[1] Criteria for determining whether a trademark constitutes "a trademark likely to mislead a consumer" under Article 7 (1) 11 of the Trademark Act

[2] The case holding that where the registered trademark " " is used for the designated goods, it is likely that the registered trademark " may cause mistake and confusion about its source to the extent that it is not used in the goods identical or similar to the goods of the pre-use trademark " "," and thus, it constitutes a trademark which is likely to mislead consumers

[1] In order to constitute a trademark that is likely to deceive a consumer as defined in Article 7 (1) 11 of the Trademark Act, the pre-use trademark or its products compared to the registered trademark or the designated goods are not necessarily required to be famous, and if the trademark or goods are known to a domestic consumer or a trader, it is so long as it can be perceived as a specific person's trademark or goods. In such a case, a trademark identical or similar to the pre-use trademark is used for goods identical or similar to the pre-use trademark, or a certain trademark is used for the goods identical or similar to the pre-use trademark, or is used for the goods identical or similar to the pre-use trademark, or in light of the specific use condition of the pre-use trademark or the economic relation between the goods using both trademarks, and other general transaction circumstances, if there are special circumstances likely to mislead a consumer as to being used by the right holder of the pre-use trademark to the extent that it is not used for goods identical or similar to the goods using the pre-use trademark.

[2] The case holding that where most of the designated goods of the registered trademark " " " are special barriers for protection, while goods of the pre-use trademark " " " are identical to the goods of the pre-use trademark " " as raw materials, although they are not identical to both goods, the degree of economic closeness is reasonable, so if the registered trademark is used for the designated goods, it may cause mistake and confusion about its source to the extent that it is not used for the goods identical or similar to the goods of the pre-use trademark, and thus, it is likely to cause mistake and confusion about its source to the extent that it is not used for the goods identical or similar to the goods of the pre-use trademark

[1] Article 7 (1) 11 of the Trademark Act / [2] Article 7 (1) 11 of the Trademark Act

[1] Supreme Court Decision 2001Hu584 Decided August 21, 2001 (Gong2001Ha, 2120), Supreme Court Decision 99Hu2655 Decided September 28, 2001 (Gong2001Ha, 2388), Supreme Court Decision 2001Hu1884, 1891 decided April 8, 2003 (Gong2003Sang, 1108), Supreme Court Decision 2001Hu7999 Decided November 28, 2003

Pacific Co., Ltd. (Patent Attorney Cho Jong-chul et al., Counsel for the defendant-appellant)

This Research Committee (Attorneys Yellow Young-ju et al., Counsel for the plaintiff-appellant)

Patent Court Decision 2004Heo3218 decided Nov. 5, 2004

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. According to the reasoning of the lower judgment, the lower court determined as follows: (a) as to whether the Defendant’s trademark (registration number omitted), “,” and its related products (hereinafter referred to as “Aradrid fiber”), including the Defendant’s trademark consisting of “,” and “,” as designated goods,” and “Industrial X-ray protective guards, locking for accident prevention, locking locks, locking locking for smoke, locking bags, and mitts and mitts” as the designated goods; and (b) whether the Defendant’s trademark consisting of “,” and similar and is likely to mislead consumers against the Defendant’s trademark using the Aradrid Textiles, etc. (hereinafter referred to as “the prior-use trademark”); (c) on or around March 18, 2002, which was the date of the decision to register the trademark of this case, it is difficult to view that the prior-use trademark is well known and well-known in Korea or perceived as a specific person’s trademark; and (d) there is no concern for consumers to misunderstand or confuse the source of goods.

2. However, it is difficult to accept the above determination by the court below for the following reasons.

A. In order to constitute a trademark that is likely to deceive consumers as defined in Article 7 (1) 11 of the Trademark Act, the registered trademark or goods of the pre-use trademark that are compared to the registered trademark or the designated goods are not necessarily required to be well-known, and if the trademark or goods are known to domestic consumers or traders to the extent that it can be readily perceived as a trademark or goods of a specific person. In such a case, a trademark identical or similar to the pre-use trademark is used on goods identical or similar to the pre-use trademark, or a certain trademark is used on goods identical or similar to the pre-use trademark, or is used on goods identical or similar to the pre-use trademark, the specific use condition of the pre-use trademark, or the degree of economic relation between the goods using both trademarks, and other general transaction circumstances, etc., it shall be deemed that there is concern that consumers may cause mistake or confusion about the source (see, e.g., Supreme Court Decision 201Hu3814, Aug. 21, 2001).

B. According to the facts acknowledged by the court below and the records, the pre-use trademarks were used for AD Textiles Co., Ltd. which was originally developed by the defendant company in the 1960s, and the defendant company applied for and registered pre-use trademarks in the United States as its head office for about 30 years, and attached them to AD Textiles in the world including the United States, Japan, and Europe. The annual sales amount of the defendant company exceeded USD 350 million from USD 1998 to USD 450 million, and the annual sales amount of the pre-use trademarks was about USD 130,000 from USD 130,000 to KRW 240,000,000 on the pre-use trademarks of Korea Co., Ltd., Ltd., which were used by the defendant company in the 1960s, and the defendant company introduced the pre-use trademarks of approximately 90,000,000 Korean Co., Ltd., Ltd.'s 1999.

In full view of all the circumstances such as the origin of the pre-use trademark as above, the period, method and form of domestic and foreign use, methods and frequency of advertisement, and its contents, it is reasonable to deem that the pre-use trademark of the defendant company was well known to the extent that it could have been perceived as a trademark of a specific person among domestic users at the time

C. Furthermore, most of the designated goods of the registered trademark of this case are special barriers for protection, whereas products using the pre-use trademark are not identical to both goods as an Arabic fiber fiber, which correspond to their raw materials, but are not easily modified or damaged due to high strength and structural stability while the weight of Aradrid fiber is unal fiber, and thus, it is reasonable to view that the degree of economic training of the two goods is reasonable in full view of the following: (a) the special clothing, special clothing, etc. made of Aradrid fiber is used by soldiers, fire fighters, contacts, and adjacent work forces; (b) the designated goods of the registered trademark of this case are used by the same person immediately by the same person, etc. as the designated goods of the registered trademark of this case.

In addition, the pre-use trademarks of the defendant company had been attached to finished products such as special decorations, clothing, etc. made by the prior use trademarks of the defendant company, and had been considerably known to the general consumers through the manufacturer and seller. The general consumers who are the consumers of the designated goods of the trademark of this case are mainly engaged in special occupational categories and are well aware of the characteristics of the Arabic fiber, and the manufacturer and seller of finished products such as the plaintiff are also the consumers of the Arabic fiber, even if they are the customers of the industry.

Therefore, considering all the above circumstances, if the registered trademark of this case is used for the designated goods, it may cause mistake or confusion about its source to the extent that it is not used for the goods identical or similar to the goods using the pre-use trademark. Thus, the registered trademark of this case is likely to mislead or confuse consumers. Accordingly, the registered trademark of this case shall be deemed to be a trademark which is likely to mislead consumers. The judgment of the court below otherwise did not conduct a necessary deliberation, and it is erroneous in the misapprehension of legal principles as to Article 7 (1) 11 of the Trademark Act, which affected the conclusion of the judgment, and thus, the grounds of appeal No. 1

3. Therefore, without examining the remaining grounds of appeal, the judgment of the court below is reversed, and the case is remanded to the court below for a new trial and determination. It is so decided as per Disposition by the assent of all participating Justices on the bench.

Justices Son Ji-yol (Presiding Justice)