제척기간이 도과한 무효 상표의 하자치유가능성에 관한 고찰 = Elapse of Period of Exclusion and Power of Trademark

다국어 초록 (Multilingual Abstract)

When selecting a mark for trademark application, the first thing the applicant considers is whether the mark is already registered as a trademark. The existence of the registered trademark can be the ground for rejection of the later-filed trademark application. Even if such application becomes registered, the previously registered trademark can be the ground for invalidation or cancellation of this subsequent trademark. The use of such subsequently registered trademark can be deemed an abuse of right, becoming the subject of litigation.
As such, the order of the trademark application can determine the trademark's enforceability, so one can say that the mechanical relationship is rather important for trademark rights. The issue then is the interpretation of Article 122 of the Trademark Act, for it deals with the provision of the exclusion period. With regard to the ideal of legal certainty pursued by the Trademark Act, the issue remains whether the lapse of exclusion period can be interpreted as having being designed to validate the invalid right, i.e. the effect of creating rights.
The introduction of electronic application system has raised the possibility of identifying the same or similar marks previously registered and preventing many problems that occur at the application stage. However, the Supreme Court's centralized examination of both Class 30 and Class 43 in practice has lead to an unforeseen problem of the trademark registration being subject to invalidation, due to the existence of the subsequent, same or similar registered trademark or service mark.
In a particular case where the Class 43 application and registration were made, followed by Class 30 application and registration, and the subsequent Class 43 application and registration after the expiration of the preceding Class 43 service mark, the issue was whether the exercise of Class 43 service mark in litigation is the abuse of right. The application of the new centralized examination allowed the Class 30 trademark to function as the preceding trademark for the Class 43 service mark. If the exclusion period has lapsed only for the Class 30 trademark, then the Class 43 service mark's right will be in a tremendously unstable position.
This paper focuses on resolving the issue of whether the trademark with lapsed exclusion period can have the ability to invalidate a subsequent trademark. Especially with the insight from the Tokyo District Court which ruled that enforcing the trademark right can still be an abuse of right even if the exclusion period has lapsed, this paper intends to apply this decision's jurisprudence in denying the remedy of defects in invalid administrative act.
By construing the lapse of exclusion period as merely having the passive effect of being incontestable to any trademark invalidation trial, this paper will address the necessity in denying any invalid trademarks from having the ability to create certain rights, from the perspective of legal certainty and the ideal of equity.