In a case where Gap corporation, the right holder of the pre-use trademark "A", filed a petition for a registration invalidation trial against Eul, the right holder of the pre-use trademark " " "," alleging that the registered trademark falls under Article 7 (1) 11 of the former Trademark Act, the case holding that the registration should be invalidated on the ground that the registered trademark is likely to mislead or confuse the registered trademark to be used by the right holder of the pre-use trademark when used for designated goods, and thus to mislead consumers in relation to

In a case where Gap corporation, the right holder of the pre-use trademark " " "," filed for a registration invalidation trial against Eul, the right holder of the pre-use trademark " "," alleging that the registered trademark falls under Article 7 (1) 11 of the former Trademark Act (wholly amended by Act No. 1403, Feb. 29, 2016), the case holding that, in full view of the product advertisement status, sales period, sales network, sales and advertising size, brand-related water performance, market share, and awareness in the market of the pre-use trademark, the registered trademark was known to the extent that it can be recognized as a trademark of a specific person at least by domestic general consumers or traders at the time of the decision of registration of the pre-use trademark, and the registered trademark differs in appearance compared with the pre-use trademark, but all of the marks are identical with the pre-use trademark as well as the name and concept of the pre-use trademark, and thus, the registered trademark should be used in relation to the designated goods of the pre-use trademark because it is closely identical with or economic degree.

Article 7(1)11 of the former Trademark Act (wholly amended by Act No. 14033, Feb. 29, 2016) (see current Article 34(1)11)

Head of the Fisheries Co., Ltd. (Attorney Seo Young-young, Counsel for defendant-appellant)

Defendant (Patent Attorney Lee Jae-sung, Counsel for defendant-appellant)

March 22, 2018

1. The decision made by the Intellectual Property Tribunal on September 29, 2017 by the Intellectual Property Tribunal on the case No. 2016Da2224 shall be revoked.

2. The costs of the lawsuit are assessed against the defendant.

The same shall apply to the order.

1. Basic facts

A. Defendant’s registered trademark of this case (Evidence A No. 1)

1) Registration number/filing date/registration decision date/registration date: (trademark registration number 1 omitted)/ September 25, 2006/ August 26, 2008/ August 28, 2008

2) Marks:

(iii) Designated goods: books, tablers, beer (non-medical use), air beer (non-medical treatment), beer, fluor, beer, beer, bee, bee, bee, bee, bee, bee, bee, bee, bee, bee, bee, bee, bee, bee, bee, beeget, bee, beegr, beegor, bee, beegor, beegr, ttrhee, twee, twee, twee, twee, twee, twee, twee, twee, tweeth, twee, beeging (non-medical use), beegor, bee-bee, beeget, beeget, t

(b) First Used Trademark (Evidence A 2)

(a) Composition: Dried stone beds;

(ii) Goods using: stone bed;

3) User: Plaintiff

C. Details of the instant trial decision (Evidence A No. 2)

1) On July 26, 2016, the Plaintiff asserted against the Defendant on the Intellectual Property Tribunal that “The instant registered trademark can be divided, abbreviated, and conceptualized only by “the number”, and thus, the overall trademark is similar to the pre-use trademark and its designated goods are also identical or similar to those of the pre-use trademark, and thus, constitutes Article 7(1)11 of the former Trademark Act (wholly amended by Act No. 1403, Feb. 29, 2016; hereinafter the same).” In so doing, the Plaintiff filed for a registration invalidation trial on the instant registered trademark (wholly amended by Act No. 14033, Feb. 29, 2016).

2) On September 29, 2017, the Korean Intellectual Property Tribunal rendered the instant trial ruling dismissing the Plaintiff’s request on the ground that “The instant registered trademark differs from the pre-use trademark and has the purport of “the students (the students) who study for a long time in order to pass the university entrance and public notice” and “the number of students (the students)” alone are not separately observed. As such, the pre-use trademark and name and concept, which are separately observed by “the number”, are different from the pre-use trademark, and thus, are not likely to mislead or confuse the place of goods, and thus, are not likely to cause confusion.”

[Ground of recognition] Unsatisfy, Gap evidence Nos. 1 and 2, the purport of the whole pleadings

2. Summary of the plaintiff's assertion

Although the registration of the instant registered trademark ought to be invalidated as alleged below, the instant trial decision was unlawful by determining it differently.

