Plaintiff (Patent Attorney Kim Jung-soo, Counsel for the plaintiff-appellant)

A. Shakia Shama (Patent & Law Firm Ayang-U.S. Patent Attorney Kim-Hy, Counsel for the plaintiff-appellant)

December 23, 2009

1. Of the decision rendered by the Intellectual Property Tribunal on March 16, 2009 regarding the case No. 2008Ma2416, the part on the designated goods of the trademark No. 69172, among the registered goods of the trademark No. 69172, the part on the "golization, farming, golization, lusation, lusation, lusation, camping, ging, sports conversion, physical lighting, gratization, gratization, handballing, riding ground, riding ground, riding ground, riding ground, swimminger, swimming, swimming, swimming, swimming, sports pans, grat, grat, string, and galking for sports."

2. The plaintiff's remaining claims are dismissed.

3. Of the litigation costs, 80% is borne by the Defendant, and the remainder by the Plaintiff, respectively.

The decision made by the Intellectual Property Tribunal on March 16, 2009 by the Korean Intellectual Property Tribunal on the case No. 2416 shall be revoked.

1. Basic facts

(a) Details of the trial decision;

On August 14, 2008, the defendant filed a petition against the plaintiff for a registration invalidation trial on the registered trademark of this case as stated below with the Intellectual Property Tribunal.

After the Intellectual Property Trial and Appeal Board reviewed the above case on the ground that the registered trademark of this case falls under Article 7 (1) 12 of the Trademark Act (amended by Act No. 8190, Jan. 3, 2007; hereinafter the same) and its registration should be invalidated in relation to the comparable trademark of this case as follows.

B. The registered trademark of this case

(1) Date of application / Date of registration / Number of registration: August 4, 2005 / December 29, 2006 / No. 6917222

(2) Marks:

(3) 지정상품 : 상품류 구분 제25류의 “가죽신, 고무신, 고무장화덧신, 골프화, 구둣창, 나막신, 낚시용화(화), 농구화, 단화, 뒷축(Heels), 등산화, 럭비화, 레이스부츠, 목욕용 샌달, 목욕용 슬리퍼, 반부츠, 방한화, 복싱화, 부츠, 비닐화, 비치슈즈, 샌달, 스키화, 슬리퍼, 신발깔창, 신발안창, 신발용 갑피, 신발용 뒷굽, 신발용미끄럼방지구, 신발용 앞굽, 신발용 철제장식, 야구화, 운동화, 에스파토신발 또는 샌달, 오버슈즈, 우화, 육상경기용화, 작업화, 장화, 짚신, 체조화, 축구화, 편상화, 하키화, 핸드볼화, 승마바지, 승마화, 가면무도회복, 교복, 레인코트, 롱코트, 리버리(Liveries), 망토, 반바지, 반코트, 블루존(Blouson), 사리(Saris), 사파리, 슈트, 스목(Smocks), 스커트, 슬랙스(Slacks), 신사복, 아노락(Anorak - 운동용은 제외한다), 아동복, 양복바지, 예복, 오버롤(Overall), 오버코트, 원피스, 유아복, 이브닝드레스, 자켓, 작업복, 잠바, 종이옷, 채저블(Chasuables), 청바지, 케이프(Cape), 콤비, 탑코트, 턱시도(Tuxedo), 토가(Togas), 투피스, 튜닉(Tunic), 파카(Parkas), 펠리스(Pelisses), 프록(Frocks), 동정, 두루마기, 마고자, 배자, 저고리, 한복바지, 한복속옷, 한복치마, 거들, 나이트가운, 남방셔츠, 네글리제, 드레싱가운, 롬퍼즈, 리어타드, 만틸라(Mantillas), 목욕가운, 바디스, 보디셔츠, 브레지어, 블라우스, 샤워캡, 셔츠요크, 셔츠프런트, 속내의, 속바지, 속셔츠, 속팬티, 수영모자, 수영복, 수영팬츠, 슈미젯(Chemisettes), 슈미즈, 스웨터, 스웨트셔츠, 스웨트팬츠, 스포츠셔츠, 슬립, 와이셔츠, 운동용 유니폼, 유니타드, 의류용칼라, 잠옷, 저지(Jerseys), 조끼, 카디건, 칼라보호대(Collarprotectors), 칼라커프스, 케미솔(Camisoles), 코르셋, 코슬렛(Corselets), 콤비네이션내의, 탱크탑, 테디(Teddies), 트랙슈트, 파자마, 팬티스타킹, 페티코트(Petticoats), 폴로셔츠, 풀오버(Pullover), T셔츠, 각반(각반), 넥타이, 땀흡수스타킹, 래그워머, 레깅스(Leggings), 머프(Muffs), 목도리, 반다나(Bandana), 방한용 귀마개, 방한용 장갑, 버선, 버선커버, 벙어리장갑, 베일, 보아(Boas), 비전기식 보온용 발싸개, 숄, 숄더랩(Shoulder wraps), 수녀용 머리수건, 수대(수대), 스카프, 스타킹, 스타킹뒷꿈치를 덧댄 부분, 스톨(Stoles), 양말, 양말커버, 양복장식용 손수건(Pocket squares), 에스콧타이(Ascots), 에이프런, 운동용 스타킹, 유아용 직물제기저귀, 의류용 호주머니, 타이츠(Tights), 퍼러린(Pelerines), 관(관), 나이트캡, 남바위, 망건, 모자, 모자챙(Sun visors), 베레모, 사교관(사교관), 의류용 후드, 터번, 톱햇(Top hat), 방수피복, 가터(Garters), 대님, 스타킹서스펜더, 양말서스펜더, 의류용 멜빵, 혁대”

