Executive Summary
In Patent Court Decision No. 2019 Heo 7740, rendered on May 15, 2020, it was ruled that an applicant’s intent-to-use was determined in a cancellation proceeding based on a non-use trademark. The plaintiff in this case, who sells ‘umbrellas and beach umbrellas’ with the trademark , asserted that the defendant, who has already been the trademark holder of the designated goods, filed the trademark without any intent-to-use and requested a trial to invalidate the registered trademark against the defendant based on Articles 3 and 117(1)(i) of the Korean Trademark Act. However, the Patent Trial and Appeal Board considered the defendant to have filed and registered the patent to use the trademark in the fashion industry, and thus the plaintiff’s request for cancellation was initially dismissed. However, the plaintiff filed an appeal against this ruling.
In the case, the appeals tribunal confirmed that a person who intends to register a trademark should represent an intent-to-use according to Article 3 of the Trademark Act. The appeals tribunal elaborated that a party without any intent-to-use should not obtain the trademark according to Article 54 of the Trademark Act. Therefore, the trademark registration was invalidated based on Article 117(1)(i) of the Trademark Act even though the trademark had been registered. Further, the appeals tribunal stated that the purpose of the Trademark Act is to protect the reputations of businesses represented by trademarks, and the law serves to prevent non-practicing entities from abusing trademarks. The appeals tribunal further elaborated that the intent-to-use a trademark should be determined by external circumstances (i.e. extrinsic evidence), because intent represents a subjective and internal purpose. The appeals tribunal also pointed out that strictly applying this to registration weakens the basis for the principle of registration. Therefore, the appeals tribunal rendered a decision that whether or not an applicant has filed and registered a trademark with no-intent-to use cannot be assumed in haste, but should be evaluated strictly and carefully based on objective evidence in consideration of the fact that the Trademark Act does not require any statement or explanation about intent-to-use a trademark in the application for trademark registration. In other words, a trademark examiner should decide to grant trademark registration if he/she fails to discover any ground for rejection (Article 68 of the Trademark Act), and that the trademark does not stipulate any invalidation rule other than indirectly forcing a trademark user to initiate cancellation proceedings against the trademark holder for the non-use trademark.
Although the trademark of the defendant was once challenged in a cancellation proceeding due to non-use for the designated goods after the previously registered trademarks had been filed and registered for the designated goods of ‘umbrellas and beach umbrellas,’ it was hard to prove that the defendant had filed the application only to occupy the trademark without any intent to use. Accordingly, the appeals tribunal dismissed the plaintiff’s request in consideration of various other circumstances.