Introduction of a recent precedent related to the scope of sameness of a trademark and the objective requirement (object) of a positive confirmation trial for the scope of a right
[Supreme Court Decision 2018HU11698 judged on April 3, 2019]
A trial for confirming the scope of right of a trademark right is a judgment to ascertain whether a challenging unregistered trademark positively belongs to the scope of a registered trademark or, passively, does not belong to the scope of the registered trademark. Currently, a positive confirmation trial for the scope of a right against a challenging mark which is another person’s ‘registered mark’ is improper in principle since it results in denying the effect of a registered right without a registration invalidation procedure. However, it is worth checking whether such logic can be applied to a case in which the challenging mark is not identical with the registered mark of a demander but is merely similar to the registered mark within ‘the scope of sameness’, and whether the challenging mark and the registered mark are in the scope of sameness or in the scope of similarity.
[Information of related marks of this case]
2-1. Judgment of the Intellectual Property tribunal
The Intellectual Property Tribunal judged that the above request for trial by the complainant could not be accepted because the defendant’s challenging mark is not similar to the registered mark and thus does not belong to the scope of the right of the registered mark, without reviewing as to whether the products being used and the designated goods are the same or similar to each other.
2-2. Judgment of the Patent Court
The Patent Court judged that the defendant's challenging mark is similar to the complainant's registered mark and that the products being used are also similar to the designated goods of the registered mark, and thus in the case that both marks are being used simultaneously, it may cause misunderstanding or confusion to general consumers or traders regarding the source of the products, so the challenging mark belongs to the scope of the registered mark’s right and, accordingly, the judgment of the Intellectual Property tribunal which made a different conclusion was unreasonable.
2-3. Judgment of the Supreme Court
It is obvious that a request for a trial against ‘a challenging mark which is a registered trademark’ is a positive confirmation trial of a trademark right. In this case, the 'challenging mark which is a registered trademark' includes not only the same trademark as the registered trademark but also a case in which the trademark has been deformed so as to not impair the sameness of the trademark as an identification mark based on common business sense. If there is a registered mark that combines English Letters and Hangul characters which simply transliterate it, and the challenging mark is in the form of omitting one of the English or Korean transliteration part of that registered mark, such mark is recognized to not be the same as the registered mark unless the combination with the Hangul does not create new ideas besides the meaning of the English word itself and the mark is pronounced identically with the registered mark by general consumers or traders. In other words, the challenging mark "
" is in the form that the Hangul transliteration part is omitted from the Defendant's registered mark "
", but the combination with Hangul part ‘리바이네스’ does not create new ideas, and is recognized to be pronounced ‘리바이네스’ by general consumers or traders, which is identical with the registered mark, and thus the mark corresponds to a mark having sameness with the Defendant's registered mark based on common business sense. Accordingly, the subject request for trial is unreasonable as a positive confirmation trial which seeks confirmation that the Defendant's registered mark belongs to the scope of the Complainant’s registered mark, and the judgment of the Patent court which proceeded the subject trial without dismissing the trial has the fault of misunderstanding the law. Accordingly, the trial shall be dismissed, but this case is sufficient to be judged directly, so the judgment of the Intellectual Property tribunal shall be canceled and the total cost of litigation shall be borne by the Complainant who is the loser.
3. Discussion and Implications
In the past, precedents have been strictly interpreted in relation to the scope of sameness of trademarks, but Supreme Court Decision 2012HU2463 judged on September 26, 2013 judged that, in a trial for cancellation of a registered trademark not in use, ‘using a registered mark’ indicates a case of using a mark which is the same as a registered mark and it does not include a case of using a mark which is similar to a registered mark; however, ‘an identical mark’ includes not only a registered mark itself but also a mark which can be seen to be identical with the registered mark based on common business sense’, and the registered mark in question consists of 'CONTINENTAL' in English, and a transliteration of 'Continental' in Korean, and in a case that ‘a mark being used in practice’ has been used in a form of only the upper part of the registered mark being displayed, the mark corresponds to a use of a mark which can be seen to be identical with a registered mark, and thus broke the prior precedent by which the scope of the sameness of trademarks was strictly interpreted.
The current case is meaningful as an example of applying the judgment method of a Supreme Court decision to a confirmation trial for the scope of a right, not only a trial for cancellation of a registered trademark not in use. In the case of requesting for a trial, whether a mark or product is similar or not is generally the most important issue; however, one should also be sure to double check concerning the principle requirements so that the proceedings of a trial or suit which requires a lot of time and cost do not become pointless.