(c) A comparable trademark;

(1) Marks: (A mark subject to a non-intersection 1); (2) a trademark subject to a non-intersection 2; (3) a trademark subject to a non-intersection 3;

(b) Goods using: table racks, table racks, table racks, table racks, table racks, table racks, table racks, sports racks, bags, shoess and shoess;

(c) Area of use: Japan;

(d) Users: Defendant;

[Grounds for Recognition] No dispute

2. Issues;

The key issue of the instant case is whether the instant registered trademark falls under Article 7(1)12 of the Trademark Act in relation to the comparative trademark. Specifically, whether the comparative trademark was widely recognized as a trademark among the consumers in Japan at the time of the application for the instant registered trademark, ② whether the instant registered trademark is identical or similar to the comparative trademark, ③ whether the Plaintiff applied for the instant registered trademark with unlawful purposes, such as seeking unfair profits or inflicting losses on the Defendant.

3. Judgment on the issue

A. Whether the comparative trademark is widely known in Japan

(1) Facts of recognition

The following facts are recognized in full view of each entry in the evidence of Nos. 1 to 27 (including the relevant number) and the purport of the entire pleadings:

(A) On May 21, 1951, the Defendant, which was established in Japan on December 12, 1950, obtained trademark registration on the figure portion of the comparative trademark 1 using designated goods as “deposit goods, camping goods, and static goods,” and the comparative trademark 2 was also used since 1991. The Defendant sold the table diskettes with each of the above trademarks attached, such as table diskettes, rackers, etc. from the beginning of the 1990s, and sold them by attaching each of the above trademarks to the table box products related to the table, such as table uniforms, table paintings, and bags.

The figure of the comparative trademark 1 is registered as a well-known trademark in the name trademark office published by the Japanese Intellectual Property Office and the registered foreign trademark office published by the Korean Intellectual Property Office in 1986.

(B) On Jan. 2002, the Defendant introduced the Defendant’s first 2nd 3rd 1st 2nd 1st 2nd 3rd 2nd 3rd 2nd 3rd 2nd 2nd 3rd 2nd 3rd 3rd 2nd 3rd 3rd 2nd 3rd 3rd 3rd 3rd 2nd 3rd 1st 2003st 2nd 1st 1st 3rd 3rd 3rd 1st 3rd 2000, the Defendant’s 2nd 1st 5th 5th 2000, the Defendant’s 2nd 5th 1st 5th 1st 200, the Defendant’s 1st 2nd 3rd 3rd 3rd 3rd 3rd 2nd 3rd 3rd 2000, the Defendant’s 1st 5th st 2nd 3rd 3rd 3rd 3st 200.

(C) According to the corporate information of the ASEAN, the Defendant’s sales amount reached approximately KRW 3.8 billion in 2002, approximately 4.5 billion in 2003, approximately 4.9 billion in 2004, approximately 5.2 billion in 2005.

(2) Determination

According to the above facts, around August 4, 2005, when the trademark 1 and 2 applied for the trademark of this case, at least among the general consumers or traders in Japan, at least a specific person’s trademark is recognized as a trademark with respect to the goods for consignment (However, the comparative trademark 3 is recognized as having been used for the goods for partial consignment manufactured and sold by the Defendant, but it is difficult to recognize that the evidence submitted by the Defendant alone acquired the well-knownness as a trademark as a specific person in Korea or abroad).

B. Whether the registered trademark of this case and the comparable trademark 1 and 2 are identical or similar to the comparable trademark

In principle, the similarity of combined trademarks consisting of two or more letters or letters and diagrams shall be determined by the appearance, name, and concept generated by the entire trademark. However, in cases where the similarity of trademarks can be determined by the combination of letters, etc., “an independent component capable of distinguishing one’s own goods” (i.e., a component capable of distinguishing one’s own goods) or “an essential part” (see Supreme Court Decision 2008Hu101, Nov. 27, 2008), the similarity of trademarks may be determined by the title or concept generated by the said part (see Supreme Court Decision 2008Hu101, Nov. 27, 2008).

