상표법상 불사용취소심판에 있어서 웹사이트상 광고와 접속이 등록상표의 사용에 미치는 영향

Abstract

Under Article 73, Paragraphs 1, Item 3 of the Trademark Act, where a request for cancellation of trademark registration based on non-use is filed by a third party, the registration of such trademark may be cancelled for the reason of non-use unless the holder of the trademark right proves the following: (i) Within three years prior to the registration of the request for cancellation, (ii) in Korea, (iii) any of the holder of a trademark right, exclusive licensee or non-exclusive licensee, (iv) in connection with any of the designated goods pertaining to the request, (v) has used the registered trademark. In a concrete case, is a foreign company who holds a registered trademark in Korea, considered to be sufficiently using the registered trademark as far as the company's website contains the advertisement even if the company has never sold such goods in Korea? whether a certain advertisement is the use of a registered trademark in Korea is determined in a comprehensive manner in consideration of all relevant factors. In Japan, the following judgment rendered by the Intellectual Property High Court is an example of the case in which an advertisement that had been posted on a website was not recognized as the use of a registered trademark (December 20, 2005 Judgment of the Intellectual Property High Court, 2005 (Gyo-ke) No.10095): "The following facts are found: the Defendant has been posting advertisements relating to the provision of the designated goods "pizza" on its website; said website can be accessed from Japan; and the website can be immediately located if searched by several Japanese search engines by using the word constituting the registered trademark. However, said website is set up on a server in the country of the Defendant, and in addition, all contents thereof are indicated in English, and thus it cannot be recognized that the website is intended for Japanese consumers. Although said website can be accessed from Japan and is searchable by Japanese search engines, this fact is a matter of course as a website on the internet. It cannot be asserted that, based on this fact, the advertisement through said website falls under the use of the registered trademark in Japan." Reviewing the above case, it is important to prove that there are some relations between the advertisement of a registered trademark on the internet website and domestic consumers(Domestic relations, Inlandsbezug in Germany) in order to avoid the cancellation of a trademark registration based on non-use.