[1] In a case where a prior registrant filed a lawsuit against the subsequent registrant prior to the enforcement of the Commercial Registration Act, which was amended by Act No. 9749 of May 28, 2009, against the subsequent registrant pursuant to Article 22 of the Commercial Act, but the fact-finding hearing is closed after the enforcement of the amended Commercial Registration Act, the validity of filing a lawsuit for cancellation of registration pursuant to Article 22 of the Commercial Act (=the same trade name)

[2] In a case where “Dongbu Housing Construction Co., Ltd., Ltd., which is a registration titleholder, filed a lawsuit seeking cancellation of the trade name under Article 22 of the Commercial Act against “Dongbu Construction Co., Ltd., which is a registration registrant,” and the Commercial Registration Act amended by Act No. 9749 on May 28, 2009, was enforced before the closing of argument in the court below, the case holding that, inasmuch as it is apparent in appearance and name that the first registered trade name “Dongbu Housing Construction Co., Ltd.” and “Dongbu Construction Co.,, Ltd., which is a later registered trade name, etc., are not identical, there

[1] In light of the purport of Article 22 of the Commercial Act and the amendment process of Article 30 of the Commercial Registration Act, the scope of effect of a prior registrant by filing a lawsuit for cancellation of registration against a subsequent registrant pursuant to Article 22 of the Commercial Registration Act after the amendment by Act No. 9749 of May 28, 2009 shall be deemed to be limited to the same trade name corresponding to Article 30 of the amended Commercial Registration Act. However, if the previous registrant does not have any transitional provisions as to the application of Acts and subordinate statutes to the registration completed before the enforcement of the aforementioned amendment, the determination of whether to acknowledge a request for cancellation of registration pursuant to Article 22 of the Commercial Act shall be based on the point at the time of the closure of the fact-finding proceedings, and even if the previous registrant’s prior registrant’s prior registrant’s application cannot be seen as being detrimental to his/her trust after the amendment’s interpretation of Article 22 of the Commercial Registration Act, the scope of the revised Commercial Registration Act can no longer be said to have been more trusted after the amendment of the Commercial Registration Act.

[2] In a case where “Dongbu Housing Construction Co., Ltd., Ltd., a registration titleholder, filed a lawsuit seeking cancellation of a trade name under Article 22 of the Commercial Act against “Dongbu Construction Co., Ltd., a registration titleholder,” “Dongbu Construction Co., Ltd.,” “Dongbu Construction Co., Ltd.,” “Dongbuf Co., Ltd.,” “Dongbuf Co., Ltd.,” “Dongbuf Co., Ltd.,” “Dongbuf Co., Ltd.,” “Dongbuf,” and “Dongbuf Co., Ltd.,” and “Dongbu Busan Ltd.,” which were registered later, before the closing of argument in the court below, enforced the Commercial Registration Act amended by Act No. 9749 on May 28, 2009, the case held that Article 22 of the Commercial Act, at the time of the closing of argument in the court below, is limited to the same trade name as the first registered one, and that it is apparent that the “Dongbu Construction Co., Ltd.,”, Ltd., the trade name of the last.

[1] Article 22 of the Commercial Act, Article 164 of the former Non-Contentious Case Litigation Procedure Act (amended by Act No. 8569 of July 27, 2007), Article 30 of the former Commercial Registration Act (amended by Act No. 9749 of May 28, 2009), Article 30 of the Commercial Registration Act / [2] Article 22 of the Commercial Act, Article 30 of the Commercial Registration Act, Article 30 of the Commercial Registration Act

Dongbu Housing Construction Co., Ltd. (Law Firm Won, Attorneys Choi Jin-soo et al., Counsel for the plaintiff-appellant)

Dongbu Construction Co., Ltd and three others (Attorneys Kang Dong-gu et al., Counsel for the plaintiff-appellant)

Seoul High Court Decision 2008Na89356 decided January 20, 2010

All appeals are dismissed. The costs of appeal are assessed against the Plaintiff.

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

1. Article 22 of the Commercial Act provides that "the trade name that another person has registered shall not be registered as the trade name of the same kind of business in the same Special Metropolitan City, Metropolitan City, Si, Si, or Gun." The purport of the above provision is to prevent mistake or confusion among the general public with regard to the trade name first registered within a certain area, to protect trust in such trade name, and to protect the benefit that the first registrant of the trade name intends to distinguish the trade name from the trade name of another person. Meanwhile, Article 164 of the former Non-Contentious Case Litigation Procedure Act (amended by Act No. 8569 of July 27, 2007; hereinafter the same shall apply), Article 30 of the former Commercial Registration Act (amended by Act No. 9749 of May 28, 2009; hereinafter the same shall apply) enacted by integrating the provisions on commercial registration in the former Non-Contentious Case Litigation Procedure Act (amended by Act No. 9749 of May 28, 2009).

