(영문) 서울고등법원 2014. 7. 24. 선고 2013나71687, 2013나71694(병합) 판결

1. Based on the appeal by Defendant Cown Co., Ltd., the part of the judgment of the court of first instance against Defendant Cown Co., Ltd. (excluding the part of the claim prohibiting the use of the name) shall be modified as follows.

(1) Defendant Cown Co., Ltd.:

㈎ 별지1 목록 1, 2, 3 기재 표장을 유전자검사업에 사용하여서는 아니 되고,

㈏ 별지1 목록 1, 2, 3 기재 표장을 유전자검사업에 관한 광고, 검사결과지, 거래서류, 간판 또는 명함에 표시, 전시 또는 반포하여서는 아니 되며,

㈐ 별지1 목록 1, 2, 3 기재 표장이 표시된 유전자검사업에 관한 광고, 감정서, 거래서류, 간판 또는 명함에서 별지1 목록 1, 2, 3 기재 표장을 제거하라.

(2) The Plaintiff’s succeeding intervenor’s remaining claims against Defendant Cown Co., Ltd. are dismissed.

2. The Plaintiff’s succeeding intervenor’s appeal against the Defendants is all dismissed.

3. The plaintiff's succeeding intervenor's conjunctive claim against the defendant Crown and defendant 3 added by this court is all dismissed.

4. Of the total litigation cost between the Plaintiff’s succeeding intervenor and the Defendant Cown Co., Ltd., the Plaintiff’s succeeding intervenor bears 1/3; the remainder is borne by the Defendant Cown Co., Ltd.; and the litigation cost after the appeal between the Plaintiff’s succeeding intervenor and the Defendant 2 and Defendant 3 is borne by the Plaintiff’s succeeding intervenor.

5. The provisional execution under paragraph (1) (1) may be effected.

Purport of claim and appeal

Purport of claim

Defendant Cown-jin Co., Ltd. (hereinafter referred to as the “Plaintiff”) and Defendant 2 shall not use the marks listed in the separate sheet No. 2 for the service business listed in the separate sheet No. 2. Defendant Cown-jin shall not use, display or distribute the marks listed in the separate sheet No. 1 for the service business listed in the separate sheet No. 2, and shall use the word including the same mark for the domain name (including the exclusive domain name in the form of kick-type), and shall not use the same as the advertisement, appraisal, transaction documents, signboard, or name on the same service business indicated with the same mark No. 2. Defendant 2 deleted the same mark as indicated on the Internet homepage No. 300,000 (hereinafter referred to as the “ Intervenor”) from 00,000 to 10,0000,0000 won, which are listed in the separate list No. 2,000,000 won (hereinafter referred to as the “Plaintiff No. 2,000,00).

Purport of appeal

[2] Of the judgment of the court of first instance, the part against the Intervenor against Defendant Cown (excluding the part on the claim for prohibition of the use of a domain name) and the part against Defendant 2 and Defendant 3 shall be revoked. Defendant Cown shall not use the mark listed in the attached list 4 for the service business listed in the attached list 2. The same mark shall not be displayed, displayed, or distributed in advertisement, inspection result, transaction documents, signboards, or name on the same service business. The same mark shall be discarded, advertisement, appraisal, transaction documents, signboards, or name on the same service business with the same mark indicated. Defendant 2 shall not use the mark listed in the attached list 1 for the service business indicated in the attached list 2. Defendant 3 shall not jointly and severally pay to the intervenors the amount of money from August 25, 2012 to the date of complete payment pursuant to the attached list 1.

[Defendant Cown-jin] The part against Defendant Cown-jin among the judgment of the first instance is revoked. The judgment dismissing the Intervenor’s claim against Defendant Cown-jin, which corresponds to the revoked part.

Reasons

1. The summary of the case and the facts premised on the case

A. Case summary

The case sought prohibition of genetic testing, etc. using a mark similar to the Plaintiff’s service mark right as a designated service business, on the ground that the Plaintiff’s genetic testing business, etc. as the holder of the service mark registered the service mark was using the mark similar to the Plaintiff’s service mark and running genetic testing business like the Plaintiff. Defendant 2 registered the domain name “(domain name omitted)” as the Plaintiff’s service mark and allowing Defendant 3 to use it as the domain name for Defendant Cown’s business constitutes an act infringing Plaintiff’s right of service mark, and sought prohibition of genetic testing, etc. using a mark similar to the Plaintiff’s service mark right as the Plaintiff’s right of prohibition and prevention against infringement. Defendant Cown sought suspension of advertising using the mark similar to the Plaintiff’s service mark and the destruction of infringing products, and sought performance of the procedure for cancellation of the domain name against Defendant Cown-jin and its officers, and sought payment from Defendant Cown-jin and Defendant 3’s claim for damages from Defendant 100 million won and damages claim against Defendant 2.

The judgment of the court of first instance accepted some of the Intervenor's claims against Defendant Cown (the part concerning prohibition of genetic testing business, etc. using similar marks, prohibition of advertising using similar marks, etc., and claim for destruction of infringing products). The Intervenor dismissed all of the remainder of the Intervenor's claims against Defendant Cown and the claim against Defendant Cown. Accordingly, the Intervenor limited to the part against the remainder other than the part against which the Defendant Cown's claim for prohibition of use of the domain name against Defendant Cown was lost, and Defendant Cown filed an appeal against each of the losing parts (Therefore, the part concerning the Intervenor's claim for prohibition of use of the domain name against Defendant Cown is excluded from the judgment of this court. The Intervenor added the statutory damages claim against Defendant Cown and Defendant C based on Trademark Act 67-2 to Defendant Cown and Defendant C).

B. Presumed factual basis

【Evidence A1-1, 2, 2, 3, 3-1, 2, 3, 10, 11-1, 2, 12, 13, 14-1, 2, 3, 17, 19, 20, 21, 30, 31, 32, and 33-1, 2, 34-1, 2, 34-1, 2, 1, 14, and the purport of the whole pleadings

(i)The Party;

㈎ 원고는 참가인의 사내이사이고, 참가인은 유전자검사업 등을 목적으로 하는 회사이다.

㈏ 피고 크라운진은 유전자검사업, 기능성 화장품 도·소매업 등을 목적으로 하는 회사이고, 피고 3은 2008. 9. 11.부터 피고 크라운진의 대표이사로 근무하고 있으며, 피고 2는 피고 3의 형으로 피고 크라운진의 사내이사이다.

