[2] The meaning of "use of registered trademark" of a trademark right holder, which is a prerequisite to seek compensation for business losses caused by infringement of trademark rights

[3] The case holding that it is difficult to deem that a trademark right holder suffered a business loss on the ground that the trademark right holder merely used the registered trademark for goods similar to some of the designated goods and cannot be deemed to have actually engaged in business activities such as producing and selling the goods by using it in reality on the designated goods itself or on the goods that can be seen to be the same in light of

[2] Article 67(2) and (5) of the Trademark Act, like Article 67(1) of the same Act, provides that the injured party’s claim and burden of proof regarding damages arising from tort shall be mitigated, and it does not purport to recognize the injured party’s liability to compensate for damages even in cases where it is clear that no damages exist. Thus, a trademark right holder who seeks compensation for business losses pursuant to the above provision on the ground that business interests were infringed by an infringement of trademark rights needs to assert and prove that he/she has used the registered trademark for his/her own business. Here, a case where the registered trademark is used refers to the case where the registered trademark is actually used on the designated product itself or on the goods that can be seen as the same as the registered product in light of the generally accepted sense of the trade society

[3] The case holding that it is difficult to view that a trademark right holder suffered a business loss on the ground that the trademark right holder used the registered trademark for goods similar to some of the designated goods and cannot be deemed to have actually carried out business activities such as producing and selling the goods by using it in reality on the designated goods itself or on the goods that can be seen to be the same in light of the social norms

1. As to the claim for damages

A. We examine the Defendants’ final appeal regarding the part in favor of the Plaintiff in the judgment of the first instance ex officio as to the lawfulness of the final appeal.

According to the records, the plaintiff filed a lawsuit against the defendants, such as a claim for damages, injunction, and claim for explanation advertisement, claiming the amount of damages of KRW 1,024,304,841 on the ground of infringement of trademark rights, and damages for delay thereof. The court of first instance recognized the defendants' liability for damages, and rendered a judgment that partly admitted the amount of damages of KRW 40,000,000 and damages for delay thereof, and only the plaintiff appealed the part of the plaintiff's appeal, and rendered a judgment ordering the defendants to pay the amount of damages of KRW 60,000 among the part against the plaintiff in the first instance judgment against the plaintiff.

In a case where the plaintiff appealed against the judgment of the court of first instance that partly accepted the plaintiff's claim, but the defendants did not appeal or incidental appeal, the part in favor of the plaintiff in the judgment of first instance was transferred to the appellate court due to the plaintiff's appeal, but was excluded from the scope of the judgment of appellate court. Therefore, if the appellate court partly accepted the plaintiff's appeal and partly revoked the part in favor of the plaintiff in the judgment of first instance and accepted the plaintiff's claim against the part in favor of the plaintiff in the judgment of first instance, it is limited to the part in the judgment of first instance, which is against the plaintiff in the judgment of first instance, and the part in favor of the plaintiff in the judgment of first instance cannot be the subject of the defendants' appeal. Thus, the defendants who did not appeal against the judgment of first instance in favor of the plaintiff in part of the judgment of first instance cannot file an appeal against the part in favor of the plaintiff in the judgment of first instance (see, e.g., Supreme Court Decisions 201Da63131, Feb. 5, 2002; 205Da16607).

Therefore, in this case, the appeal filed by the Defendants against the Plaintiff’s winning portion in the first instance trial is unlawful as a final appeal against the portion that cannot be the subject of final appeal.

B. Next, we examine the grounds for appeal.

(1) As to the similarity of trademarks

In the case of so-called combined trademarks consisting of more than one symbol, letter, figure, color, etc., the similarity of trademarks should be determined in principle by the appearance, name, and concept arising from the entire composition of the trademark. However, unless the appearance, name, or concept to the extent that each constituent element can function as an identification mark of one's goods by combining each constituent element is formed or each constituent element is indivisiblely combined, the similarity of trademarks may be determined by the appearance, name, and concept arising from the division or extraction of only a part that constitutes the essential component of the entire component, unless it is considered natural in the transaction (see, e.g., Supreme Court Decisions 92Hu254, Aug. 18, 1992; 2008Hu1470, Oct. 9, 208).

