(1) Where a registered trademark falls under any of the following, a trial to revoke the trademark registration may be requested: <Amended on Oct. 31, 2023>
1. Where a trademark right holder causes the misunderstanding of the quality of goods or confusion with goods related to another person's business among consumers by willfully using a trademark similar to the registered trademark on the designated goods, or using the registered trademark or a similar trademark on goods similar to the designated goods;
2. Where an exclusive licensee or a non-exclusive licensee causes the misunderstanding of the quality of goods or confusion with goods related to another person's business by using a registered trademark or a trademark similar to the registered trademark on the designated goods, or goods similar to the designated goods: Provided, That the foregoing shall not apply where the trademark right holder pays considerable attention;
3. Where none of a trademark right holder, an exclusive licensee or a non-exclusive licensee has used the registered trademark on the designated goods in the Republic of Korea for at least three consecutive years without justifiable grounds before a trial to revoke the registered trademark is requested;
4. Where the registered trademark violates the latter part of Article 93 (1), and paragraphs (2), and (4) through (7) of the same Article;
5. Where similar registered trademarks belong to different respective trademark right holders due to the transfer of the trademark rights, and one of them causes the misunderstanding of the quality of goods or confusion with goods related to another person's business among consumers by using his or her registered trademark for the purpose of unfair competition on goods identical or similar to the designated goods of his or her registered trademark;5-2. Where one person among the right holder of a trademark that is registered under the proviso of Article 34 (1) 7 or Article 35 (6) and the persons who have consented to the registration of the trademark causes the misunderstanding of the quality of goods or confusion with goods related to another person's business among consumers by using his or her registered trademark for the purpose of unfair competition on goods identical or similar to the designated goods of his or her registered trademark;
6. Where a person who has the right to the registered trademark falling under Article 92 (2) requests a trial to revoke the trademark registration within five years from the date the relevant trademark is registered;
7. Where a collective mark falls under any of the following:(a) Where a member of the organization allows another person to use its collective mark in violation of its articles of incorporation, or causes the misunderstanding of the quality of goods or the source of a geographical indication, or confusion with goods related to another person's business among consumers by using its collective mark in violation of its articles of incorporation: Provided, That the foregoing shall not apply where the holder of the collective mark right pays due attention to supervise its members;(b) Where the organization is likely to cause the misunderstanding of the quality of goods or confusion with goods related to another person's business among consumers by amending its articles of incorporation under Article 36 (3) after it registers its collective mark and establishes its collective mark right;(c) Even where a third party causes the misunderstanding of the quality of goods or the source of a geographical indication, or confusion with goods related to another person's business among consumers by using its collective mark, the holder of the collective mark right willfully fails to take appropriate measures;
8. Where a collective mark with geographical indication falls under any of the following:(a) In cases of an application for registration of a collective mark with geographical indication, where the articles of incorporation of the organization actually prevents its members from joining the organization, such as prohibiting them from joining the organization or stipulating impracticable conditions for joining the organization, or allow a person ineligible to use such geographical indication to join the organization;(b) Where the holder of a collective mark right with geographical indication or a member of the organization causes the misunderstanding of the quality of goods or confusion on the source of the geographical indication by using the collective mark in violation of Article 223;
9. Where a certification mark falls under any of the following:(a) Where the holder of the certification mark right permits the use of the certification mark, in violation of the articles of incorporation or the rules submitted pursuant to Article 36 (4);(b) Where the holder of the certification mark right uses the certification mark on his or her own goods, in violation of the proviso of Article 3 (3);(c) Where a person permitted to use the certification mark right allows another person to use such mark, in violation of the articles of incorporation or the rules, or causes confusion concerning the quality of goods, the place of origin, methods of production or other characteristics among consumers by using the certification mark in violation of the articles of incorporation or the rules: Provided, That the foregoing shall not apply where the holder of the certification mark right pays due attention to supervise any person permitted to use the certification mark;(d) Where the holder of the certification mark right fails to make appropriate measures even though he or she is aware that a third party who fails to obtain permission to use the certification mark causes confusion concerning the quality of goods, the place of origin, methods of production or other characteristics among consumers by using the certification mark;(e) Where the holder of the certification mark right actually prevents a person eligible to use the certification mark right from using the certification mark right without justifiable grounds in accordance with the articles of incorporation or the rules, or stipulates impracticable conditions for using the certification mark right in the articles of incorporation or the rules.
(2) Where at least two designated goods bearing the registered trademark exist when a trial to revoke trademark registration is requested on the grounds that the registered trademark falls under paragraph (1) 3, a trial to revoke trademark registration may be requested in relation to some of the designated goods.
(3) Where a trial to revoke trademark registration is requested on the grounds that the registered trademark falls under paragraph (1) 3, no trademark right holder may be exempted from the revocation of trademark registration for the designated goods related to such lawsuit unless the requested person proves that he or she has legitimately used the relevant registered trademark on at least one designated goods related to the trial to revoke trademark registration in the Republic of Korea within three years before the date the trial is requested: Provided, That the foregoing shall not apply where the requested person has proved justifiable grounds for using a registered trademark which he or she has not used.
(4) Even if the fact that constitutes grounds for requesting a trial of revocation ceases to exist after the trial has been requested on the grounds falling under paragraph (1) (excluding subparagraphs 4 and 6 of the same paragraph), the absence thereof shall not affect the grounds for revocation.
(5) Any person may request a trial to revoke trademark registration under paragraph (1): Provided, That a trial to revoke trademark registration on the grounds that the registered trademark falls under paragraph (1) 4 and 6 may be requested by an interested person only.
(6) Where a trial decision to revoke trademark registration becomes final and conclusive, such trademark rights shall be extinguished henceforth: Provided, That where the trial decision to revoke the trademark registration on the grounds that the registered trademark falls under paragraph (1) 3 becomes final and conclusive, the trademark rights shall be deemed extinguished on the date the trial is requested.
(7) Where a trial to revoke trademark registration under paragraph (1) is requested, the presiding judge shall notify the exclusive licensee of the relevant trademark rights and other persons who have registered rights to the trademark of the purpose thereof.