【Plaintiff’s service mark right

㈎ 원고는 다음과 같은 서비스표권을 가지고 있다(이하, ‘원고의 서비스표’라 한다).

- Service mark registration number: (Service mark registration number 1 omitted)

- Date of application/registration: February 25, 2008/ March 4, 2010

- Designated services: Class 42 (gene analysis service, gene diagnosis and research service, genetic testing service, gene identification service, genetic-related technology development service, genetic biotechnology research and development service, genetic biotechnology testing and analysis service, genetic biotechnology research and analysis service, genetic biotechnology research and analysis service, animal genetic information provision service, animal and plant genetic information analysis service)

- Service mark pages:

㈏ 원고는 2010. 12. 6. 참가인에게 원고의 서비스표권과 이에 관한 모든 권리를 2억 5,600만 원에 매도한 다음, 2013. 2. 7. 참가인 명의로 서비스표권 이전등록을 마쳤다.

【Act of the Defendants

㈎ 피고 크라운진은 2008. 1. 16. 설립되어 서울중앙지방법원에 설립등기를 마쳤고, 피고 3은 2008. 9. 11.부터 대표이사로서 피고 크라운진을 운영하고 있다.

㈏ 피고 2는 ㈜크라운생활과학(변경 전 상호 : ㈜크라운투어)의 대표이사로서 회사를 운영하다가 2008. 2. 28. “(도메인이름 생략)”을 도메인이름으로 등록하고, 그 무렵부터 피고 크라운진으로 하여금 그 도메인이름을 사용하여 홈페이지를 운영하도록 하였다.

㈐ 피고 크라운진은 웹 사이트에서 별지1 목록 1, 2, 3 기재 표장(이하, 각각 ‘1, 2, 3번 표장’이라 한다)을 사용하여 유전자검사업과 화장품 판매업을 운영하였으며, 다음사이트에 개설한 카페(카페이름 생략)에서도 2번 표장을 사용하여 유전자검사업을 운영하였다.

㈑ 한편 피고 크라운진은 원고가 피고 3을 상대로 상표법위반죄로 형사고소를 제기하자 종래에 사용하던 1, 2, 3번 표장을 피고 크라운진이 2010. 6. 23. 지정서비스업을 유전자검사업 등으로 하여 등록출원하여 2012. 4. 6. 등록한 서비스표((서비스표 등록번호 2 생략), 피고 크라운진은 서비스표 외에 유전자칩 등을 지정상품으로 한 상표등록을 출원하여 상표로 등록하였다)인 ‘ ’의 영문자 부분과 유사한 별지1 목록 4번 표장(이하, ‘4번 표장’이라 한다)으로 바꾸어 웹 사이트와 다음카페에서 1, 2, 3번 표장을 삭제하고, 4번 표장을 사용하여 종전과 같이 유전자검사업과 화장품 판매업을 계속하여 운영하고 있다.

x) Claim for the nullification of registration against the Plaintiff’s service mark by Defendant Crown

㈎ 피고 크라운진은 2010. 8. 3. 원고의 서비스표에 대하여 상표법 7조 1항 4 , 11 , 12호 에 정해진 등록무효사유가 있다는 이유로 무효심판을 청구하였고, 특허심판원에서 2011. 8. 19. 원고의 서비스표는 그 주장과 같은 무효사유에 해당하지 않는다는 이유로 패소심결을 받았다( 특허심판원 2010당1973 ).

㈏ 피고 크라운진이 이에 불복하여 특허법원에 심결취소의 소( 특허법원 2011허9269 )를 제기하였으나 2011. 12. 23. 패소하였고, 이에 불복하여 대법원에 상고( 대법원 2012후283 )하였으나 2012. 3. 15. 상고가 기각되었다.

(v)the assignment of claims by the Plaintiff

On March 26, 2013, the Plaintiff transferred all rights, such as the Plaintiff’s right to claim damages against Defendant Cown-jin and Defendant 3 regarding the instant lawsuit to the Intervenor. On April 2, 2013, the Plaintiff notified Defendant Cown-jin and Defendant 3 of the purport of the assignment of claims by content-proof mail. around that time, the notification of the assignment of claims reached Defendant Cown-jin and Defendant 3.

2. Issues of the instant case

A. Whether the intervenor's right to service mark and the acquisition of claim constitutes invalidation in accordance with the analogical application of Article 6 of the Trust Act prohibiting the litigation trust (this safety defense)

B. Whether the Defendants’ act constitutes an infringement of Plaintiff’s service mark right

(1) Whether Defendant 2 used the mark Nos. 1, 2, 3, and 4

D. Whether the marks Nos. 1, 2, and 3 of the Defendant Crown and the Plaintiff’s service mark are similar

Abstract Whether the mark Nos. 1, 2, and 3 used by Defendant Crown constitutes the scope to which the Plaintiff’s service mark right does not have the effect.

m. Whether the mark No. 4 of Defendant Crown and the service mark of the Plaintiff are identical or similar to that of the Plaintiff

(v) whether Defendant Crown, and Defendant C used four marks for the purpose of unfair competition after the establishment of the Plaintiff’s service mark was registered;

⑹ 피고 크라운진의 도메인이름의 사용과 서비스표의 사용 해당 여부

D. It is clear that the plaintiff's service mark has grounds for invalidation of trademark registration under Article 7 (1) 4 of the Trademark Act, and whether the intervenor's exercise of rights based on such service mark constitutes abuse of rights

E. Whether the Intervenor’s exercise of service right constitutes an abuse of right as it violates the principle of good faith

F. The scope of prohibition of infringement against Defendant Cown-jin and the destruction of infringing products

(1) If there is a claim against Defendant Crown on the prohibition of the use of similar marks in relation to the designated service business other than genetic testing business

The scope of the destruction of the Doz.

(g) Existence of liability for damages under Article 67 of the Trademark Act (whether the damage to the plaintiff or intervenors was incurred due to the business using a similar mark by the defendant Cown-in)

(h) the existence of statutory liability for damage under the Trademark Act (preliminary claim).

(i) A copy of the request for deletion of similar marks indicated on the web site, etc. of Defendant Crown;

3. The judgment of this Court

【Defendant’s argument】

The defendants asserted that the intervenor's application for intervention in succession is unlawful, since the intervenor's acquisition of the plaintiff's service mark right and the right to claim damages from the plaintiff's infringement on the service mark right constitutes a litigation trust aimed at litigation.

