상표불사용사실의 증명책임에 관한 연구 - 불사용취소심판에 의하여 취소된 상표의 심사를 중심으로

• Published in: 지식재산연구 Vol. 1; no. 1; pp. 86 - 110
• Main Authors: 이익희, Lee Ick-hi
• Format: Journal Article
• Language: Korean
• Published: 한국지식재산연구원 30.06.2006
• Subjects: Trademark Law Civil Verification Liability Nonuse of Trademark verification Cancellation of a Registrated Trademark; Trial for Cancellation of a Registrated Trademark by Reason of Nonuse
• ISSN: 1975-5945

In Korean Trademark Act, a trademark that is identical or similar to the existing trademark cannot be registered to the designated goods when not more than a year has elapsed since the date on which the trademark right expired (Article 7 (1) (viii) under the Trademark Act). However, even a trademark that is identical or similar to the existing trademark can be registered where it has not been used within one year from the elapsed date, (Article 7 (4) (i) under the Trademark Act). When applying the Article 7 (4) (i) to a case that the existing trademark has been cancelled by the trial decision for cancellation of a registered trademark by reason of nonuse, there must be some different views. Under the current regulation, in order to make a request for a trial for cancellation of a registered trademark due to nonuse, you should confirm the nonuse of the registered trademark for three years from the requesting date. However, as I mentioned above, to register a trademark that is identical or similar to the existing trademark, you should verify the nonuse of the registered trademark for one year from the elapsed date, As the nonuse of the trademark has not been verified from the requesting date to the date of final decision by the IP Tribunal, it may not be suitable for applying the Article 7 (4) (i). The Article 8 (5) also states that only the person requesting the cancellation trial may obtain trademark registration for the trademark that is identical or similar to the registered trademark that has been extinguished because of goods that are identical or similar to the designated goods of the registered trademark that has been extinguished for a period of three months after the day when the trial decision on the cancellation of a trademark registration has become final. On the contrary, however, when you file an application within a year from three months later at the same condition, you should verify the nonuse of the trademark. In this case, it would be almost impossible for you to verify the nonuse of the trademark. Instead it would be much easier for the original owner of the trademark to verify the nonuse of the trademark. Therefore, in order to fully achieve the objectives of the Article 8 (5), I believe it would be more reasonable to ease the responsibility for verifying the nonuse of the trademark by the new applicant. Furthermore, since this is directly relating to origination and extinguishment of a right, it should have integrity.