상표 ‘REVANESSE’의 권리범위확인심판청구의 기각에 대하여

특허심판원 2016당1614, 특허법원 2018허1264 및 대법원 2018후11698

A Canadian company, Prollenium, is the owner of a Korean trademark registration for “REVANESSE” in class 03 (cosmetic gel in prefilled syringes for use in cosmetic treatment procedures) . Later, a Korean company, BR Pharm, had used ‘Reviness ’ on the same products. According to the Korean practice and regulations, Prollenium filed a trial for declaratory judgement on infringement of ‘Reviness ’ over ‘REVANESSE’. The Trademark Office dismissed the trial, reasoning that the BR Pharm’s trademark ‘Reviness’ is not similar to the Prollenium’s registered trademark ‘REVANESSE’. Prollenium filed an appeal against the PTO’s decision before the Patent Court. The Court reversed the decision. The Court decided that the trademark ‘Reviness ’ is similar to the registered trademark ‘REVANESSE’. BR Pharm filed a petition with the Korean Supreme Court. BR Pharm alleged that the trial should have been dismissed because they had obtained a registration for ‘Reviness리바이네스’ (‘리바이네스’ is a Korean transliteration of ‘Reviness ’). The Supreme Court accepted BR Pharm’s allegations. However, the junior trademark of ‘Reviness리바이네스’ was filed after the trial was filed. In other words, the junior mark had not existed at the time of filing the trial of declaratory judgement over the senior mark. This is one of the worst decisions delivered by the Supreme Court.