Article 18 of the Commercial Act declares the principle of mutual selection (Article 18 of the Commercial Act). While Article 164 of the former Non-Contentious Case Litigation Procedure Act and Article 30 of the former Commercial Act provides for a system to prevent misconceptions and confusions among the general public with respect to trade names by prohibiting anyone from using any trade name that may be mistaken for another person's business for unjust purposes (Article 23 (1) of the Commercial Act), it may cause inconvenience in search and selection of trade names by providing for that the first registered trade name cannot be clearly distinguishable from the registered trade name as above, and there was no concern about arbitrary interpretation and application of the registrar. Thus, Article 30 of the Commercial Act is amended by Act No. 9749 of May 28, 2009 and Article 30 of the Commercial Act provides that "No one shall register the same trade name as that of another person for the same business in the Special Metropolitan City, Metropolitan City, Si or Gun, and it is reasonable to dismiss the same scope of the registered trade name from the amendment to Article 20 of the Commercial Act.

However, the Commercial Registration Act does not have any transitional provisions regarding the application of the statutes to the registered matters completed prior to the enforcement of the aforementioned amendment. However, the determination as to whether to acknowledge the request for cancellation of registration pursuant to Article 22 of the Commercial Act is in principle at the time of closing the argument at the trial court. Even if a prior registrant trust that is premised on the existence of the former Act prior to the amendment under Article 30 of the Commercial Registration Act, the prior registrant may file a claim for cancellation of a trade name, which cannot be clearly distinguished from the registered trade name pursuant to the interpretation of Article 22 of the Commercial Act, which is premised on the existence of the former Act prior to the amendment under Article 30 of the Commercial Registration Act, as long as the prior registrant’s trust cannot be dismissed any longer after the enforcement of Article 30 of the amended Commercial Registration Act, the prior registrant’s interest and trust cannot be seen as excessively infringing or damaged. Accordingly, if the prior registrant’s trust can be seen as being limited to the application for cancellation of a trade name after the amendment of the Commercial Registration Act, then the scope of the previous registration cannot be considered as a fact-finding.

2. According to the records, on March 14, 1984, the Plaintiff completed the registration of incorporation by setting its trade name as "Dongbu Housing Construction Co., Ltd. (Dongbu Housing Construction Co., Ltd.)" (the purpose of incorporation was changed on April 3, 1984). Meanwhile, on February 28, 1989, Defendant Dongbu Construction Co., Ltd. (U.S.) as "Dongbu Construction Co., Ltd. (Dongbu Construction Co., Ltd.)," and Defendant Dongbu Co., Ltd. as "Dongbu Construction Co., Ltd." on December 14, 200 as "Dongbu Co., Ltd." and Defendant Dongbu Co., Ltd. was registered as "Dongbu Co., Ltd." on September 18, 201 as "Dongbu Construction Co., Ltd. (Dongbu Construction Co., Ltd.)" and the Defendants filed a lawsuit against the Plaintiff and Dongbu Industrial Development Co., Ltd., Ltd. (the Defendants, 2002 and 20.

Examining the above facts in light of the legal principles as seen earlier, at the time of the closing of argument in the lower court, the effect that a prior registrant may file a claim for cancellation of a trade name against the subsequent registrant pursuant to Article 22 of the Commercial Act is limited to the trade name identical to the registered trade name. However, the Plaintiff cannot be deemed to have the right to claim cancellation of registration under Article 22 of the Commercial Act, since it is apparent in appearance and title that each registered trade name of the Plaintiff, “Dongbu Construction Co., Ltd.,” “Dongbu Construction Co., Ltd.,” “Dongbuf Co., Ltd., Ltd.,” “Dongbuf Co., Ltd.,” “Dongbuf Co., Ltd., Ltd.,”

Although the reasoning of the judgment below is somewhat inappropriate, it is justifiable to conclude that the Plaintiff cannot have the right to claim cancellation of registration under Article 22 of the Commercial Act. Therefore, contrary to what is alleged in the grounds of appeal, there is no error of law by misapprehending the legal principles on Article 22 of the Commercial Act,

3. Conclusion

Therefore, all appeals are dismissed, and the costs of appeal are assessed against the losing party. It is so decided as per Disposition by the assent of all participating Justices.

Justices Shin Young-chul (Presiding Justice)