2001Hu1259 Nullification of Trade Mark Registration

by Supreme Court of Korea

Justices Byun Jae-seung (Presiding Justice), Song Jin-hun, Yoon Jae-sik, Lee Kyu-hong (Justice in charge)

Main Issues

Whether it causes change in the substantive rights to alter identification items such as name, address, ID number of registered owner (negative)

Summary of Decision

Item 1 of Paragraph 1 of Article 56 of the former Trademark Act (amended by Law No. 5355 of August 22, 1997) stipulates that, excluding the case of inheritances and other general successions, a transfer of trademark right must be registered in order for it to take effect. The alteration of identification items of trademark owner such as name, address, ID number is only for the purpose of conforming the contents of the registration with a substantive relationship in terms of identification items only to the extent of maintaining the identity of trademark owner and has nothing to do with the transfer of the trademark right. It cannot be said that, in principle, the trademark transfer takes effect or it conforms with a substantive relationship even though a trademark owner, concluding an agreement to transfer the trademark right, applied to alter identification items from his or her own to another's instead of applying for the transfer of trademark pursuant to such agreement.

Reference Provision

Item 1 of Paragraph 1 of Article 56 of the former Trademark Act (amended by Law No. 5355 of August 22, 1997)

Article 56 of The former Trademark Act (amended by Law No. 5355 of Augut 22, 1997) (Effects of Registration on Trademark Right and Exclusive License)

(1) The following matters shall not take effect without being registered:

1. Transfer (excluding a case of being transferred by inheritance or other general succession), change, or extinguishment by abandonment, renewal of duration, conversion of the classification of goods, addition of designated goods or restriction of disposal, of the trademark right;

2.~3. <omitted>

(2) omitted

Reference Cases

Supreme Court Decision 98Da60903 delivered on June 11, 1999 (Gong1999Ha 1369), Supreme Court Decision 99Da69983 delivered on May 12, 2000 (Gong2000Ha, 1400)

• Plaintiff, Appellee: Monfort Korea Beef Incorporated (Law Firm Barun Bupryul, Attorneys Shim Jae-doo and 8 others, Counsel for plaintiff-appellee)

• Defendant, Appellant: Con Agra Foods, Inc. (trade name before change: Con Agra, Inc.) (Attorneys Han Sang-ho and 9 others, Counsel for defendant-appellant)

• Judgment of the Court below: Patent Court Decision 99Hu9083 delivered on March 22, 2001

Disposition

The appeal shall be dismissed. All costs of this appeal are assessed against the defendant-appellant.

Reasoning

1. The judgment of the court below

According to the reasoning in the judgment by the court below, the evidence selected at the court provides that Monfort Korea, Inc. (hereinafter 'Monfort Korea') and the plaintiff, Monfort Korea Beef, are corporations respectively established on June 14, 1991 and March 15, 1993 under the law of the State of California, USA; after Monfort Korea applied for trademark registration (application date: January 16, 1992) for the registered trademark (registration #282549), it concluded an agreement with the plaintiff to transfer the trademark right at issue in this case, but it dissolved on April 22, 1994 without transfer registration pursuant to the agreement; on September 28, 1998 instead of applying for registration of the transfer of the trademark rights pursuant to the above agreement, Monfort Korea applied to alter identification items on the ground that it changed its corporation title to 'Monfort Korea Beef, Incorporated (plaintiff)' on March 17, 1993 and its address to 'Ventura Boulevard 21031 Woodland Hills 424 Suite California 91364 USA' on March 6, 1998; the Patent Office accepted Monfort Korea's application.

Based on the above fact finding, the court below held that the trademark registration under the title of the plaintiff does not show a clear process of change of rights due to the procedural flaw that it was made in the form of altering the title holder's identification items instead of transferring the trademark title as stated above, but the agreement between the first trademark holder Monfort Korea and the plaintiff to transfer the registered trademark at issue in this case and the appearance as a trademark holder which the plaintiff obtained through alteration of the identification items made the present registration conform with the substantive relationship. For these grounds, the court below rejected the plaintiffs' argument that the Patent Office erred in matters of standing by treating the plaintiff as a lawful party for the present case.

2. Judgment of this Court

First, we will examine the following issue on our own discretion.

Item 1 of Paragraph 1 of Article 56 of the former Trademark Act (amended by Law No. 5355 of August 22, 1997) stipulates that, excluding the case of inheritances and other general successions, a transfer of trademark right must be registered in order for it to take effect. The alteration of identification items of trademark owner such as name, address, ID number is only for the purpose of correcting the mistake or reflecting the change with respect to identification items on registration within the scope of maintaining the identity of trademark owner and has nothing to do with the transfer of the trademark right. (See Supreme Court Decision 98Da60903 delivered on June 11, 1999; Supreme Court Decision 99Da69983 delivered on May 12, 2000.) It cannot be said that, in principle, the trademark transfer takes effect or it conforms with a substantive relationship even though a trademark owner, concluding an agreement to transfer the trademark right, applied to alter identification items from his or her own to another's instead of applying for the transfer of trademark pursuant to such agreement.

However, considering the facts found by the court below that the trademark owner Monfort Korea agreed to transfer to the plaintiff the registered trademark at issue in this case; Monfort Korea, instead of applying for a transfer of trademark right pursuant to the above agreement, applied for alteration of identification items such as the name and address of the plaintiff, resulting in just changes of identification items on the registration under the title of the plaintiff, it cannot be said there is the effect of a trademark right transfer. Even though the plaintiff appears to be a trademark holder on the trademark registration, it cannot be said that the above registration for a change of identification items conforms with the substantive relationship by showing a relationship of rights and duties based on these circumstances. Therefore, the request for an adjudication on the side of the defendant against the plaintiff is unjustified in that a person other than the trademark right holder was assigned as a respondent for adjudication in this case where the trademark owner of the registered trademark is still Monfort Korea.

The court below erred in matters of standing by overlooking this critical procedural problem and going on to examine the substantive matter, so we don't have to review the grounds for appeal as to the substantive matter. But the judgment of the court below can be affirmed because, based on other ground, it reversed the adjudication of the tribunal that had nullified the registration of the trademark in this case on the ground that there are causes for nullification of the registered trademark as stated in Article 7 Paragraph 1 Items 4, 10, and 11 of the former Trademark Act.

3. Therefore, the appeal shall be dismissed, and all costs of this appeal are assessed against the losing party. This decision is delivered with the assent of all Justices who heard the appeal as per Disposition.

Source

• Supreme Court Decision 2001Hu1259 delivered on February 26, 2002, Supreme Court Library of Korea