[1] Requirements for a registered trademark to fall under Article 7 (1) 12 of the former Trademark Act and the standard for determining such requirements / Whether such a legal principle is equally applied to a service mark (affirmative)

[2] In a case where foreign company Gap, the right holder of the pre-use trademark/service mark " "," filed for a registration invalidation trial against Eul corporation, the applicant of the registered trademark/service mark ", etc., on the ground that the registered trademark/service mark constitutes Article 7 (1) 12 of the former Trademark Act, the case holding that the pre-use trademark/service mark at the time of the application for the registered trademark/service mark is deemed to have been recognized as a specific person's service mark among at least foreign consumers, and the company Eul filed for the registered trademark/service mark for the purpose of using the registered trademark/service mark in order to cause damages to Gap corporation, the right holder

[1] The purport of Article 7(1)12 of the former Trademark Act (amended by Act No. 10811, Jun. 30, 2011; hereinafter “former Trademark Act”) is that a trademark recognized as indicating the goods of a specific person by domestic or foreign consumers (hereinafter “trademark subject to reproduction”) is not registered in the Republic of Korea, and thus, a third party’s registration is not permitted to obtain unjust profits by taking advantage of its business reputation, etc., which is embodied in the trademark subject to reproduction, or by using the trademark upon taking advantage of its business reputation, etc., such as impairing the value of the trademark subject to reproduction or hindering the domestic business operation of the right holder of the trademark subject to reproduction. Accordingly, in order for a trademark to fall under this provision, the trademark subject to reproduction to be recognized as a trademark of a specific person by domestic or foreign consumers, and the applicant of the trademark should use the trademark identical or similar to the trademark subject to reproduction with unlawful purposes.

In this context, whether a trademark subject to reproduction is recognized as a trademark of a specific person between domestic or foreign consumers ought to be determined on the basis of the period of use, method, mode, scope of use, etc. of the trademark, and whether it was objectively and objectively known to the extent that it was objectively considerable in terms of transaction circumstances or social norms. Whether there was an unlawful purpose to the applicant for a registered trademark shall be determined as at the time of the application of the registered trademark, comprehensively taking into account the degree of recognition of the trademark of a specific person, the degree of similarity or similarity between a trademark of a specific person and an applicant, the degree of the trademark of a specific person and the trademark of an applicant, the existence and content of negotiations surrounding the trademark between an applicant and a specific person, the relationship between the two parties, whether the applicant specifically prepares for the business using the registered trademark, whether

[2] In a case where foreign company Gap, the right holder of the pre-use trademark service mark " "," filed for a registration invalidation trial against Eul corporation, the applicant of the registered trademark/service mark "," alleging that the registered trademark/service mark falls under Article 7 (1) 12 of the former Trademark Act (amended by Act No. 10811, Jun. 30, 201), the case holding that the pre-use trademark/service mark was used as the mark of the automobile racing team owned and operated by Byung Group, in the world automobile racing competition, and the period of use exceeds five years as of the time when Eul applied for the registered trademark/service mark, the pre-use trademark/service mark was recognized as a specific person's service mark in relation to "the business of operation of the automobile racing team and related sports event," and that the pre-use trademark/service mark's use of the pre-use trademark/service mark is considerably hard to be seen as being used by Gap company's consumers at least for the first time after its use of the registered trademark/service mark's use service mark/service mark's use.

[1] Articles 2(3) (see current Article 2(1)1) and 7(1)12 (see current Article 34(1)13) of the former Trademark Act (Amended by Act No. 10811, Jun. 30, 201) / [2] Articles 2(3) (see current Article 2(1)1) and 7(1)12 (see current Article 34(1)13) of the former Trademark Act (Amended by Act No. 10811, Jun. 30, 201)

[1] Supreme Court Decision 201Hu3896 Decided May 9, 2013 (Gong2013Sang, 1054), Supreme Court Decision 2013Hu2460 Decided February 13, 2014, Supreme Court Decision 2013Hu108 Decided August 20, 2014

Led Co., Ltd. (Attorney Cho Tae-tae et al., Counsel for the plaintiff-appellant)

[Plaintiff-Appellee] Plaintiff (Patent Attorney Lee Jae-won, Counsel for plaintiff-appellee)

Patent Court Decision 2016Heo5651 Decided February 17, 2017

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).

1. The purport of Article 7(1)12 of the former Trademark Act (amended by Act No. 10811, Jun. 30, 2011; hereinafter the same applies) is that a trademark recognized as indicating the goods of a specific person by domestic or foreign consumers (hereinafter referred to as “a trademark subject to reproduction”) is not registered in the Republic of Korea, and thus, is not to allow registration of a trademark used for the purpose of causing damage to the right holder of the trademark subject to reproduction by taking advantage of the business reputation, etc. embodied in the trademark subject to reproduction, etc., or by using the trademark registered and used by a third party with an intent to obtain unfair profits by impairing the business reputation, etc., or interfering with the domestic business operation of the right holder of the trademark subject to reproduction, by impairing the value of the trademark subject to reproduction or obstructing the business operation of the right holder of the trademark subject to reproduction. Therefore, in order to fall under this provision, the trademark subject to reproduction must be recognized as a trademark of a specific person among domestic or foreign consumers, and the applicant for trademark shall use the trademark identical or similar trademark with unlawful purposes (see, etc.).