The registered trademark of this case is tradeed only by “BUTERFLY” with the meaning of “BUTSY” and “BUTTERFY”, which is its Korean translitants. Since both names and concepts are the same, it can be tradeed only by “BUTERFLY”, one of them. Since both comparable trademarks 1 and 2 are combined with “butterfly”, the combination cannot be said to be indivisible, it can be tradeed solely with the text. In this case, the essential part of the trademark of this case and the comparable trademark of this case is the same as the name and concept.

Therefore, although the registered trademark of this case and the comparative trademark 1 and 2 are somewhat different from the external appearance, it constitutes a similar trademark as a whole.

C. Whether the plaintiff's unlawful purpose is unjust

(1) Criteria for determination

Article 7(1)12 of the Trademark Act purports that a trademark which is recognized as a trademark of a specific person among consumers in the Republic of Korea or abroad is not registered in the Republic of Korea, thereby damaging the intangible value of the trademark, such as business reputation or customer attraction, etc., which is embodied in the well-known trademark by registering and using the trademark, or impeding the business in the Republic of Korea of the well-known trademark right-holder, or that a trademark used for the purpose of obtaining unfair profits using such imitate trademark is not permitted. Whether there exists any unlawful purpose should be comprehensively considered in light of the following: (a) the degree of well-known, well-known or creativeness of the trademark of a specific person; (b) the degree and similarity of the trademark of a specific person and a third person; (c) the existence and content of negotiations on the trademark between a third person and a specific person; (d) whether a third party has prepared to use the trademark; (e) whether a third party has prepared to do so in detail; and (e) the same or similar economic relationship between the registered trademark and the designated goods of a specific person; (c

(2) Determination

(A) Facts of recognition

The following facts are acknowledged in full view of the evidence and the purport of the entire pleadings as seen earlier.

1) On October 5, 1992, the Defendant filed an application for trademark registration as to each of the designated goods of the comparable trademarks 1 and 2 as “cognis, table table, table table, table table, table table, table table, and table table set” and obtained registration on October 21, 1993. Since around 2001, the Defendant exported and sold to Korea the products with the comparable trademarks 1 and 2 attached through New South and North Trade Co., Ltd. and Beruse Korea.

2) On November 10, 1989, the Plaintiff completed its business registration with the trade name of butter sports, and produced and sold products, such as physical clothes, from around that time. On January 29, 1992, the trademark on January 29, 1996, the trademark on January 25, 1996, and the trademark on May 21, 197, respectively, was registered. However, the registration of each of the above trademarks became null and void before the application for registration of the instant trademark on all the designated goods, excluding Cheongba, on the ground that there is a concern that the Defendant might deceive consumers upon the application for registration invalidation.

(B) Whether an unlawful purpose is unjust

Considering the fact that the trademark 1 and 2, including the comparison trademark 1, 2, which consists of relatively easy English language referring to Butterfly or at least the table goods, obtained recognition in Japan. The registered trademark of this case is similar to the comparison trademark 1, 2, and the name and concept of the essential part, and the degree of similarity is large; the consignment goods and sports goods other than the table are overlapping between the parties and consumers, and the distribution channels are in an economically close relation is recognized. In light of the circumstances surrounding the dispute with the defendant, the plaintiff was sufficiently aware of the existence of the comparison trademark 1, 2, and "Butly" as at the time of the application of the registered trademark of this case, including the trademark of this case, the trademark of this case was used for the defendant's goods, and it appears that the plaintiff might mislead consumers as at the time of the application of the trademark of this case; the trademark of this case was not included in the designated goods of the trademark of this case; the trademark of this case, even if the trademark of this case is not included in the designated goods of the trademark of this case, the plaintiff's trademark of this case, application for golf, ju, ju, juization, ju, ju, jur.

However, since the designated goods, other than the above sports goods, are different from the consignment goods, the producer, use, place of sale, and consumers, and thus, cannot be deemed to have a close economic relation, it cannot be deemed that there was an unlawful purpose for the Plaintiff, on the ground that the application for the trademark of this case was filed for the designated goods

4. Conclusion

Therefore, the registered trademark of this case among the designated goods "golization, junization, junization, junization, jurization, jurization, grtening, grification, grheatization, gratization, gratization, gratization, gratization, handballing, riding ground, riding ground, swimming grat, swimming grat, grat, grats, grats, so the registration shall be invalidated as it falls under Article 7 (1) 12 of the Trademark Act, and the part concerning the above designated goods is legitimate as the above conclusion, but the remaining part among the plaintiff's claims seeking the revocation of the trademark of this case, the part concerning the designated goods other than the above designated goods shall be accepted as it is without merit, and the remaining part shall be dismissed as it is without merit.

Judges Kim Jong-soo (Presiding Judge)