A. Violation of Article 7(1)11 of the former Trademark Act

The registered trademark of this case is similar to the pre-use trademark which is recognized as indicating the well-known trademark or the plaintiff's goods among consumers at the time of the date of registration decision. In addition, the designated goods of the registered trademark of this case are identical or similar to the goods of the pre-use trademark, or are closely related to the economic relation, and thus, may be mistaken for being used by the plaintiff who is the right holder of the pre-use trademark. Therefore, the registered trademark of this case constitutes Article 7 (1) 11 of the former Trademark Act, which is likely to cause misconception or confusion of the source by the consumers and cause confusion of the source

B. Violation of Article 7(1)12 of the former Trademark Act

The registered trademark of this case is similar to the pre-use trademark that has acquired well-knownness at the time of application, and in actual use of the trademark, it is causing mistake or confusion with the pre-use trademark by attaching "top" with "top" to "the long-time recipient". Therefore, the registered trademark of this case constitutes a trademark applied for unjust purpose with an economic credit formed in the pre-use trademark, and constitutes Article 7 (1) 12 of the former Trademark Act.

3. Whether it falls under Article 7 (1) 11 of the former Trademark Act

A. Relevant legal principles

Article 7(1)11 of the former Trademark Act provides that "No trademark which causes or threatens to cause a misunderstanding of the quality of goods shall be registered." If a trademark is likely to cause a consumer as provided for in Article 7(1)11 of the former Trademark Act, it does not necessarily need to be well-known; if a domestic consumer or a trader is a trademark or product, it is so known that it can be recognized as a specific person's trademark or product. In such a case, if a trademark identical or similar to a prior use trademark is used on goods identical or similar to the goods, or if it is used on goods identical or similar to the prior use trademark, or if it is used on goods identical or similar to the goods using the prior use trademark, the specific situation of the prior use of the prior use trademark, or the degree of economic training among goods using both trademarks, and other general business circumstances, it should be determined that it might cause 200 after being registered with the right holder (see Supreme Court Decision 200 after being declared that there is a concern for 200 after being registered with the right holder.

(b) Guidance on the pre-use trademarks;

1) Facts of recognition

The following facts may be acknowledged in light of the overall purport of the pleadings and records of Gap evidence 3 through 6 and 36 (including the number of branch numbers):

A) From around 1993, the Plaintiff produced and sold a protruding product using the pre-use trademark “welves” mark, which is the pre-use trademark, and around that time, through TV, radio, newspapers, magazines, etc., the Plaintiff has run a product advertisement using the mark “welves” nationwide. The Plaintiff used the advertising word “Flves” as “Flves.” The Plaintiff registered the following trademarks.

Table contained in the text - Registration number / Date of application / Date of registration determination/ Date of registration: (Registration Number 2 omitted) / October 23, 2001 / March 6, 2003/ March 19, 2003

A person shall be appointed.

Table contained in the main sentence - Designated Goods: Electric bed, non-medical electrical bags, electric ioners, electric ionioners, electric ionioners, shockers, electric ioners, electric iontomers, electric iontomers, electric iontomers, electric iontomers, nonmedical electric iontomers, nonmedical electric iontomers

B) From 1993 to 2008, the Plaintiff’s sales revenue from the pre-use trademarks manufactured and sold by using the pre-use trademarks in Korea is equivalent to the total amount of KRW 229,731,832,836, and the advertising cost spent for this purpose reaches the total amount of KRW 12,959,839,57 (Evidence A) (Evidence 5).

77,84,297,284,297,397,47,297,297,397,47,297,294,257,297,397,297,348,257,297,297,397,47,298,297,297,47,297,297,297,348,257,97,297,297,297,297,347,97,297,297,942,97,297,97,297,97,297,47,297,97,297,297,257,965,297,297,97,297,297,297,297,297,297,297,2975,297,197,297,297,97,

C) The Plaintiff’s “Chamball” was selected as a set of TV home shopping product from 1995 to 1999, and each of the following was awarded: “The 2002 Vast brand 2002, the 2002 Evallator Selection of the Korea Efficiency Association Certification Board, the 2004 Evallary for superior electrical products, the 2006 Evallive brand (health intrusion), the 2007 Evallive brand products, the 2007 Evallive Design Products, the 2007 Evallive Design Products, the 2007 Evallive Design Products, the 201 Korean Consumer Forum organized and the 2014-2014 Consumer Voting.”

D) At the time of 2008, the Plaintiff sold brick products using pre-use trademarks through 100 agencies, department stores, online shopping malls, TV home shopping, etc.

E) Since 2004, the Plaintiff’s product continued to record the share of 50% in the domestic brick market from the time of the registration of the instant registered trademark until 2008. Around 2008, the Plaintiff’s product recorded the share of 35% in the domestic functionality-based market, including stone bed and water bed, etc. In addition, the Korea Ggalle Survey Research Institute conducted the “human guidance and identification behavior investigation” in early December 2009 by the first police officer of the Republic of Korea. As a result, it was investigated that the pre-use trademark belongs to one personal guidance in the stone bed and the products including “the number” are perceived as the products of the same company.

