Plaintiff (Patent Attorney Lee Jong-soo, Counsel for plaintiff-appellant)

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

July 17, 2014

1. The plaintiff's claim is dismissed.

2. The costs of lawsuit shall be borne by the Plaintiff.

The decision made by the Intellectual Property Tribunal on March 14, 2014 on the case No. 2012Da368 shall be revoked.

1. Basic facts

A. The registered trademark of this case

1) Date of application / Decision of registration / Date of registration / Date of registration for renewal / Registration / Registration Date of June 22, 1994: / November 30, 1995 / November 24, 1995 / June 10, 2005 (trademark number omitted)

2) Composition:

3) Designated goods: “documents bags, handbags, non-metallic metal product locks, name cards, keyss, keyss, straws, straws, fashion cases, lebags, lebagbags, lebags, lebags, lebags, and lebbags,” classified in Category 18 of the Product Classification, and 25 of the Product Classification

B. First Used Trademark

(i) Marks: (A prior-use trademark 1), (a prior-use trademark 2), and (a prior-use trademark 3)

(ii) products using: table diskettes, table rackers, table racks, table racks, table racks, table racks, table racks, table racks, table racks for sports purposes;

3) Users: Defendant

C. The procedural background

1) On February 10, 2012, the Defendant filed a petition for a registration invalidation trial (No. 2012Da3688) with the Intellectual Property Trial and Appeal Board against the Defendant, asserting that the instant registered trademark may cause mistake or confusion between the pre-use trademarks and the source, and that it constitutes Article 7(1)11 of the Trademark Act.

2) On March 14, 2014, the Korean Intellectual Property Tribunal accepted the Defendant’s request for a trial on the grounds that the instant registered trademark constitutes Article 7(1)11 of the Trademark Act, and rendered the instant decision that the registration of the instant registered trademark should be invalidated.

【Unsatisfyed Facts, Gap’s evidence 1, 2, Eul’s evidence 12-1 through 14-3, Eul’s evidence 19-1 through 20, and the purport of the whole pleadings

2. Summary of the parties' arguments

A. The plaintiff's ground for revocation of the trial decision of this case

1) The pre-use trademarks were not known to the extent that they would be recognized as trademarks of a specific person at the time of the decision to register the trademark of this case, and there was no record used for bags, clothing, and shoes in Korea prior to the decision to register the trademark of this case.

2) The designated goods of the instant registered trademark, bags and Group A are not similar to those of the pre-use trademarks, goods using the pre-use trademarks, and have no economic relation.

3) Therefore, the instant registered trademark does not fall under the grounds for invalidation of the registration under Article 7(1)11 of the Trademark Act, and the instant registered trademark that invalidated the instant registered trademark on a different basis shall be revoked as it is unlawful.

B. Defendant’s assertion

1) The pre-use trademarks were known to the extent that they were recognized as trademarks of a specific person at the time of the decision to register the trademark of this case. The pre-use trademarks and the registered trademark of this case are similar to the pre-use trademarks, and goods used (designated) are also similar or are in an economic relation. Thus, if the registered trademark of this case is used on the designated goods, consumers may be caused by mistake or confusion of the source. Thus, the registered trademark of this case constitutes grounds for invalidation of registration under Article 7(1)11

2) Therefore, the instant trial decision that invalidated the registered trademark of this case as above is lawful.

3. Whether the registered trademark of this case falls under Article 7 (1) 11 of the Trademark Act

A. Criteria for judgment

For the purpose of "a trademark which is likely to mislead consumers" under Article 7 (1) 11 of the Trademark Act, the cited trademark or its goods are not necessarily well-known, but at least it should be known to consumers or traders to the extent that it can be perceived as a trademark or goods of a specific person if it is a trademark or goods in the general trade in Korea. In such a case, if a trademark identical or similar to the quoted trademark is used on the designated goods identical or similar to the cited trademark, or if it is used on the goods identical or similar to the cited trademark, or if it is deemed that a trademark is used on the goods identical or similar to the cited trademark, the specific use condition of the quoted trademark, or the economic relation between the goods using both trademarks, or other general transaction circumstances, if there are special circumstances that make it possible to mislead consumers as to the use of the cited trademark as a goods identical or similar to the goods using the cited trademark, it may be said that there is concern for consumers to mislead or confuse the source, and whether there is any concern for consumers to register the trademark after 201.