Examining the reasoning of the judgment below in light of the above legal principles and records, since the appearance of the trademark 1 through 4 of this case and the defendant's implementation mark in the judgment of the court below, which are the plaintiff's registered trademark, cannot be seen as being indivisiblely combined with the trademark 1 through 4 of this case and the defendant's implementation mark in the name of the name, the defendant's implementation mark can be briefly separated from the trademark 1 of this case and the trademark 1 of this case and the trademark 2, 3, 4 of this case and the trademark 1 of this case and the trademark 1 through 4 of this case and its mark are identical or similar to the trademark 1 of this case and the trademark 1 to 4 of this case and the trademark 1 of this case cannot be seen as being separated from the trademark , and there is no error in the misapprehension of legal principles as to the similarity of trademarks as alleged in the grounds of appeal by the defendants.

(2) As to the occurrence of damages

Article 67(2) and (5) of the Trademark Act, like Article 67(1) of the same Act, provides that the injured party’s claim and burden of proof regarding damages arising from illegal acts shall be mitigated, and it shall not be deemed that the injured party is liable to compensate for damages even in cases where it is clear that no damage has occurred. Thus, a trademark right holder who seeks compensation for business losses pursuant to the above provision on the ground that the business interest has been infringed by the infringement of trademark right, needs to assert and prove that he/she has used the registered trademark as his/her own business (see Supreme Court Decisions 96Da4319, Sept. 12, 1997; 2003Da62910, Jul. 22, 2004). Here, the term “where a registered trademark is used” refers to cases where the registered trademark is used for designated goods itself or on goods that can be seen as identical to the registered goods in light of the common sense of the trading society, and it cannot be deemed that the designated goods have been used solely on goods similar to the designated goods.

According to the facts duly admitted by the court below, the designated goods of the trademark 1 of this case are influents and sludges such as synthetic taxation for clothing, tax amount, clean, water hold, garnion, garment, garment for clothing, cryp agents, solvents for glass, tobrushes, brushes, chemical brushes, creambrus, creambrus, etc. In fact, the plaintiff used the trademark 1 of this case for manufacturing and selling cosmetics that cannot be deemed as goods identical to the above designated goods in light of the social norms of the transaction society. In the case of the trademark 2 to 4 of this case, it is difficult to find the records that the plaintiff conducted business activities such as manufacturing and selling products using the above trademark.

Thus, although the defendants jointly affixed and sold the trademark of this case 1 to 4 in the cosmetics of this case, which are the goods of the same kind as the plaintiff's goods to which the trademark of this case is attached and sold, the plaintiff infringed the plaintiff's 1 to 4 trademark of this case by attaching and selling the defendant's implementation mark similar to the trademark of this case 1 to 4, and cosmetics which are the goods of this case where the trademark of this case 1 is actually used correspond to those similar to "fire equipments, cream, etc." among the designated goods of the trademark of this case 1, the plaintiff is not deemed to have actually used the trademark of this case 1 to 4 in the designated goods itself or goods which can be seen as identical to the above in light of social norms in trade, so long as it is not recognized that the

Nevertheless, the court below, on the premise that the defendants' act of manufacturing and selling the cosmetics of this case caused business losses to the plaintiff, additionally recognized the defendants as liability for damages in excess of the plaintiff's winning part of the judgment of the court of first instance. The judgment of the court below in this part is erroneous in the misapprehension of legal principles as to liability for damages caused by infringement of trademark rights, which affected the conclusion of the judgment. The defendants' ground of appeal pointing this out has merit, and the plaintiff's ground of appeal disputing the illegality of calculating the amount of damages on the premise that the defendants' liability

2. As to the claim for prohibition and the claim for explanation advertisement

According to the records, among the part against the plaintiff in the judgment of the court below, the plaintiff only filed an appeal against the part of KRW 200,000,000 against the plaintiff and did not appeal against the part of the claim for prohibition and explanation advertisement. Thus, the plaintiff's assertion on this part is not a legitimate ground for appeal.

3. Conclusion

Therefore, among the judgment of the court of first instance, the part accepting the Plaintiff’s claim in excess of the winning part of the judgment of the court of first instance is reversed, and that part of the case is remanded to the court below for a new trial and determination. The Defendants’ remaining appeals are all dismissed. The Plaintiff’s appeal is all dismissed. It is so decided as per Disposition by the assent of all participating Justices

Justices Jeon Soo-ahn (Presiding Justice)