[Judgment]

Article 6 of the Trust Act provides that a trust with the main purpose of enabling a trustee to conduct litigation is null and void. This is to prevent evasion of the provisions of the Civil Procedure Act and other provisions prohibiting a person who is not an attorney-at-law from doing litigation, and to prevent abuse of litigation and enjoying litigation from being promoted. Therefore, in a case where a transfer of credit is made for the main purpose of allowing a trustee to conduct litigation, such transfer of credit is null and void by analogical application of Article 6 of the Trust Act even if the transfer of credit does not fall under a trust under the Trust Act, even if the transfer of credit does not fall under a trust under the Trust Act. Whether the main purpose of the transfer of credit is to allow a trustee to conduct litigation is to be determined by comprehensively taking into account various circumstances, such as the details and methods of concluding the transfer of credit contract, interval between the transfer of credit and the lawsuit, and the status relationship between the transferor and the transferee (see, e.g., Supreme Court Decisions 200Da4210, Dec. 6, 2002; 2006Da8484.

According to the aforementioned premise facts, on December 6, 2010, prior to the filing of the instant lawsuit as an internal director of the Intervenor’s company aimed at genetic testing business, etc., the Plaintiff already sold the Plaintiff’s service mark right at KRW 256 million to the Intervenor Company, which is a designated service business. On February 7, 2013, the Plaintiff completed the registration of transfer of service mark right under the Intervenor’s name. On March 26, 2013, the Plaintiff transferred the Plaintiff’s claim for damages against Defendant Crown and Defendant C, based on tort caused by the Plaintiff’s infringement on the Plaintiff’s service mark right to the Intervenor. In light of the Plaintiff’s service mark right to the Intervenor, the Plaintiff’s transfer of the service mark right and the claim for damages against the Intervenor, the circumstance, method, and timing, etc., it is difficult to readily conclude that the Plaintiff mainly intended to have the Intervenor conduct litigation, and there is no other evidence to acknowledge this. The Defendants’ aforementioned assertion is without merit.

B. Whether the Defendants’ act constitutes an infringement of Plaintiff’s service mark right

(1) Whether Defendant 2 used the mark Nos. 1, 2, 3, and 4

【Creditor’s Claim】

An intervenor, Defendant 2 registered a domain name converted into the Plaintiff’s service mark in English and made it available to Defendant Cown for use by Defendant Cown. Defendant Cown, as an internal director of Defendant Cown, bears the duty of loyalty under Article 382-3 of the Commercial Act, such as monitoring that Defendant Cown does not commit an illegal act, as well as bears the duty of loyalty pursuant to Article 401 of the Commercial Act, as well as the liability for damages against Defendant Cown’s illegal act pursuant to Article 401 of the Commercial Act. Defendant Cown in the future, as a claim for prohibition or prevention of infringement of the Plaintiff’s service mark right by asserting that there is a concern for infringement of the Plaintiff’s service mark right by the Intervenor who acquired the Plaintiff’s name in the name of Defendant 2, Defendant 2 was prohibited from using the mark Nos. 1, 2, 3, and 4 similar to

[Judgment]

According to the above premise facts, on February 28, 2008, Defendant 2 registered “(domain name omitted)” with the Plaintiff’s service mark in English as the domain name, and around that time, Defendant Crown permitted Defendant Crown to operate the web site using the domain name, and served as Defendant Crown’s internal director.

However, the above facts alone are insufficient to recognize the intervenor's assertion that Defendant 2 conducted genetic testing business by using marks Nos. 1, 2, 3, and 4 on his own, and that Defendant Cown directly participated in genetic testing business, etc. using such marks, or in relation thereto, Defendant Cown's director was negligent in performing his duties, or Defendant Cown's director was likely to infringe on the plaintiff's service mark right that he acquired by the intervenor in the name of Defendant 2, and there is no other evidence to acknowledge this otherwise. The intervenor's assertion is without merit.

D. Whether the marks Nos. 1, 2, and 3 of the Defendant Crown and the Plaintiff’s service mark are similar

【Creditor’s Claim】

The intervenor asserts that the defendant Crown's business could be mistaken for the intervenor's service business by using the mark Nos. 1, 2, and 3 identical to the plaintiff's service mark in the web site, the next car page, etc.

[Judgment]

Whether a service mark is similar or not should be compared with two service marks themselves, and it should be done from the point of view of whether there is a concern for consumers to misunderstand or confuse the source of business. Thus, in determining similarity of a service mark, the similarity of a service mark should be determined by considering the appearance, name, and concept of consumers as a whole and as a whole, so as to cause misconception or confusion as to the source of service. In a case where the overall observation of a service mark is easy to attract consumers’ attention, it should be functionally observed as well as the overall observation, and it is necessary to determine similarity of a service mark by comparing two services marks with those so as to induce the conclusion of the overall observation, but it is necessary to distinguish the two services marks from those so as to prevent confusion or confusion as to the source of services, and its function should be determined differently from those of the service mark 20,000,000,000 after 20,000,000 after 16,000 after its appearance and appearance.

In this case, when comparing the Plaintiff’s service mark and Defendant Crown with the mark Nos. 1, 2, and 3 used by Defendant Crown, the Plaintiff’s service mark is composed of only the Korean language “Crown.” The mark No. 1 used by Defendant Crown is composed of unique letters and colors combined with “CrownBe” and “CrownBe”, and the mark No. 2 is composed of two shapes in the shape of “Ampha” in the English language and adding a shape of alphar in the front of the English language, and the three marks are composed of three shapes in the shape of “Ampha” and “Ampha,” which is similar to that of the Plaintiff’s 1, 2, and 3 parts in the shape of “Ampha” and “Ampha,” which is similar to that of the Plaintiff’s 1, 2, and 3 parts in the shape of “Ampha 3GNE.”

In comparison with the form and composition of both marks, the name is identical to that of the English language “CRWNE,” and in light of the general English spread level in Korea, traders or ordinary consumers are likely to recognize the Plaintiff’s service mark “Crown” as “crow gene,” “crown gin,” and “crown jake,” but it is most likely that the designated service business of the Plaintiff’s service mark is the Plaintiff’s genetic testing business, etc. in light of the fact that the designated service business of the Plaintiff’s service mark is the Plaintiff’s genetic testing business, etc.

