A. The purport of Article 45(3) of the former Trademark Act (amended by Act No. 4210 of Jan. 13, 1990) which provides for the principle of allocation of burden of proof as to the facts of use of the registered trademark in a request for invalidation of trademark registration

B. Whether the registered trademark is a trademark consisting of a trademark consisting of a trademark consisting of a trademark consisting of a trademark consisting of a trademark consisting of Korean language “TPN” and English language “TIFNY”, and the use of only the part in Korean as a trademark constitutes a case where the registered trademark is properly used under Article 45(1)3

A. The purport of Article 45 (3) of the former Trademark Act (amended by Act No. 4210 of Jan. 13, 1990) is to prove that the applicant does not use the registered trademark in Korea, while it is difficult for the claimant, who is the trademark right holder, to prove the fact that the registered trademark is used in Korea, on the other hand, because it is easy for the claimant, who is the trademark right holder, to prove the fact that the registered trademark is not used in designated goods in a limited zone such as the Gu, Si, Gun, which is the domestic address or the administrative district of the domestic place of business registered in the Trademark Register, if the claimant proves that the applicant has not used the registered trademark in Korea, it is presumed that it is not used in Korea, and to have the claimant

B. The use of a trademark under Article 1 (1) 3 of the same Act includes not only the use of the trademark identical to the registered trademark, but also the use of the trademark in a form that can be seen the same as the registered trademark in light of the transaction social norms, or the use of a trademark similar to the registered trademark is not sufficient. As for the trademark combining the trademark of Korean “Tymn” and English letters “TIFNY”, all parts in Korean and English characters constitute the essential part of the trademark. Thus, even if only those parts in Korean are used as a trademark, they cannot be deemed as a case where the registered trademark is properly used.

A. Article 26 of the Administrative Litigation Act / [Burden of Evidence] Article 45 (3) of the former Trademark Act (amended by Act No. 4210 of Jan. 13, 1990) b. Article 45 (1) 3 of the same Act

A.B. Supreme Court Decision 92Hu704 delivered on December 22, 1992 (Dong-dong) 92Hu711 delivered on December 22, 1992 (Dong-dong). Supreme Court Decision 90Hu915 delivered on December 11, 1990 (Gong1991, 485) 91Hu66 delivered on October 8, 1991 (Gong1985, 925) 86Hu117 delivered on May 28, 1985 (Gong1985, 925) 86Hu100 delivered on March 24, 1987 (Gong1987, 730)

[Defendant-Appellant] J&D Cambodia (Attorney Lee Jae-soo et al., Counsel for defendant-appellant-appellant)

Patent Attorney Lee Jae-hoon et al., Counsel for the defendant-appellant

Korean Intellectual Property Office Decision 90Hun-Ba241 dated March 30, 1992

The appeal is dismissed.

The costs of appeal shall be borne by the respondent.

We examine the grounds of appeal.

(1) According to the reasoning of the decision of the court below, since six items among the designated goods of the trademark of this case were permitted to be manufactured prior to December 10, 1987, but the permission was cancelled thereafter, it cannot be deemed legitimate use even if the trademark of this case was used thereafter. As to whether the trademark of this case was used in the compact and creshes without the manufacture and marketing approval among the designated goods of the trademark of this case, the court below reversed the judgment of the court of first instance which rejected the request for a trial on the ground that the claimant who requested the cancellation of the registration of the trademark of this case on the ground of the non-use of the trademark under Article 45 (1) 3 of the former Trademark Act (amended by Act No. 4210, Jan. 13, 1990; hereinafter the same shall apply) is not the burden of proving the non-use of the trademark of this case, but the respondent who is the trademark holder bears the burden of proving the fact of use of the trademark of this case.

(2) In applying Article 45 (3) 3 of the former Trademark Act, if a claimant fails to use the registered trademark in the Gu/Si/Gun, which is the administrative district of domestic address or place of business registered in the Trademark Register, the trademark is presumed not to have been used. The purport of the above provision is to prove that a claimant does not use the registered trademark in the Republic of Korea. However, it is difficult for the claimant to prove that the registered trademark is not used in the Republic of Korea. However, since it is easy for the claimant to prove the fact that the registered trademark is not used in the designated goods in a limited area such as the above Gu/ Si/Gun, it is presumed that the registered trademark is not used in the Republic of Korea, and it is possible for the claimant to prove the fact that the claimant has not used the registered trademark in the designated goods in the limited area such as the above Si/Gun (see Supreme Court Decisions 90Hu915, Dec. 11, 190; 91Hu666, Oct. 8, 1991).

Therefore, the court below's decision that the claimant has the burden of proof as to the use of trademark regardless of the claimant's proof of non-use of trademark at the place of business is an unlawful act of misunderstanding the legal principles as to the allocation of burden of proof under Article 45 (3) of the former Trademark Act, and it is reasonable to discuss this issue.

However, according to the records, although the compact and so on which the trademark of this case is the issue among the designated goods of this case does not require permission, the remaining goods should be permitted, and the fact that the respondent obtained permission for several items such as shampoo and cream from among the designated goods of this case, but all withdrawals or cancellations can be known at around December 10, 1987, before one year prior to the date of the request for the trial of this case, and in relation to the above compact and so on, it can be easily proved that the respondent who is the trademark holder can use the trademark of this case. However, according to the records, if considering the fact that the respondent does not actively assert or prove the use of the trademark of this case, and the fact that it is a provision to alleviate the burden of proof against the claimant of Article 45 (3) of the former Trademark Act, it can be deemed that the respondent has failed to use the trademark of this case for more than one year at the business office of the respondent, and therefore, it is sufficient that the court below erred in the judgment below.

(3) According to the record, the instant trademark is a combination trademark of the Korean language “Twitn” and English text “TIFNY,” and the respondent may recognize the fact that the trademark was used solely in Korean, among the instant trademarks, around January 1, 1989.

However, the use of a trademark under Article 45 (1) 3 of the former Trademark Act includes not only the use of the same trademark as the registered trademark, but also the use in the form that can be seen the same as that of the registered trademark in light of the transaction social norms, or it is not sufficient to use the trademark similar to the registered trademark (see Supreme Court Decision 84Hu117, May 28, 1985). Thus, all parts of the trademark of this case in Korean and English constitute the essential part of the trademark. Thus, even if only those parts in Korean are used as a trademark, it cannot be deemed as a case where the trademark of this case is properly used (see Supreme Court Decision 86Hu100, March 24, 1987). Accordingly, it is no reason to view that there is an error in the misapprehension of legal principles as to the use of the trademark and incomplete deliberation on the original trial decision under the premise that a legitimate use of the trademark of this case was made even after the revocation or cancellation of the permission for some designated goods.

(4) The appeal is dismissed and all costs of appeal are assessed against the losing party. It is so decided as per Disposition by the assent of all participating Justices on the bench.