In a case where the Korean Intellectual Property Office clearly stated that the grounds for rejection that the applicant cannot obtain a registration because the trademark is similar to the registered trademark 1 and 2, and made a decision of rejection on the ground that the applicant cannot obtain a registration because the applicant is similar to the registered trademark 3, and the applicant filed a request for a trial on objection, and the Korean Intellectual Property Tribunal determined that the above applied trademark should be rejected pursuant to Article 7 (1) 7 of the Trademark Act on the ground that the aforementioned decision of rejection was not the grounds for rejection, the case holding that the above decision of rejection was erroneous in the procedure.

In a case where the Korean Intellectual Property Office clearly stated that the grounds for rejection that the applicant cannot obtain registration because it is similar to the prior registered trademark 1 and 2, and the applicant filed a petition for a trial on objection on the grounds that the trademark cannot obtain registration because it is similar to the prior registered trademark 3, and the Korean Intellectual Property Tribunal should refuse the registration pursuant to Article 7(1)7 of the Trademark Act on the ground that the prior registered trademark 1 and 2 should be rejected, the case held that even if the applicant notified that the prior registered trademark 1 and 2 had the grounds for rejection, the above grounds for rejection are "other grounds for rejection" in a trial on the decision of rejection, and the Commissioner of the Korean Intellectual Property Office should give prior notice of the grounds for rejection and give prior notice of the applicant the opportunity to submit a written opinion on the grounds that the decision of rejection falls under the grounds for rejection, which are different from the grounds for rejection of the decision of rejection, and thus does not comply with the above procedure.

Articles 7(1)7 and 23(2) of the Trademark Act

Namyang Industrial Co., Ltd. (Patent Attorney Park Byung-chul, Counsel for the defendant-appellant)

The Commissioner of the Korean Intellectual Property Office

March 5, 2010

1. The decision made by the Intellectual Property Tribunal on November 30, 2009 on the case No. 2007 Won 11678 shall be revoked.

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

The same shall apply to the order.

1. Basic facts

A. The background of the application and the trial decision of this case

(1) On December 7, 2006, the Plaintiff filed an application for trademark "(application number: No. 40-2006-62135) with the mark " "" as the designated goods (hereinafter "application trademark of this case"), and on May 31, 2007, the Korean Intellectual Property Office notified the applicant of the grounds for rejection on the ground that "the trademark of this case is similar to the prior registered trademark under Article 7 (1) 7 of the Trademark Act, and thus, it cannot be registered pursuant to Article 7 (1) 7 of the Trademark Act, in relation to all the designated goods as follows."

(2) On August 30, 2007, the Plaintiff notified the above grounds for rejection, presented a written opinion to the effect that “The trademark of this case is not similar to the trademark 1 and 2, and the designated goods are not similar to those of the pre-registered trademark 3, so they must be registered.” On October 16, 2007, the Korean Intellectual Property Office rendered a decision of refusal (hereinafter “instant decision of refusal”) on the ground that “No part of the grounds for rejection as of May 31, 2007, was removed, but the trademark of this case was still similar not only to the pre-registered trademark 3 and its designated goods, but also similar to the designated goods.”

(3) On November 13, 2007, the Plaintiff filed a petition for a trial against the aforementioned decision of rejection on the ground that “the original decision rejecting the trademark registration on the ground that the trademark applied in this case is similar to the prior registered trademark 3 is unlawful.” The Korean Intellectual Property Tribunal deliberated on the above case of request for a trial by 2007 Won11678, and decided November 30, 2009, on the ground that “the trademark applied in this case is similar to the trademark 1, 2, and the mark and the designated goods, so it cannot be registered under Article 7(1)7 of the Trademark Act.”

(b) Preregistered trademarks;

(i) the Prior Registered Trademark 1

(A) Marks:

(B) Date of application/registration date/Renewal/Renewal registration date/registration number: October 26, 1990; January 18, 1992/ September 18, 2002/No. 231315

(C) Designated goods: (1) “Grain seeds and eggs” in Category 31 of the Product Classification;

2. “Aapap from alkro” in the category of products.