Therefore, although both are different in terms of Korean and English characters when the two are comprehensively and objectively observed, the names and concepts of these marks are similar. The similarity between the names and concepts of these marks is likely to mislead or confuse them as genetic testing services provided by Defendant Crown’s genetic testing services provided by the Intervenor to the traders or general consumers, and the genetic testing business with Defendant Crown’s mark is the same as the designated service business of Plaintiff’s service mark, and thus, Defendant Crown and Defendant 3, who is its representative director, uses the marks Nos. 1, 2, and 3 for genetic testing business constitutes infringement of Plaintiff’s service mark right.

Abstract Whether the mark Nos. 1, 2, and 3 used by Defendant Crown constitutes the scope to which the Plaintiff’s service mark right does not have the effect.

【Defendant Crown-jin, Defendant 3’s argument】

Defendant Crown-jin and Defendant 3 asserted that the mark Nos. 1, 2, and 3 used by Defendant Crown-jin is merely a common indication of the trade name of Defendant Crown-jin in a common way, and that it constitutes a scope to which the effect of service mark right under Article 51(1)1 of the Trademark Act does not extend to the extent that it does not extend to the service mark right.

【Defense of Intervenor】

The Intervenor argues that the marks Nos. 1, 2, and 3 used by Defendant Crown do not constitute an ordinary expression of the trade name of Defendant Crown on the ground that it indicated the abbreviation of the name of Defendant Crown or trade name by using a unique letter, color, picture design, etc.

[Judgment]

Article 51(1)1 of the Trademark Act provides that a service mark indicating a trade name or a well-known abbreviation of the trade name in a common way does not constitute an infringement of the right to use a service mark since the use of the mark does not have the function of distinguishing the business from the other person. Here, "the trade name shall be indicated in a common way" means not displaying the trade name in a special form, such as a unique letter, color, or painting that may lead to general attention, but indicating the trade name in a common way without a special distinctive character (see, e.g., Supreme Court Decisions 98Hu1457, Jun. 23, 200; 2005Do5358, Oct. 14, 2005).

In this case, the mark “CRWNE” among the marks Nos. 1, 2, and 3 used by Defendant Crown is part of the Defendant Crown, and falls under the abbreviation, but there is no evidence to recognize it as well as its well-known abbreviation. In addition, Defendant Crown indicated that the marks Nos. 1, 2, and 3 are composed of unique letters, colors, and design letters, and are displayed only in the web site, next knick, etc. to attract general attention.

In light of these circumstances, the marks Nos. 1, 2, and 3 used by Defendant Cown cannot be deemed as simply expressing the trade name of Defendant Cown or the well-known abbreviation thereof, and since Defendant Cown expressed the source of service business provided by Defendant Cown and performs the genetic testing business of Defendant Cown with other genetic testing enterprises, it constitutes a use as a service mark under the Trademark Act, and the use of Defendant Cown’s mark constitutes a common use of his trade name or its trade name, and it cannot be deemed as a scope that does not affect the Plaintiff’s right to use the service mark. The above assertion by Defendant Cown and Defendant 3 is without merit.

m. Whether the mark No. 4 of Defendant Crown and the service mark of the Plaintiff are identical or similar to that of the Plaintiff

【Creditor’s Claim】

The intervenor asserts that Defendant Crown's business could be mistaken for the Intervenor's service business by using the mark No. 4 identical to the Plaintiff's service mark in the web site and the next car page.

【Crown-jin, Defendant 3’s Answer】

Defendant Crown-jin and Defendant C’s four marks used by Defendant Crown-jin are merely indicated in a common way the trade name of Defendant Crown-jin and are not perceived as an identification mark on the business source. As such, Defendant Crown and Crown asserted to the effect that there is no distinctiveness, since they constitute a scope that does not affect the effect of the service mark right under Article 51(1)1 of the Trademark Act.

[Judgment]

The effect of the right to a service mark shall not extend to the case where the entire trademark falls under any subparagraph of Article 51(1) of the Trademark Act, as well as to the case where only a part of the trademark falls under only a part of the trademark (see Supreme Court Decisions 96Da56382, May 30, 1997; 2006Hu1131, April 24, 2008, etc.);

In this case, when comparing the Plaintiff’s service mark and Defendant Crown’s four marks used by Defendant Crown, the Plaintiff’s service mark consists of only the Korean language “Crown”.

On the other hand, among the four marks used by Defendant Crown's four marks, the term "Sscene" indicates "Scene" as the main gate, shapes "G" as the alpha of "Gene," and adds a figure that shapes the scene in front of "Scene," and is composed of the four marks in the form of "Scene Scene" indicating "Scene as small as below.

First of all, among the marks No. 4, the same text as the Plaintiff’s service mark, except for the portion of “ABD Co., Ltd.”, is identical or similar to the Plaintiff’s service mark in terms of appearance or title.

However, the mark No. 4 used by Defendant Crown contains only the combination of diagrams and letters, which is identical or similar to the Plaintiff’s service mark in terms of its appearance or name. However, this part does not have any special distinctive character other than the distinguishability as it is not indicated in a unique form, such as a unique letter, color, or dial letter. In addition, it appears that the combination between “ABBBD” and “Crownjin” and “Crownjin” are deemed to mean the trade name of Srown with customers or general consumers, and the said part is indicated in a relatively small letter under the part “Crown Growne.” Furthermore, since the four marks used by Defendant Crown are combined with the figure and the word are not combined with the figure and the word are not combined with it, it cannot be said that the trademark is ordinarily used by Defendant Crown in a way of trade name, etc., on the ground that it is combined with the figure portion, and thus, it does not constitute a common use of the Plaintiff’s trademark right.

Meanwhile, the remaining diagrams and letters “,” and the Plaintiff’s service mark cannot be seen as similar to one another in its appearance, concept, and title, with the exception of “the Plaintiff’s service mark right which does not have the effect of the Plaintiff’s service mark right” among the marks No. 4, and thus, there is no risk of misconception and confusion as to the genetic testing service provided by Defendant Crown with the Plaintiff’s genetic testing service provided by Defendant Crown. Therefore, Defendant Crown’s conduct of genetic testing by using the marks No. 4 cannot be deemed as infringing the Plaintiff’s service mark right. The Intervenor’s aforementioned assertion is without merit.

