above civil judgment was final and conclusive, and there is no other legal interest to seek the revocation of the trial decision after the above decision, on the grounds that the trademark right of the said registered trademark was extinguished after the above decision or an interest relationship was extinguished by an agreement between the

[1] Articles 75 and 86(2) of the Trademark Act, Article 186(2) of the Patent Act, Article 12 of the Administrative Litigation Act / [2] Articles 75 and 86(2) of the Trademark Act, Article 186(2) of the Patent Act, Article 12 of the Administrative Litigation Act

[1] Supreme Court Decision 2007Hu3318 Decided May 28, 2009, Supreme Court Decision 2007Hu3325 Decided May 28, 2009

KNB Co., Ltd. (Attorney Hwang Young-ju et al., Counsel for the plaintiff-appellant)

Delim Co., Ltd. (LLC, Kim & Lee LLC, Attorneys Kang Yong-tae et al., Counsel for the defendant-appellant)

Patent Court Decision 2008Heo6406 Decided October 10, 2008

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

The grounds of appeal are examined (to the extent of supplement in case of supplemental appellate briefs not timely filed).

Where a trial decision to confirm the scope of a trademark becomes final and conclusive, Article 75 of the Trademark Act does not bind the court in charge of an infringement litigation, such as civil and criminal cases, even if the trial decision does not bind the court, Article 75 of the Trademark Act provides that "an owner of a trademark right, an exclusive licensee, or an interested person may request a trial to confirm the scope of the right of the registered trademark," and Article 186 (2) of the Patent Act which applies mutatis mutandis under Article 86 (2) of the Trademark Act provides that "an action against a trial decision may be brought only by the party, intervenor, or a person who has applied for intervention in the trial but has rejected the request." Thus, inasmuch as a trial decision against a trial decision unfavorable to the trial decision in the procedure to confirm the scope of a right is based on the provisions of the Trademark Act, seeking the revocation of a trial decision, barring any special circumstances where legal interest to cancel the trial decision becomes extinct after the trial decision becomes final and conclusive (see Supreme Court Decision 2009Hu325, May 28, 2009).

In light of the above legal principles and the records, although the plaintiff filed a trial to confirm the scope of passive right of this case against the defendant on March 21, 2007, the Korean Intellectual Property Tribunal rendered a trial decision to dismiss the claim on April 28, 2008 on the grounds that the mark subject to confirmation falls under the scope of the right of the registered trademark (registration number: No. 52414). Although the defendant filed a civil lawsuit on July 11, 2006 related to the infringement of trademark of this case on the registered trademark of this case, the plaintiff was sentenced to the judgment in favor of the plaintiff on July 25, 2008. In the process, the decision of this case was made first and the civil judgment of this case became final and conclusive on May 13, 2010 while the lawsuit to revoke the decision of this case became final and conclusive, the above civil judgment of this case still becomes invalid against the plaintiff, despite the legal interest of the parties to this case, and the plaintiff did not have any legal interest in the cancellation of the decision of this case after the decision of this case.

Nevertheless, the court below held that a lawsuit seeking confirmation of the scope of trademark right is not a benefit of confirmation in the case where there is a benefit of confirmation or a benefit of lawsuit in the case where there is a benefit of confirmation prior to the judgment of a lawsuit on the same subject matter, such as a claim for prohibition of infringement or a claim for damages, which is the most effective and appropriate means of dispute resolution, in relation to the specific subject matter of confirmation which a claimant has the effect of trademark right in relation to the trademark subject to adjudication. In order to confirm the scope of right, the court below erred in the misapprehension of legal principles as to the benefit of lawsuit seeking cancellation of a trial decision, which affected the conclusion of the judgment. The ground of appeal pointing this out

Therefore, the judgment of the court below is reversed, and the case is remanded to the court below for a new trial and determination. It is so decided as per Disposition by the assent of all participating Justices.

Justices Shin Young-chul (Presiding Justice)