97Hu860 Nullification of Trade Mark Registration

by the Supreme Court of Korea

Justices Lee Yong-woo (Presiding Justice), Kim Hyoung-sun, Lee Yong-hun (Justice in charge), Cho Moo-jeh

Main Issues

1. The meaning of 'trademarks which are contrary to public order or morality' under Item 4 of Paragraph 1 of Article 7 of the Trademark Act
2. Whether the unauthorized registration of a signature identical to that signed on the artwork of a widely known and prominent painter is within the purview of Item 4 of Paragraph 1 of Article 7 (affirmative) and whether the surviving family members are interested parties that are allowed to file a claim for a trademark nullification trial on trademark registration (affirmative)
3. A case where the judgment of the court below that cites the claim to nullify a trademark's registration filed by Picasso's bereaved family as to the unauthorized registration of a trademark that is identical to the widely known signature of Picasso was approved

Summary of Decision

1. 'Trademarks which are contrary to public order or morality' under Item 4 of Paragraph 1 of Article 7 of the Trademark Act includes not only situations where the composition of such trademark or the meaning or context conveyed to the general public in cases where the trademark is used on a designated product goes against public order or good customs in accordance with morality of ordinary citizens, but also includes situations where the act of registration of such trademark will violate fair product distribution as well as morality such as the international trust and business ethics.
2. It may be difficult to view a signature on artwork as an artwork in itself, as it is only used as a means to show that the product is the artwork of the artist and is not in itself an expression of artistic emotion or ideals. But this sort of signature is being marked to clearly attain the responsibility for the context of the artwork according to an artist's right to indicate one's real name under Paragraph 1 of Article 12 of the Copyright Act, showing the intention reverting social appraisement of the artwork to the painter. In situations where the signature is that of a widely known and prominent artist, and is widely known because of its use in the artist's artwork, an unauthorized registration of a trade mark that is identical or similar goes against social morality, for it detracts from the reputation of the artist and poses harm not only to the appraisal of the artist's art work, his honor but also the reverence and respect for the deceased of the bereaved family members of the artist. The unauthorized registration may infringe upon the distribution order of a fair and creditable product because such trademarks free-ride on the fame of the deceased and as a result has unfairly absorbed the consumer's purchase. So such trademark can be properly viewed as within the purview of Item 4 of Paragraph 1 of Article 7 of the Trademark Act. In such a case, had the artist been alive, it amounts to an infringement of personal rights as an artist to use the artist's signature indicating artworks as his or her own by means of unauthorized registration and proclamation. Under Article 96 and Paragraph 2 of Article 14 of the Copyright Act, bereaved family members may take measures to prohibit infringement of personal right of copyright owner. Consequently, bereaved family members may not only request the prohibition of the use of trademarks that infringes upon the personal rights of the deceased and their own reverence and respect for the deceased, but also bring a claim for a nullity adjudication on trademark registration.
3. A case approving the claim for a nullification of the trademark registration filed by Picasso's bereaved family as to the unauthorized registration of a trade mark that is identical to the widely known signature of Picasso.

Reference Provisions

1. Item 4 of Paragraph 1 of Article 7 of the Trademark Act
2. Item 4 of Paragraph 1 of Article 7, Item 1 of Paragraph 1 of Article 71 of the Trademark Act, Paragraph 1 of Article 12, Paragraph 2 of Article 14 and Article 96 of the Copyright Act
3. Item 4 of Paragraph 1 of Article 7, Item 1 of Paragraph 1 of Article 71 of the Trademark Act, Paragraph 1 of Article 12, Paragraph 2 of Article 14 and Article 96 of the Copyright Act

Article 7 of Trademark Act (Unregistrable Trademark)

(1) Notwithstanding Article 6, a trademark falling under any of the following Subparagraph shall be unregistrable:

1.~3. <omitted>

4. trademarks which are contrary to public order or morality

5.~14. <omitted>

(2) ~ (5) omitted

Article 71 of Trademark Act (Nullity Trial on Trademark registration)

(1) If a trademark registration or additional registration of designated goods falls under any of the following Subparagraphs, an interested person or examiner may request a nullity trial. In this case, if there are two or more designated goods of the registered trademark, it may be requested by each designated good.

1. Where a trademark registration or additional registration of the designated goods is in contravention of the provisio of Article 3. Article 6 through 8, the latter part of Article 12 Paragraph 2, Article 12 Paragraph 5, 7 through 9, Article23 Paragraph 1 SubParagraph 4 of this Act, or Article 25 of the Patent Act which is applicable mutatis mutandis under Article 5.

2. ~ 4. omitted

(2)~(4) <omitted>

Article 12 of Copyright Act (Right to Indicate Author's Name)

(1) The author shall have the right to indicate his real name or alias on the original or reproduction of his work public.

(2) <omitted>

Article 14 of Copyright Act (Inalienability of Author's Moral Rights)

(1) <omitted>

(2) Even after the death of the author, no person who exploits his work shall commit an act which would be prejudicial to authors' moral rights if he was alive; provided, that such act is deemed to have not defamed the honor of the author in light of the nature and extent of the act, and in view of the prevailing social norms.