(v) whether Defendant Crown, and Defendant C used four marks for the purpose of unfair competition after the establishment of the Plaintiff’s service mark was registered;

【Creditor’s Claim】

The intervenor asserts that the effect of the Plaintiff’s right to service mark does not extend to Defendant Crown’s four marks under Article 51(1)1 of the Trademark Act, even if the Plaintiff’s effect does not extend to Defendant Crown’s four marks, the Intervenor had a high credit in the genetic testing industry. However, Defendant C and the Nonparty, who was an employee of the Intervenor, knew that Defendant C and the Nonparty would be expected to use the service mark “Crownjin” on the part of the Plaintiff, would establish Defendant Crown with the same trade name, and use Defendant Crown for the purpose of gaining unfair profits by using the Intervenor’s credit after the Plaintiff’s establishment registration of the service mark was made, and thus, the effect of the Plaintiff’s right to service mark acquired by the Intervenor pursuant to Article 51(3)

【Crown-jin, Defendant 3’s Answer】

Defendant Crown-jin and Defendant 3 have used the trade name “Crown-jin” prior to the registration of the establishment of the Plaintiff’s service mark, and thus, they did not claim that there was no objective of taking advantage of the Plaintiff’s credit or reputation, etc. contained in the Plaintiff’s service mark.

[Judgment]

The purpose of unfair competition prescribed in Article 51(3) of the Trademark Act is to obtain unfair profits by using the credit of a registered trademark holder or service mark holder. The mere fact that the trademark holder was aware of the fact that it is a registered trademark or service mark cannot be readily concluded that there exists such purpose. Moreover, subjective circumstances such as the similarity of trademarks and the credit status of the registered trademark, the similarity of business purpose and the regional adjacentness of business activities, the actual use of the trademark infringer, etc. should be determined in consideration of the objective circumstances such as the similarity of trademarks and the credit status of the registered trademark, the similarity of business purpose and business activities, and the actual use of the trademark infringer (see, e.g., Supreme Court Decisions 95Hu804, Nov. 21, 1995; 201Hu538, Jul. 28, 2011; 2010Hu387, May 10, 2012).

However, as seen below, the Plaintiff did not conduct genetic testing, which is a designated service business of service mark after the Plaintiff registered the service mark and used it individually, and the Intervenor who acquired the right to use the service mark from the Plaintiff did not conduct genetic testing business using the Plaintiff’s service mark after the Plaintiff registered the transfer of the right to use the service mark in the name of the intervenor, and the Intervenor did not conduct genetic testing business by using the Plaintiff’s service mark. Only the Intervenor’s confirmation of the administrator of the right to use the title was conducted using the registered service mark since July 2012 before the time when the registration of the transfer of the right to use the title was completed in the name of the Intervenor, and cannot be deemed to have caused the Plaintiff’s or the Intervenor’s credit in relation to the Plaintiff’s service mark. Furthermore, Defendant Cown used the Plaintiff’s service mark with the trade name “Cra Co

If there are circumstances, it is difficult to conclude that Defendant Cown had an objective of gaining unjust profits by using the credit of the Plaintiff’s service mark, and there is no other evidence to acknowledge it. The Intervenor’s above assertion is without merit.

⑹ 피고 크라운진의 도메인이름의 사용과 서비스표의 사용 해당 여부

【Creditor’s Claim】

An intervenor asserts that Defendant 2's act of registering domain names, including domain names similar to the Plaintiff's service mark and allowing Defendant Crown to use them constitutes the use of service marks indicating the source of service.

[Judgment]

The term "use of a trademark" under the Trademark Act refers to an act stipulated in Article 2 (1) 7 of the Trademark Act. To constitute the use of a trademark, a mark must function as a distinguishing mark distinguishing between the goods related to one's business and the goods related to another's business from the goods of the transaction counterpart or user in light of social norms. This applies to a service mark pursuant to Article 2 (3) of the Trademark Act. It also applies to a service mark of the Internet protocol address made for the recognition of computers and communications equipment which are originally connected to the Internet to the original Internet to the people's awareness of the origin of the goods or services, and it is not made for the purpose of using a domain name as a mark of the origin of the goods or services, and it is not made for the use of a domain name after registering the domain name in light of the mode of use of the domain name and the display content of the web site connected to that domain name as a whole, and it is limited to distinguishing between the goods related to one's business and the goods related to another's business (see, e.g., Supreme Court Decision 2007Da15707.

According to the above premise facts, Defendant 2 registered the Plaintiff’s service mark “Cownjin” as an English person whose name is the same as that of the Plaintiff’s service mark (domain name omitted), and let Defendant Croman conduct the genetic testing business, which is one of the designated services of Plaintiff’s service mark, on the web site connected with the domain name, and Defendant Croman used the mark Nos. 1, 2, and 3 at the web site connected with the domain name.

However, the Plaintiff’s service mark “Cown-jin” is not identical to the Plaintiff’s web site, which is an English trademark registered as the domain name of Defendant Croman’s web site, and Defendant Croman also sold cosmetics that do not fall under the Plaintiff’s designated service business at the web site connected to the domain name. The Plaintiff asserted that the mark Nos. 1, 2, and 3 used by Defendant Croman infringed the Plaintiff’s service mark right, and only four marks are deleted on the web site and used without infringing the Plaintiff’s service mark right.

Considering the circumstances, it is difficult to readily conclude that Defendant Crown’s domain name functions as an identification mark distinguishing between the service related to one’s own business and the service related to another’s business by indicating the source of the service in light of the transactional common sense, and there is no other evidence to acknowledge it. Therefore, it does not constitute the use of the service mark by Defendant Crown and Defendant Crown and Defendant 2, and the Intervenor’s claim for the implementation of the procedure for cancellation of domain name against Defendant 2, which is premised on the above premise,

【Defendant Crown-jin, Defendant 3’s argument】

Defendant Crown-jin and Defendant 3 continuously used the mark Nos. 1, 2, and 3 before the Plaintiff filed an application for the service mark, and even if the Plaintiff registered the service mark, Defendant Crown asserted that the mark Nos. 1, 2, and 3 as the prior user of the service mark does not constitute an act infringing the Intervenor’s right to use the mark as long as the Plaintiff used the mark No. 1, 2, and 3 as a genetic testing business.