(D) Right holder: Namyang corporation

(ii) the Prior Registered Trademark 2

(A) Marks:

(B) Date of application/registration date/registration number: November 11, 1998/ November 29, 1999/ No. 45964 of November 29, 199

(C) Designated goods: (1) “The amount of alkyl, alk’s, 32 of the classification of goods.”

② At the time of registration, the registration was revoked on July 30, 2009, “the amount of fruits, raw water, optical spring water, crypium for drinking water, artificial luminous spring water, and sypum for drinking water” which was part of the designated goods.

(D) Right holder: Namyang corporation

(iii) Priorly registered trademark 3

(A) Marks:

(B) Date of application/registration date/registration number: January 11, 2005/3, 2006/3 March 11, 2006/64603

(다) 지정상품 : ① 상품류 구분 제31류의 ‘가금, 갈치, 게, 고등어, 전복, 조기, 다시마, 미역, 클로렐라, 톳, 파래, 해태, 장식용 건조식물, 누에, 누에분말’

② “Acap from Alkro, Alk-ro, grain seeds, fireworks root, agricultural products, plant seeds, plant seeds, plant seeds, plant seeds, plant seeds, plant seeds, seedlings, plants, flowerss, flowerss, and mixed-commercial flowerss, which were part of the designated goods at the time of registration, became null and void on November 6, 2008 and July 15, 2009.”

(D) Right holder: Namyang corporation

[Reasons for Recognition] Evidence Nos. 1 through 10, the purport of the whole pleadings

2. Whether the trial decision of this case is legitimate

The plaintiff asserted that the decision of this case supporting the decision of rejection of this case on the ground that the decision of rejection of this case was rejected in the decision of rejection of this case on the ground of 1 and 2 of the pre-registered trademark, and that the decision of this case, which judged differently from the trademark 1, 2 of the pre-registered trademark, is unlawful. Thus, it is examined first as to whether the decision of this case contains procedural errors to the extent that the decision of rejection of this case is revoked.

A. Criteria for judgment

According to Article 23(2) of the Trademark Act, when an examiner intends to decide to reject a trademark registration, he/she shall notify the applicant of the grounds for rejection and give him/her an opportunity to submit a written opinion within a specified period. According to Article 81(1) and (3) of the same Act, where he/she discovers the grounds for rejection and other grounds for rejection in a trial against a decision to reject a trademark registration, the above provision shall apply mutatis mutandis. Since these provisions are so-called compulsory provisions due to the public interest demand to ensure the appropriateness of the trial and not secure the credit of the trial system, in a trial against the decision to reject a trademark registration, if the examiner did not give the applicant an opportunity to submit a written opinion on the ground of other new grounds for rejection (see Supreme Court Decision 98Hu300, Nov. 12, 199).

B. Determination

According to the above facts, the Korean Intellectual Property Office submitted the Plaintiff’s written opinion on August 30, 2007, and made it clear that the grounds for rejection that the trademark of this case cannot be registered because it is similar to the trademark 1 and 2, became void, and the trademark of this case cannot be registered because it is similar to the registered trademark 3, but the decision of this case was rendered on the ground that the trademark of this case cannot be registered because it is similar to the registered trademark 1 and 2, but the decision of this case was rendered on the ground that the trademark of this case should be rejected pursuant to Article 7(1)7 of the Trademark Act.

Although the pre-registered trademark 1 and 2 notified that there was a ground for rejection in the instant application trademark, if the aforementioned ground for rejection was not the ground for rejection in the instant decision of rejection, it constitutes “the ground for rejection and other grounds for rejection” in a trial proceeding against the decision of rejection. Thus, in order for the Defendant to lawful the instant decision of rejection on the ground that it constitutes the ground for rejection and other grounds for rejection, the Defendant must notify the Plaintiff, the applicant, before the instant decision of rejection, and give the Plaintiff an opportunity to submit a written opinion within a prescribed period of time (the Defendant also recognized that the Plaintiff did not have an opportunity to submit a written opinion in the trial). Accordingly, the instant decision of rejection was erroneous in the course of procedure.

3. Conclusion

Therefore, the plaintiff's claim seeking the revocation of the trial decision of this case is reasonable, and it is so decided as per Disposition with the assent of all participating Justices.

Judges Kim Yong-con (Presiding Judge) and Kim Jong-il (Presiding Judge)