Article 96 of Copyright Act (Protection of Authors' Moral Profits after Death)

After the death of an author, his bereaved family (the surviving spouse, children, parents, grandchildren, grand parents, brothers and sisters of the dead author) or the executor of his will may, under Article 91 demand a person who has violated or is likely violate the provision of the Article 12 Paragraph 2 in respect of the work concerned, or, under Article 95, demand a person who has infringed author's moral rights intentionally or by negligence, or who violated the provision of Article 41 Paragraph 2 for restoration of his reputation.

Reference Cases

1. Supreme Court Decision 96Hu2296 delivered on October 14, 1997 (Gong1997Ha, 3467), Supreme Court Decision 97Hu1306 delivered on February 24, 1998 (Gong1998Sang, 908), Supreme Court Decision 97Hu3623 delivered on December 24, 1997 (Gong2000Sang, 309)
2. Supreme Court Decision 87Hu3623 delivered on April 28, 1987 (Gong1987, 891), Supreme Court Decision 95Hu1401 delivered on March 12, 1996 (Gong 1996Sang, 1265), Supreme Court Decision 95Hu1555 delivered on April 26, 1997 (Gong1996Sang, 1731), Supreme Court Decision 97Hu1931 delivered on October 13, 1998 (Gong1998Ha, 2692)

• Claimant, Appellee: Anparoma Ruiz Picasso and 1 other

• Respondent, Appellant: Dawin International Ltd. (Patent attorneys Lee Young-pil and 1 other, Counsel for respondent-appellant)

• Adjudication of Intellectual Property Office: Intellectual Property Office Adjudication 95Hangdang57, 58, 60 dated February 27, 1997

Disposition

The appeal shall be dismissed. All costs of this appeal shall be assessed against respondent.

Reasoning

The grounds for appeal are examined as follows.

'Trademarks which are contrary to public order or morality' under Item 4 of Paragraph 1 of Article 7 of the Trademark Act includes not only situations where the composition of such trademark or the meaning or context conveyed to the general public in cases where the trademark is used on a designated product goes against public order or good customs in accordance with morality of ordinary citizens (see Supreme Court Decision 96Hu2296 delivered on October 14, 1997, Supreme Court Decision 97Hu1306 delivered on February 24, 1998.), but also includes situations where the act of registration of such trademark will violate fair product distribution as well as morality such as the international trust and business ethics.

It is alleged in the grounds for appeal that it is difficult to view a signature on artwork as an artwork in itself, as it is only used as a means to show that the product is the artwork of the artist and is not in itself an expression of artistic emotion or ideals. However, this sort of signature is being marked to clearly attain the responsibility for the context of the artwork according to an artist's right to indicate one's real name under Paragraph 1 of Article 12 of the Copyright Act, showing the intention reverting social appraisement of the artwork to the painter. In situations where the signature is that of a widely known and prominent artist, and is widely known because of its use in the artist's artwork, an unauthorized registration of a trade mark that is identical or similar goes against social morality, for it detracts from the reputation of the artist and poses harm not only to the appraisal of the artist's art work, his honor but also the reverence and respect for the deceased of the bereaved family members of the artist. The unauthorized registration may infringe upon the distribution order of a fair and creditable product because such trademarks free-ride on the fame of the deceased and as a result has unfairly absorbed the consumer's purchase. So such trademark can be properly viewed as within the purview of Item 4 of Paragraph 1 of Article 7 of the Trademark Act.

Furthermore, in such a case, had the artist been alive, it amounts to an infringement of personal rights as an artist to use the artist's signature indicating artworks as his or her own by means of unauthorized registration and proclamation. Under Article 96 and Paragraph 2 of Article 14 of the Copyright Act, bereaved family members may take measures to prohibit infringement of personal right of copyright owner. Consequently, bereaved family members are justified not only in requesting the prohibition of the use of trademarks that infringes upon the personal rights of the deceased and their own reverence and respect for the deceased, but also in bringing a claim for a nullification of trademark registration.

Upon examining reasoning for the adjudication of Intellectual Property Office in light of records and the above legal principle, intellectual Property Office found that the appellee, without the consent of Picasso himself, his bereaved family, or any copyright owner, applied for registration of a trademark that is identical to the widely recognized signature of the Spanish-born French artist Pablo Ruiz Picasso (1881~1973, hereinafter referred to as 'Picasso') who is widely known and prominent as a cubist artist. It held that the appellant, the surviving family members of Picasso (Picasso's daughter and grandson), are within the purview of interested parties who may make a claim for nullification of the trademark registrations and nullified the registrations on the grounds that the registered trade mark in question was within the category of trademarks which are contrary to public order or social policy under Item 4 of Paragraph 1 of Article 7 of the Trademark Act. Above ruling is consequently just and proper. There are no reversible errors in matters of law such as misinterpretation of the legal principle, omission of judgment, incomplete investigation, or in matters of fact against the rules of evidence in regards to an interest or the reasons for a nullification trial on trademark registration that has affected the conclusion of the trial. The Supreme Court cases that were indicated in the grounds for appeal are concerning different matters and they are inappropriate to apply to this case. The grounds for appeal cannot be accepted.

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

Source

• Supreme Court Decision 97Hu860, 877, 884 delivered on April 21, 2000, Supreme Court Library of Korea