2) Determination

A) As shown in the above facts, the pre-use trademarks, in comprehensive consideration of the advertisement status, sales period, sales network, sales and advertising size, brand-related water performance, market share, and marketing awareness of the products using the pre-use trademarks, can be deemed to have been known to the extent that at least general consumers or traders can be perceived as indicating a specific person’s goods around August 26, 2008, which is the date of the registration decision of the trademark of this case.

B) As to this, the Defendant did not only use the pre-use trademark’s “fluor-fluor-fluor-fluor-fluor-fluor-fluor-fluor-fluor-fluor-fluor-fluor-fluor-fluor-fluor-fluor-fluor-fluor-fluor-fluor-or-fluor-fluor-fluor-fluor-fluor-fluor-fluor-fluor-fluor-

However, for the following reasons, the Defendant’s above assertion is difficult to accept.

(1) Of the pre-use trademarks, the part of the pre-use trademarks “welved” is merely a common name of the goods used and thus has no distinctive character. However, the part of “welve” among the pre-use trademarks can be interpreted as a variety of concepts, such as “the person who performs a funeral service,” “live life,” and “live head, etc. who leads military affairs,” and even if it is recognized as meaning “live flive flives, etc., which may assist the flive life,” which is a goods used, it is merely viewed as expressing or emphasizing the nature of the goods used, and cannot be deemed as having a sense of sense. Therefore, it cannot be readily concluded that the pre-use trademarks

(2) 반면, 선사용상표에 부가되어 사용되기도 한 도형부분(★★★★★)은 별 모양 다섯 개로서 독특한 도형이라고 할 수 없고 그 의미도 ‘최고의’, ‘특별한’, ‘우수한’ 정도로서 상품의 품질 등을 보통의 방법으로 표현하는 데 그쳐 그 식별력이 없거나 미약하다.

(3) Therefore, the pre-use trademark, rather than being perceived and named as “five separate or five separate trademarks” among the general consumers, refers to the pre-use trademark “welvelves” and “welves” among them, and it is reasonable to deem that it was known to the extent that it can be perceived as indicating the Plaintiff’s goods by the Plaintiff’s use.

(4) Article 7(1)11 of the former Trademark Act is not a provision for protecting the existing trademark, but a provision for preventing misunderstanding or confusion among ordinary consumers as to the quality, source, etc. of goods using the trademark already recognized as the trademark of a specific person and protecting its trust in this context (see Supreme Court Decision 2006Hu3113, Jun. 28, 2007). Thus, the registration and invalidation of the pre-use trademark, as alleged by the Defendant, does not require the trademark to be registered, does not affect the recognition of the distinctiveness or human identity of the pre-use trademark. Moreover, the Plaintiff’s use of the pre-use trademark from around 203, when it appears that the Plaintiff used the pre-use trademark by adding more than five shapes figures to the pre-use trademark “blick lick lick lick lick lick”, so long as the Plaintiff’s use of the trademark “lick lick lick lick lick 2,” and it does not affect the above 200 pre-use “126 lick lick 2,”.20.

(5) Furthermore, whether the existing trademark or its products are known to a certain extent in the domestic general trade refers to an objective situation in which a general consumer is to be recognized in accordance with the actual situation of the trade (see, e.g., Supreme Court Decision 2006Hu3113, etc.). The advertising expenses and sales, etc. pointing out by the Plaintiff are an index reflecting the objective situation according to the actual situation of the trade, which can reflect consumer awareness well. The Plaintiff’s market share, personal guidance, etc. recognized earlier are directly related to consumer recognition, and it is sufficient to recognize the Plaintiff’s personal guidance required under Article 7(1)11 of the former Trademark Act, as alleged by the Plaintiff.

C. Whether the mark is similar

1) Relevant legal principles

In principle, the similarity of combined trademarks consisting of two or more letters or diagrams shall be determined on the basis of the overall appearance, name, and concept of their constituent parts. However, in order to induce the conclusion of the appropriate overall observation where there is an essential part, it is necessary to compare and determine the similarity of trademarks with the essential part in order to induce the ordinary consumers to express the source of goods independently by raising an impression of the trademark, or by inducing them to memory or associate with the trademark among the trademarks (see, e.g., Supreme Court Decisions 2003Do3906, Nov. 26, 2006; 2006Hu1964, Nov. 9, 2006; 201Do7352, Nov. 27, 2011; 201Da12849, Jun. 26, 2014).

Inasmuch as the essential part of a trademark, irrespective of other components, becomes an object of comparison in determining similarity with another trademark because of its independent distinctive character recognizable to ordinary consumers by itself, inasmuch as there is an essential part in the trademark, the similarity of trademarks should be determined by comparing only the essential part without having to consider whether the part is separate and observed. Furthermore, whether the part of a trademark is essential or not shall be determined based on the elements such as whether the part is widely and well-known or well-known or highly increased to ordinary consumers, and whether the part constitutes a high portion in the entire trademark. However, the determination should be made by comprehensively taking into account the degree of relative distinctiveness compared with other components, the degree and degree thereof, the relationship with the designated goods, and the transaction circumstances (see, e.g., Supreme Court Decision 2015Hu1690, Feb. 9, 2017).