[Judgment]

Even if a person who first uses a trademark that is identical or similar to another person's registered trademark on goods identical or similar to the designated goods, if it is recognized as indicating the goods of a specific person by domestic consumers at the time of applying for trademark registration as a result of using another person's trademark (Article 57-3 (1) of the Trademark Act) and his/her name and trade name, if the person who used the trademark continues to use it in Korea before the application for trademark registration without any purpose of unfair competition (Article 57-3 (2) of the Trademark Act), it may continue to use it for the goods using the trademark, if it is recognized as indicating the identity of the person's goods at the time of applying for trademark registration (Article 57-3 (1) of the Trademark Act), and if it is used as a trademark in accordance with commercial practices and without

According to the above premise facts, the Plaintiff applied for registration of a service mark on February 25, 2008, but Defendant Cown established on January 16, 2008, and Defendant Cown operated genetic testing business using the mark Nos. 1, 2, and 3 at the web site that Defendant Cown registered the domain name after February 28, 2008.

In light of the above circumstances, the above facts alone are insufficient to recognize the facts of the Plaintiff’s assertion as follows: (a) Defendant Cown used the mark Nos. 1, 2, and 3 similar to the Plaintiff’s service mark in Korea from the time of the Plaintiff’s application for registration of the service mark without the purpose of unfair competition; (b) as a result, it was recognized that the mark Nos. 1, 2, and 3 among domestic consumers at the time of the Plaintiff’s application for registration of the service mark was indicating the Plaintiff’s genetic testing business; or (c) it is not sufficient to recognize the facts of the Plaintiff’s assertion as to the use of the mark Nos. 1, 2, and 3 similar to the Plaintiff’s registered service mark as a means of expressing the Plaintiff’s trade name in Korea continuously before the Plaintiff’s application for registration of the service mark without the purpose of unfair competition; and

【Defendant Crown-jin, Defendant 3’s argument】

Defendant Crown-jin and Defendant 3 asserted to the effect that the Plaintiff’s service mark constitutes a service mark that goes against the public order and good morals as stipulated under Article 7(1)4 of the Trademark Act, and thus, the Plaintiff’s act of exercising rights based on the Plaintiff’s right to use the service mark is not allowed because the Plaintiff’s acquisition of the Plaintiff’s right to use the service mark constitutes an abuse of rights, with intent to obstruct the Plaintiff’s normal business activities of Defendant Crown with the intent to obstruct Defendant Crown’s Plaintiff’s Plaintiff’s retirement and establishment of the same type of business. In addition, the Plaintiff’s service mark constitutes a service mark that goes against the public order and good morals as stipulated under Article 7(1)4 of the Trademark Act.

[Judgment]

(i) The following facts may be acknowledged in full view of the overall purport of the pleadings in evidence (Evidence 4-1, 2, 2-2, 2-2, 25, 26-1, 2, 3, 27-1, 2, 2, 3, 27-2, 27-1, 2, 30-1, 2, 30-2, 32, 33-1, 2, 34-1, 2, 35-1, 2, 35-2, 36-1, 2, 36-1, 2, and 37).

㈎ 피고 3은 원래 참가인의 직원으로 근무하다가 2006. 4. 30. 회사를 퇴직하고 2008. 1. 16. 유전자검사업 등을 사업목적으로 하여 피고 크라운진을 설립한 다음 그 설립등기를 하고 2008. 2. 11. 사업자등록을 마쳤다.

㈏ 원고는 그로부터 약 2주일 후인 2008. 2. 25. 한글 ‘크라운진’으로 이루어진 서비스표를 출원하였다. 참가인은 2004년 무렵부터 유전공학 분야로 업종을 전환하였으나 피고 크라운진이 설립될 때까지 ‘크라운진’이라는 상호나 서비스표를 사용한 적은 없었다.

㈐ 원고는 이전에도 동종업계의 다른 회사들(㈜넥스젠바이오텍, ㈜아이디진, 바이타텍인터내셔널인코㈜, ㈜마이진, ㈜랩지노믹스, ㈜다우진유전자연구소, ㈜한국유전자전보센터)의 상호 또는 상호 중 일부와 동일한 표장( , 아이디진 , , , , , 한국유전자정보센터 )에 관하여 지정서비스업을 42류 등으로 하여 서비스표 등록출원을 하였다가 일부는 거절결정을 받고, 일부는 서비스표 등록을 받았다.

The term "trademarks, where the trademark itself or the trademark is used for goods, which are contrary to the good customs and good customs of the general public, or are likely to undermine the public order" as stated in Article 7 (1) 4 of the Trademark Act refers to "trademarks, where the composition of the trademark itself or the trademark is used for designated goods, which violate the public order and good customs and good customs which are the ordinary moral sense of the general public," or "trademarks where the use of the trademark violates the good customs such as fair goods distribution order or international trust and morality, etc." (see Supreme Court Decision 2007Hu301, May 28, 2009) or "trademarks where the use of the trademark is contrary to the public interest of the general public" (see Supreme Court Decision 2002Hu1362, May 14, 2004, etc.). The same applies to service marks.

According to the aforementioned premise and the above facts, it is difficult to view that the Plaintiff’s organization itself or “Dara” of the Plaintiff’s service mark to be used for the designated service is against the public order of society or good customs, which is the ordinary moral sense of society. In addition, Defendant Cown was established on January 16, 2008 and its business registration was completed on February 11, 2008 and the period of use of Defendant Cown’s trade name at the time of the Plaintiff’s application for the service mark registration ( February 25, 2008) is very short, it is difficult to deem that the Plaintiff applied for registration of the service mark with the intent to take advantage of or use it in the name of Defendant Cown’s trade name or reputation. Moreover, it is difficult to readily conclude that the Plaintiff’s use of the Plaintiff’s service mark was not the same as the Plaintiff’s registered service mark for the purpose of mutual benefit, as otherwise alleged by Defendant Cownjin and Defendant 3, without any competition among the Plaintiff’s trademark rights.

If there are circumstances, it is difficult to view the Plaintiff’s service mark as a ground for invalidation of registration under Article 7(1)4 of the Trademark Act, and there is no other evidence to acknowledge it. Therefore, the above assertion by Defendant Crown-jin and Defendant 3 is without merit without further need.