Here, whether a trademark subject to reproduction is recognized as a trademark of a specific person between domestic or foreign consumers ought to be determined on the basis of the period of use, method, mode, scope of use, etc. of the trademark, and whether it was objectively and objectively known to the applicant in terms of transaction circumstances or social norms (see, e.g., Supreme Court Decision 2013Hu2460, Feb. 13, 2014). Whether there exists an unlawful purpose for the applicant of a registered trademark should be determined as at the time of the application of the registered trademark, by comprehensively taking into account the degree of recognition or creativity of a specific person’s trademark, the degree of identical or similar nature of a trademark and an applicant’s trademark, the existence and content of negotiations surrounding the trademark between the applicant and the specific person, whether the applicant specifically prepares for the business using the registered trademark, whether the applicant has prepared for the business using the registered trademark, whether the goods are identical or similar to the goods, and whether the transaction circumstances are related (see, e.g., Supreme Court Decision 2013Hu1108, Aug.

2. Regarding ground of appeal No. 1

A. According to the reasoning of the lower judgment and the evidence duly admitted by the lower court, the following circumstances are revealed.

1) As of May 20, 201, at the time when the Defendant filed an application for the instant registered trademark/service mark, the Red Cross Group, to which the Plaintiff belongs, was holding and operating two motor vehicle racing teams, including the Red Cross Racing Team, for more than five years.

2) From 2005, Lesing Team has continuously participated in the 2000 Formula One, a global motor vehicle racing competition, etc. In 2010, the vehicle racing team had already been aware of considerable recognition as a motor vehicle racing team, such as being on hand in the 2010 Formula One's head office and head office.

3) The Plaintiff’s pre-use trademark/service mark 1 indicated the Plaintiff’s pre-use trademark/service mark 1 on the side of the racing vehicle used by the said racing team, along with the letter mark “Redul” or alone.

4) As such, the Plaintiff’s prior use trademark/service mark 1 was used from around 2005 to 2005 as the mark of the Red Cross. The period of use exceeds five years at the time of the Defendant’s application for the registered trademark/service mark of this case.

B. Examining the above circumstances in light of the legal principles as seen earlier, at the time of the Defendant’s application for the instant registered trademark/service mark 1, the Plaintiff’s pre-use trademark/service mark 1 ought to be deemed to have been recognized as a specific person’s service mark by at least foreign consumers in relation to the operation of the Plaintiff’s trademark/service and related sports

C. Nevertheless, the lower court determined that the Plaintiff’s prior use trademark/service mark 1 cannot be deemed as indicating the service business of a specific person among foreign consumers at the time of the Defendant’s filing of the instant registered trademark/service mark. In so determining, the lower court erred by misapprehending the legal doctrine on “a trademark recognized as indicating the goods of a specific person among domestic or foreign consumers” under Article 7(1)12 of the former Trademark Act, thereby adversely affecting the conclusion of the judgment. The allegation contained in the grounds of appeal on this point is with merit.

3. Regarding ground of appeal No. 2

A. According to the reasoning of the lower judgment and the evidence duly admitted by the lower court, the following circumstances are revealed.

1) The mark “ ” of the Plaintiff’s pre-use trademark/service mark 1 of the pre-use trademark/service mark 1 refers to a shape of red yellow dust, which is weak or protruding to the right, and expressed dynamicly the form of a yellow dust, which is a whole fluent with the lux method, and the front bridge is opened and the rear bridge is unfolded in the form of “S”, and has a large degree of originality by clearly organizing the detailed form.

2) The Defendant’s mark “ ” of the instant registered trademark/service mark is considerably similar to the Plaintiff’s pre-use trademark/service mark 1, and the time of development is after the Plaintiff took part in the 2010 Formula One competition held for the first time in Korea with the Plaintiff’s pre-use trademark/service mark 1.

3) Meanwhile, the Defendant’s mark of the instant registered trademark/service mark is not similar to the Defendant’s trademarks used from around 1999, and thus, it is difficult to deem that the Defendant’s trademark was created based on the actual use mark as follows.

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4) Since the Defendant’s designated goods and the designated service business of the instant registered trademark/service mark are related to the maintenance and repair of the automobile performance, there is room to recognize an economic relation between the Plaintiff’s pre-use trademark/service mark 1 and the Plaintiff’s “business of operating the Plaintiff’s trademark/service mark and conducting sports events.”

B. Examining the above circumstances in light of the legal principles as seen earlier, the Defendant applied for the instant registered trademark/service mark in order to use the registered trademark/service mark for the purpose of causing damages to the Plaintiff by imitateing the Plaintiff’s prior use trademark/service mark 1 and obstructing the Plaintiff’s domestic business.

C. Nevertheless, the lower court determined otherwise that the Defendant could not be deemed to have committed an unlawful purpose at the time of filing an application for the instant registered trademark/service mark. In so determining, the lower court erred by misapprehending the legal doctrine on “unlawful purpose” under Article 7(1)12 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.

4. Therefore, 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 Ahn Jae-chul (Presiding Justice)