2) Specific review

A) External appearance

The instant registered trademark, like “”, is a character trademark consisting of three letters in Korean language without distance, while the pre-use trademark is a character trademark consisting of five letters in Korean, such as “blick-lick-lick-lick-lack,” and the two trademarks are different from each other due to differences in the composition, number of letters, etc.

B) Preparation for names and concepts

(1) Whether the constituent part of a trademark has no or weak distinctiveness should be determined objectively by taking into account the concept of the constituent part, the relationship with the designated goods, the circumstances of the transaction society, etc. (see Supreme Court Decision 2004Hu912, May 25, 2006, etc.).

(2) The essential part of the pre-use trademark: The pre-use trademark consists of “welvelves” with the meaning of “welves” as a product using the pre-use trademark. The part of “welves” can not be seen as seeing or emphasizing the character of designated goods and products using the trademark, and it cannot be viewed as slveing or emphasizing the character of the designated goods and products using the trademark. While there is distinctiveness in the front part of the mark, the part of “welves” has no distinctive character as a part indicating the ordinary name of the products using the pre-use trademark. In light of the above circumstances such as the period used in “welves” as a product using the pre-use trademark, the frequency and contents of the media, degree of public relations, market share, and awareness in the market, etc., the part of “welves”, which has distinctiveness in the pre-use trademark, is recognized as indicating goods of a specific person in relation to the designated goods identical with the designated goods of the trademark of this case, and thus has more distinctive character.

(3) The essential part of the registered trademark of this case is comprised of two parts with the word “the long” and “the long” without distance. However, the part of the registered trademark of this case is located in the front part of the trademark, which is identical to the part of the pre-use trademark of this case, while “the long” has strong distinctiveness as well as the meaning of “unfit, water-resistant, not yet processed,” which is used as contact with the part of the pre-use trademark of this case, or it is weak in distinguishing the meaning of “student,” which is the designated item. Furthermore, even though “the long-term public study to pass the university entrance and public announcement,” it is difficult to view that the part of the registered trademark of this case and “the long-term public study to pass the university entrance and public announcement,” which is a combination with the word “the long-term character” of the designated item of this case, can not be seen as having a sense that ordinary consumers have a negative meaning in light of the relationship with the word “the long-term water-resistant” of this case, “the long-term distinguishingd part” as the designated item of this case.

(4) Thus, since the pre-use trademarks and the instant registered trademarks are all the essential parts of the pre-use trademarks and the instant registered trademarks are “the number of pages”, the two marks are identical in their names and concepts, without considering whether “the number of pages” is separate and observed.

C) Results of preparation

As seen above, although the registered trademark of this case differs from the pre-use trademark, both marks are identical to “the number” and their names and concepts are identical. Therefore, if the registered trademark of this case is used together with goods identical or similar to the goods used in the pre-use trademark, it may cause general consumers or traders to mislead or confuse the origin of the goods. Thus, the registered trademark of this case and the pre-use trademark of this case are similar to the registered trademark of this case.

(d) The degree of relationship between products;

Of the designated goods of the trademark of this case, the term “turbly-used shock, bed, bed, bed, bed, bed, bed, earth bed, earth bed, bed, water bed, bed, bed, bed, bed, and yellow bed” are identical or similar to the “turbing” which is a product using the pre-use trademark, and other products are mainly involved, and the quality and use of which are similar or similar to that of the pre-use trademark, and the scope of the consumers can be produced together with the products related to be considerably identical. In light of the above, it is reasonable to view that these products are similar or are closely connected with each other at least economically.

(e) Results of the review.

As seen above, the registered trademark of this case is similar to the pre-use trademark recognized as indicating the goods of a specific person among consumers as at the time of the decision to register the trademark, and its designated goods are identical, similar, or similar to the goods of the pre-use trademark, or are closely related to economic relations. Thus, if the registered trademark of this case is used on designated goods, there are circumstances likely to cause misconception and confusion as being used by the plaintiff, the holder of the pre-use trademark, who is the right to use the pre-use trademark. Accordingly, the registered trademark of this case is likely to deceive consumers in relation to the pre-use trademark, and the registration should be invalidated as it falls under Article 7 (1) 11 of the former Trademark Act. Nevertheless, the decision of this case, which judged otherwise, is unlawful without considering the remainder

4. Conclusion

Therefore, the plaintiff's claim of this case seeking the revocation of the trial decision of this case is reasonable, and it is so decided as per Disposition with the assent of all participating Justices.

Judges Kim Gung (Presiding Judge)