B. Authorization guidance for pre-use trademarks

1) Facts of recognition

The following facts are either in dispute between the parties or in accordance with Eul evidence 1-1 to Eul 2-3, Eul evidence 5-1 to 5, 7, Eul evidence 7, Eul evidence 8-1 to 9, Eul evidence 1-1 to 15, Eul evidence 1-2, Eul evidence 1-1 to 21, Eul evidence 26-1 and 26-2, and there is no counter-proof.

A) On December 1950, the Defendant was a specialized company for the consignment goods established in Japan, and was engaged in the pre-use trademarks 1; the pre-use trademarks 2; the pre-use trademarks 1 from 1970 to 191; and the pre-use trademarks 3 from 1991 to 190. From around 190 to 190, the Defendant produced and sold the pre-use trademarks 1; the pre-use trademarks 2; and the pre-use trademarks 3; and from 1990 to 200 to 200 to 200.

B) On January 17, 1973, the defendant registered the pre-use trademarks 1, and 3 of the pre-use trademarks on September 23, 1993 as designated goods, and registered the pre-use trademarks in 40 countries with the pre-use trademarks registered as designated goods.

C) The Defendant, from around 1973 to around 1993, promoted the consignment goods using the pre-use trademarks by holding or sponsoring the world luscing tour, and the share of the pre-use trademarks among the tablers and table diskettes used in the 41st World Traca in Japan in 191, which was held at the 41st World Traca in 191, became 52%.

D) The pre-use trademarks used in the pre-use trademarks were widely used as official goods in various clubs held in Korea, such as the Korea Federation of the Korea Fair Trade Organization and the Korea Broadcasting System organized in 1982, “Korea Open Franchise and Fair Trade Organization in 1984,” “Seoul Macp Macp Macp Macl 1985,” “Seoul Macp 8, 1986, 1986, 8, 1986, 200, 5, 1987, 1987, 198, 200, 300,000 official goods.”

E) From 1984, Korean burner Pluxian Co., Ltd. was imported and sold from around 1989 to around 1989, from around 1990 to around New Young Textiles Industry Co., Ltd., and from around 1994, new Nam Trade Co., Ltd. was also imported and sold as well as table clothes, table cards, table boxes, table boxes, and table pockets where pre-use trademarks were used.

F) First Used Trademark 1 was inserted in the “foreign well-known Trademark House” issued by the Korean Intellectual Property Office in 1986 as a Japanese well-known trademark.

G) Domestic magazines (Nos. 1, 10 months, 193 January, 4, 1993, 5 months, 7 months, 11 months, 4 April, 5, 1994, 6 months) were introduced as co-convened goods with pre-use trademarks 2.

2) Determination

As shown in the above facts, the pre-use trademarks have been widely known in relation to the consignment goods used by the pre-use trademarks from around October 30, 1995, when considering the fact that the consignment goods used by the pre-use trademarks were widely announced internationally through the pre-use trademarks opened in Korea from around 1973, that were widely used as the official consignment goods in several consignment competitions held in Korea from around 1982, that many domestic companies actively imported and sold the consignment goods used by the pre-use trademarks from around that time, and that the consignment bags used by the pre-use trademarks 2 used for the pre-use trademarks have been publicized several times through the consignment magazines, etc., the pre-use trademarks were known to the extent that at least about October 30, 1995, the registration decision date of the trademark of this case, was recognized as the trademark of a specific person

C. Whether the registered trademark of this case and the pre-use trademarks are similar

1) Criteria for judgment

In principle, the similarity of a combined trademark consisting of two or more letters or diagrams shall be determined by the appearance, name, and concept arising from the entire constituent part of the trademark. However, in cases where it is deemed that the trademark can be traded solely on the essential part, i.e., by the combination of letters, etc., the similarity of a trademark may be determined by separating or extracting the essential part and by the title or concept arising from the said part (see Supreme Court Decision 2010Hu1763, Jan. 27, 201, etc.).

