【Main Issue and Holding】
In a case where a trademark owner filed an application for registration of a trademark similar or identical to a prior applied and registered trademark of another person before the filing date of the said trademark owner’s application for trademark registration, and used the said trademark on goods that are similar or identical to designated goods of the prior registered mark, whether such filing and use constitutes an infringement of the prior registered trademark regardless of whether the trial ruling invalidating registration of the subsequent registered trademark (affirmative) Whether the same legal doctrine is invariably applicable to patent rights, utility model rights, and design rights (affirmative)
【Summary of Decision】 (A) The Trademark Act provides that in a case where one intellectual property (IP) right is in conflict with other IP right, the first-to-file right, or the earlier created right, is given priority over the other, and it is reasonable to assume that such rule invariably applies to a trademark conflict. Therefore, in a case where a trademark owner filed an application for registration of a trademark similar or identical to a prior applied and registered trademark before the filing date of the said trademark owner’s application for trademark registration (hereinafter “subsequent registered trademark”) and used the subsequent registered trademark, without authorization of the owner of a prior mark, on goods similar or identical to designated goods of the prior registered mark, an exclusive right to the use of the subsequent registered trademark is no longer exercisable, and an infringement on the prior registered mark is established without regard to whether a trial ruling that invalidates registration of the subsequent mark has become final and conclusive or not. ① A trademark right holder holds the exclusive right to use the registered trademark in relation to designated goods (Article 89 of the Trademark Act), and a trademark right holder may seek an injunction requesting the prohibition or prevention of the use of a trademark similar or identical to the registered trademark on goods similar or identical to designated goods on which the registered trademark is used (Articles 107 and 108(1) of the said Act). ② The Trademark Act provides that where at least two applications for trademark registration are filed on different days with respect to the same or similar trademark to be used on the same or similar goods, only the first person who files an application may obtain registration of such trademark (Article 35(1)), and stipulates that “any trademark used for goods identical or similar to the designated goods, which is identical or similar to the registered trademark of another person (excluding any registered collective mark with geographical indication) based on the first to file” falls under trademarks that are prohibited from trademark registration (Article 34(1)7). As above, the Trademark Act clearly states that the determination of which trademark has senior rights is made on the basis of the filing date and that any trademark registered in violation thereof is subject to adjudication to invalidate trademark registration (Article 117(1)1). ③ Where a trademark right holder, an exclusive licensee or a non-exclusive licensee uses his or her registered trademark, in which case his or her use of the registered trademark is in conflict with another person’s patent right, utility model right or design right for which the application was filed prior to the filing date of an application for such trademark registration depending on how the trademark is used, he or she shall not use the registered trademark on designated goods in conflict with the relevant rights of others without the consent of the right-holder of a prior patent, etc. (Article 92 of the Trademark Act). In other words, in cases where a prior patent, etc. and a subsequent patent, etc. are in conflict, the right-holder of a prior patent, etc. may freely practice his or her right without consent of the owner of a subsequent mark, whereas in cases where the owner of a subsequent registered trademark uses the registered trademark on designated goods without consent of the right-holder of a prior patent right, etc., trademark infringement on the prior patent right, etc. is established. (B) Even though the purpose of protecting patent rights, utility model rights, and design rights differs from the purpose of protecting trademark rights in that such protection is granted in return for their contribution to industries as a prior invention and prior creation and to protect and encourage invention and creation, the above legal doctrine applies to cases concerning patent rights, utility model rights, and design rights, given that: (a) patent rights, utility model rights, and design rights are treated and protected similarly to trademark rights as all of them constitute registered intellectual property rights; and (b) the first-to-file rule, which stipulates that earlier registered or earlier created rights are given priority when intellectual property rights are in conflict with one another, is deduced from the provisions, system, and purpose of each law governing those rights as is derived from the Trademark Act.
For further questions on this ruling, contact Attorney Bom Lee for more information.