Defendant

Defendant

Kim Jong-hwan (prosecution) and Park Jae-young (Trial)

Attorney Park Do-young

Seoul Southern District Court Decision 2016Gohap1571 Decided February 9, 2017

The judgment of the court below is reversed.

Defendant shall be punished by a fine of KRW 2,000,000.

If the defendant fails to pay the above fine, the above defendant shall be confined in a workhouse for the period calculated by converting 100,000 won into one day.

The defendant shall be ordered to pay an amount equivalent to the above fine by provisional payment.

1. Summary of the grounds for appeal (misunderstanding of legal principles or factual errors);

① As indicated in the facts charged, the Defendant sold the visibility attached to ○○○○○○○ brand (hereinafter “instant trademark”) of the victim Nonindicted Co. 1 (hereinafter “victim Co., Ltd.”) as indicated in the facts charged. However, the said victim Co., Ltd. granted a non-exclusive license to Nonindicted Co. 2 (hereinafter “Nonindicted Co. 2”) by using the designated trademark as the visual range. As long as the instant visibility was supplied after paying the reasonable price to Nonindicted Co. 2, the Defendant’s trademark right to the victim was achieved by accomplishing its purpose, it cannot be deemed that the trademark right of the victim was infringed by the Defendant’s sales, etc. thereafter.

(2) Even if the Defendant’s visual sales constituted an infringement on the trademark right of the victim company, the Defendant did not have intention to do so.

Nevertheless, the court below rendered a guilty verdict against the defendant. The court below erred by misapprehending the legal principles as to the effect of trademark rights, or by misapprehending the legal principles.

2. Determination

A. Ex officio determination

The grounds for appeal by the defendant shall be considered ex officio prior to the judgment.

In the first instance trial, the prosecutor applied for changes in the indictment of this case as stated in the 2. B. B., and this court permitted the changes in the subject of the judgment, and thus the judgment of the court below is no longer maintained.

However, the lower court’s determination of facts and misapprehension of legal principles still are subject to the determination of this court, despite the above reasons for ex officio reversal.

B. The revised facts charged

The Defendant, as a de facto representative of online sunset sales business (trade name omitted) (English name omitted). From September 2012 to April 8, 2016, the Defendant violated the trademark right of the victim by selling online sunset or open market, etc., which was supplied by Nonindicted Company 2 and sold to Nonindicted Company 2 the non-exclusive license to Nonindicted Company 2 on the condition that the trademark right holder can use the trademark in the event that the Defendant sold in the store agreed with the victim,” in violation of the foregoing agreement, at the office of △○○○○○ brand, etc. (trade name omitted) in Seoul (name omitted) from around 201 to April 8, 2016.

C. Judgment on misconception of facts or misapprehension of legal principles

The defendant argued to the effect similar to that of the grounds for appeal, and the court below rejected the defendant's assertion in detail by stating in detail the decision.

(1) misunderstanding of legal principles - Whether trademark exhaustion theory is applied or not

Where a person, such as a trademark right holder, who has a right to use the trademark properly transfers goods bearing a registered trademark in Korea, the trademark right for the goods concerned is so advanced as to achieve its purpose, and the trademark right thereby does not extend to the use, transfer or lease of the goods concerned (see Supreme Court Decision 2002Do3445, Apr. 11, 2003).

However, according to the evidence duly adopted and examined by the court below, it can be acknowledged that the non-indicted 2 company sold the instant visibility without the prior consent of the victim company that is the trademark right holder, and online sunset operated by the defendant between the victim company and the non-exclusive licensee and the non-exclusive licensee and the non-exclusive licensee, is not included in the ordinary sales place as prescribed in Article 4 (Scope of Use and Sale of Trademark) of the Trademark Use Agreement concluded on July 1, 2010, and the agreement concluded on June 28, 2015, which was concluded on June 28, 2015 (hereinafter "the instant sales place restriction agreement"). However, even if the non-indicted 2 company is a non-exclusive licensee of visual category, if the instant visibility was sold in violation of the above sales place restriction agreement with the trademark right holder, it cannot be deemed that the instant trademark was properly used within the scope of the non-exclusive license, and accordingly, the instant visual sales of the non-indicted 2 company constitutes infringement of the trademark right of the victim company. Accordingly, there is no room for the defendant's assertion.

(2) misunderstanding of facts - Intention of the defendant

In light of the defendant's visual sales business experience and experience and knowledge about trademark rights, the court below held that the defendant at least did not have any negligence in infringement of trademark rights of this case. According to the evidence duly adopted and investigated by the court below, the decision of the court below is justified and it cannot be viewed that there was any error of misconception of facts, and therefore, the defendant's assertion in this part is without merit.

3. Conclusion

Therefore, the judgment of the court below is reversed ex officio pursuant to Article 364(2) of the Criminal Procedure Act, and it is again decided as follows after pleading.

The summary of the facts constituting an offense and evidence acknowledged by this court is identical to that of the judgment below in addition to changing the facts constituting an offense of the court below to the same content as that of the changed facts charged under Paragraph 2-B of the same Article, and therefore, it is identical to that of the judgment below. Thus, it is cited as it is in accordance with Article 3

1. Article relevant to the facts constituting an offense and the selection of punishment;

Article 93 of the former Trademark Act (wholly amended by Act No. 14033, Feb. 29, 2016); Selection of fines

1. Detention in a workhouse;

Articles 70(1) and 69(2) of the Criminal Act

1. Order of provisional payment;

Article 334(1) of the Criminal Procedure Act

In full view of all the sentencing conditions in the records and arguments of this case, including the period and scale of trademark infringement of this case, the defendant's previous convictions, etc., including the defendant's age, character and conduct, intelligence and environment, etc., the sentence

Judges Kim Yong-han (Presiding Judge)