2) The essential part of the registered trademark of this case

In light of the following facts: ① the instant registered trademark “” is a trade practice; ② it is not indivisible to the extent that it is deemed natural in the transaction if it is separated from the text and figure parts; ② “WEAE NAENAL LHHEY” indicates the quality of bamboo commonly used as the materials of a locking, which is the designated goods; ③ “MADAM BUTTFEYY” is a relatively low eropic with the title 7 sound; ③ it is a trade practice; ④ it is not possible to recognize the designated goods of this case as an independent or weak source of the designated goods of this case; ④ it is difficult to recognize as an independent source of the designated goods of this case as the designated goods of this case, and thus, it is difficult to recognize as an independent source of the designated goods of this case, whereas it is difficult to recognize as an independent source of the designated goods of this case.”

(iii) preparation for both trademarks;

The registered trademark of this case and the pre-use trademarks of this case are different from the composition diagrams, letters, letters, and letters, and are not similar. However, when the registered trademark of this case is placed only in trade with the essential part, it is abbreviationd with “Bluef,” and it is conceptualized as “Bluf,” and the pre-use trademarks are also referred to as “bruf,” and they are perceived as “bruf,” in the same manner by the text

4) The comparison result of the mark

Ultimately, the essential parts of the trademark of this case and the pre-use trademarks are identical in their names and concepts, and if both trademarks are used together with the same or similar goods, there is a concern for ordinary consumers to mislead or confuse the origin of the goods. Thus, the mark as a whole is similar.

D. Whether the designated goods of the registered trademark of this case are similar to those of the pre-use trademarks

1) The designated goods of the trademark of this case, “documents bags, handbags, non-metallic metal bags, name cards, key bags, strings, strings, strings, strings, strings, strings, Bostons, strings, strings (strings),” which are designated goods of the trademark of this case. The goods used by the pre-use trademarks of this case are “brings, trings, tablers, table boxes, table rrings, table strings, table strings, and strings for sports.”

In light of the fact that sports goods companies such as the defendant at the time of the decision to register the trademark of this case were engaged in diverse business such as production and sale of sports clothes, shoes, bags, etc. as well as sports goods at the time of the decision to register the trademark of this case (No. 22), sports bags and designated goods of the trademark of this case, "documents bags, handbags, bags, straws, proton bags, and nmarks" are similar in that they are both bags. In light of the fact that, at the time of the decision to register the trademark of this case, the company producing and selling household bags is not a major product for the pre-use trademark, but has been engaged in diverse business such as production and sale of sports goods as well as sports goods (No. 22). In addition, sports goods and leisure sports goods are not clearly distinguishable from those of the pre-use trademark of this case, it is not widely distinguishable from those of the pre-use trademark of this case as well as those of the pre-use trademark of this case.

2) On the other hand, the Plaintiff asserts that “documents bags, handbags, wall bags, bagbags, key bags, strings, strings, strings, strings, strings, strings, strings, and strings” are not sold at a table shop or sports product store, but at a general store, and thus, goods designated as two trademarks (using) do not have an economic relation.

As seen earlier, sports goods companies tend to produce and sell leisure goods at the time of the decision to register the trademark of this case. At that time, documents bags, handbags, bags, name cards, key bags, machine bags, strings, etc. can be seen as a kind of leisure goods. At that time, documents bags, handbags, name cards, key bags, flag fags, strings, strings are not handled in sports and leisure goods stores. However, in light of the fact that sports goods companies are not sports goods, sports goods companies are produced and sold together with sports clothing, bags, etc. in addition to sports goods, and sports clothing, bags, etc. were widely used as a fashion. Thus, the Plaintiff’s assertion is without merit.

(e) Whole results of preparation;

Thus, if the registered trademark of this case is used for the bags or Class A, it may be misunderstood that it is used by the holder of the pre-use trademark as being used by the holder of the pre-use trademark to the extent that it is not used for the goods similar to the table equipment, which is the main goods of the pre-use trademark, and it may cause mistake and confusion as to the origin of the goods. Thus, the registered trademark of this case constitutes Article 7 (1) 11 of the Trademark Act.

4. Conclusion

Therefore, the trial decision of this case which invalidated the registered trademark of this case is legitimate, and the plaintiff's claim seeking its revocation is dismissed as it is without merit. It is so decided as per Disposition.

Judges Jeon Man-tae(Presiding Judge)