E. Whether the Intervenor’s exercise of service right constitutes an abuse of right as it violates the principle of good faith

【Defendant Crown-jin, Defendant 3’s argument】

Defendant Crown-jin and Defendant 3 asserted that, by applying for and registering a service mark in the same text as that of other competitors, including Defendant Crown-jin, the Plaintiff sought to prevent competitors from using their trade name as a service mark, thereby hindering their business, and the Plaintiff did not use the Plaintiff’s service mark for business purposes, the Intervenor’s claim may not be allowed as an abuse or abuse of the right to use the service mark.

【Defense of Intervenor】

The Intervenor was preparing to file an application for the Plaintiff’s service mark to change the Intervenor’s trade name to “Danjin”. However, Defendant 3, etc., who retired from the Intervenor, established the Defendant Danjin and set the trade name as “Danjin,” and thus, the Intervenor’s claim against Defendant Danjin and Defendant 3 based on the Plaintiff’s service mark right does not abuse or abuse the Plaintiff’s service mark right.

[Judgment]

In light of the purpose and background of the trademark right holder’s application for and registration of the trademark, and the specific and individual circumstances leading to the exercise of the trademark right, etc., where the exercise of trademark right against the other party is deemed to have no value to be legally protected, such as going beyond the purpose or function of the trademark system aimed at maintaining the credit of the trademark user and protecting the interests of consumers, impairing the order of fair competition and commercial transactions, creating confusion among consumers, or violating the principles of good faith in relation to the other party, etc., such exercise of trademark right shall not be allowed as an abuse of the right to the registered trademark even if he/she has obtained the appearance of the exercise of right. However, in light of the grounds that restrict the exercise of trademark right, the purpose of exercise of trademark right is to inflict pain and damage on the other party, and there is no profit on the person who exercises the trademark right, it does not necessarily require any subjective requirement that the exercise of trademark right should be made without any profit (

According to the above facts, there may be room to view that the Plaintiff filed an application for a service mark with the trade name of the same kind of enterprise already established in order to cause harm to the business of the same kind of enterprise.

However, it is difficult to view that Defendant 3 had already been engaged in genetic testing business prior to the establishment of Defendant Crown, and the purport of the mark “Crown” itself is related to genetic testing. Moreover, as seen earlier, Defendant Crown was established on January 16, 2008 and completed business registration on February 11, 2008 and applied for the registration of Defendant Crown’s trade name at the time of the Plaintiff’s application for the registration of the service mark ( February 25, 2008) after completing the Plaintiff’s business registration on February 11, 2008, the Plaintiff applied for registration of the service mark with intent to take advantage of, or use, the credibility or reputation of Defendant Crown’s trade name. Moreover, it is difficult to conclude that the Plaintiff is separate from the trade name and trademark, and it is difficult to conclude that the Plaintiff intended to gain unjust profits solely on the ground that the Plaintiff applied for registration of Defendant Crown’s trade name as the Plaintiff’s trademark right.

Therefore, the Intervenor’s exercise of the Plaintiff’s service mark right by acquiring the Plaintiff’s service mark right from the Plaintiff may not be deemed as having any value of legal protection, such as causing confusion to consumers in relation to Defendant Cown or violating the good faith principle, and thus, constitutes abuse of rights. Defendant Cown-jin and Defendant 3’s above assertion is without merit.

F. The scope of prohibition of infringement against Defendant Cown-jin and the destruction of infringing products

(1) If there is a claim against Defendant Crown on the prohibition of the use of similar marks in relation to the designated service business other than genetic testing business

【Creditor’s Claim】

The Intervenor sought prohibition of using a similar mark Nos. 1, 2, and 3, which is a similar mark, on the remaining designated service business (excluding genetic testing business among designated service business listed in the attached Table 2; hereinafter referred to as “Syman designated service business”), among the designated service business regarding the Plaintiff’s service mark, against Defendant Cown, and sought prohibition of using the similar mark on the remaining designated service business and the disuse of advertisements, etc. using the similar mark.

[Judgment]

According to the above facts, Defendant Cown operated genetic testing business using the mark Nos. 1, 2, and 3, similar to the Plaintiff’s service mark, but after the Plaintiff’s criminal complaint, Defendant Cown deleted the mark Nos. 1, 2, and 3 similar to the Plaintiff’s service mark, and only conducts genetic testing business using the mark Nos. 4, which does not infringe Plaintiff’s service right.

Furthermore, there is no circumstance in which Defendant Cown used the mark Nos. 1, 2, and 3 to run the remaining designated service business or to deem that such business is likely to run.

Therefore, the intervenor's assertion that Defendant Cown used the mark Nos. 1 and 23 to carry on the remaining designated service business or to carry on such business is not accepted.

The scope of the destruction of the Doz.

【Creditor’s Claim】

An intervenor shall seek the destruction of advertisements, etc. related to genetic testing business bearing marks Nos. 1, 2, and 3, which are similar marks, to Defendant Cown.

[Judgment]

A request for destruction or removal by a trademark right holder, etc. under Article 65 (2) of the Trademark Act is a request for incidental action for prohibition or prevention of infringement of the trademark right of this requester for the act necessary for the prevention of infringement, such as destruction of goods causing infringement, removal of facilities used for infringement, etc. In determining whether to accept such request, it shall be determined by balancing the disadvantages of the trademark right holder if not accepting such request according to the details of the specific case and the disadvantages of the infringer if receiving them, and the scope thereof shall be the minimum necessary to prevent infringement.

According to the above facts in this case, it is sufficient for the plaintiff to remove similar marks in the advertisement, appraisal, transaction documents, signboards, or the name of a similar mark, which is the mark Nos. 1, 2, and 3, on the ground of the incidental claim for prohibition of infringement of trademark rights or prevention against Defendant Cown with respect to the genetic testing business, and further, the plaintiff's claim, such as the destruction of advertisements, cannot be accepted as an excessive claim. The intervenor's argument is with merit within the scope of the above recognition.

【Creditor’s Claim】

The intervenor asserts that the intervenor, pursuant to Article 67 (2) of the Trademark Act, who acquired the service mark right from the plaintiff or the plaintiff who was entitled to the service mark by conducting genetic testing using a similar mark, he/she suffered profits from March 4, 2010, which was the date of registration of the service mark right, from March 4, 2010 to the date of the closing of argument in this court, or damages equivalent to the amount which the plaintiff could normally receive for the use of the plaintiff's service mark in accordance with Article 67 (3) of the Trademark Act, as well as damages equivalent to the amount which the plaintiff could normally receive for the use of the plaintiff's service mark, and that he/she acquired from the plaintiff the claim for damages from the plaintiff's damage caused by the infringement of the service mark right against the defendant Cown and the defendant 3

【Crown-jin, Defendant 3’s Answer】

Defendant Crown-jin and Defendant 3 asserted that, since the Plaintiff’s side did not run his business using the service mark, the damage was not caused to the Plaintiff or the Intervenor due to the use of the similar mark on the part of Defendant Crown-jin.

[Judgment]

(i) The following facts may be acknowledged in full view of the evidence (A2, A5-2, A19, 20, 21, and 23-26, A29-1, 3, A30, A31, A52, A53-1, 2, A54, 58, and 59) and the overall purport of the pleading.

㈎ 참가인의 대표자인 원고가 2008. 2. 25. 서비스표에 관하여 지정서비스업을 유전자검사업 등으로 정하여 서비스표 등록출원을 하여 2010. 3. 4. 원고의 서비스표가 등록되었다. 그러나 원고는 서비스표가 등록된 이후 이 사건 변론 종결일까지 개인적으로 원고의 서비스표를 사용하여 지정서비스업인 유전자검사 영업 등을 실제로 하지는 않았다.

㈏ 참가인은 2010. 12. 6. 원고로부터 원고의 서비스표권을 매수하였으나 2013. 2. 7.에 이르러 비로소 참가인 명의로 서비스표권 이전등록을 마쳤다.

㈐ 참가인은 2003. 2. 10. 목적 사업에 유전자검사업 등을 추가하여 그 무렵부터 계속하여 유전자검사 영업을 하였으나, 원고부터 서비스표권을 매수한 이후에도 참가인이 직접 서비스표를 유전자검사영업에 표시하여 사용하지는 않았다. 한편 참가인은 2012. 4. 26. 유전자검사업을 목적으로 하는 회사로서 참가인이 그 발행주식 전부를 소유하고 있는 자회사인 ㈜친자확인을 설립한 다음, ㈜친자확인이 2012. 7. 무렵 홈페이지를 개설하여 홈페이지에서 원고의 서비스표를 사용하여 유전자검사 영업을 하고 있다.

㈑ 그런데 원고는 2012. 5. 12. 피고 크라운진의 대표이사인 피고 3을 상대로 원고의 서비스표와 동일한 서비스표를 사용하여 유전자검사 영업을 한다는 이유로 상표법위반죄로 형사고소를 하였다. 피고 3은 2012. 11. 22. 상표법위반죄로 벌금 70만 원의 약식명령( 서울남부지방법원 2012고약17060 )을 받았고, 이에 불복하여 정식재판을 청구하여 그 절차에서 “피고 3이 2012. 3. 15.부터 2013. 4. 9.까지 원고의 등록서비스표와 동일한 ’크라운진‘이라는 서비스표를 사용하여 유전자검사업을 하여 원고의 서비스표권을 침해하였다”는 공소사실로 공소장이 변경되었고, 변경된 공소사실에 대하여 유죄판결(벌금 70만 원)을 받았다.

㈒ 피고 3이 이에 불복하여 항소를 제기하였고, 항소심절차에서 “피고 3이 2012. 3. 15.부터 2012. 7. 30.까지 원고의 등록서비스표와 동일한 ’크라운진‘이라는 서비스표를 사용하여 유전자검사업을 하면서, 인터넷 카페에 ’크라운진‘. ’CROWN GENE'이라고 표시하고, 홈페이지에 ‘CROWN GENE'이라고 표시하는 방법으로 원고의 서비스표권을 침해하였다”는 공소사실로 공소장이 변경되었고, 변경된 공소사실에 대하여 유죄판결(벌금 50만 원)을 받았다. 피고 3이 이에 불복하여 상고( 대법원 2014도406 )를 제기하였으나, 2014. 6. 12. 상고가 기각되어 항소심의 유죄판결이 그대로 확정되었다.

D. Article 67(3) of the Trademark Act provides that where an owner of a trademark right or an exclusive licensee claims compensation from a person who has intentionally or negligently infringed on his/her trademark right or exclusive license for damages, the amount of money which he/she would normally be entitled to receive for the use of the registered trademark may be claimed as the amount of damages suffered by him/her. According to this provision, the owner of the trademark right may not assert, prove, and prove, the existence of damages, unless it is necessary, and if it is sufficient to assert, prove, the fact of infringement and the amount which would normally be entitled to receive, it shall be interpreted that the infringer may be exempted from liability for damages by proving, as a defense, that the infringement cannot be caused by his/her defense (see Supreme Court Decisions 96Da4319, Sept. 12, 1997; 2002Da3175, Oct. 11, 2002). This is because, inasmuch as the infringement of the trademark right holder’s duty to use the registered trademark or the trademark distribution order does not arise from the infringement of the trademark right.

According to the aforementioned premise and the above facts, the Plaintiff applied for a service mark as an in-house director of the Intervenor and did not conduct genetic testing business using a registered service mark even after the registration was made on March 4, 2010. On December 6, 2010, the Intervenor sold the Plaintiff’s service mark right to the Plaintiff’s service mark to the Intervenor. The Intervenor completed the registration of transfer in the name of the Intervenor only after the purchase of the Plaintiff’s service mark right from the Plaintiff on February 7, 2013. The Intervenor did not conduct genetic testing business by directly using the Plaintiff’s service mark until that date.

Although the Intervenor had the Plaintiff, a subsidiary holding all outstanding stocks after the registration of transfer in the name of the Intervenor, conduct genetic testing business using the registered service mark of the service mark right purchased from the Plaintiff by the Intervenor, it cannot be deemed that the Plaintiff, a third party, conducted genetic testing business using the Plaintiff’s service mark under the actual control of the Intervenor for the benefit of the Intervenor and the Intervenor.

In addition, even if the intervenor had conducted genetic testing business using the plaintiff's registered service mark through confirmation by the administrator of the dispute resolution committee after the plaintiff had completed the registration of transfer with respect to the plaintiff's service mark right in the name of the intervenor, in light of the circumstances that the plaintiff filed a criminal complaint against the defendant 3 against the violation of the Trademark Act, the defendant Cown deleted the mark Nos. 1, 2, and 3 from the web site and the next car page, and conducted genetic testing business using the mark No. 4, the evidence (A. 19, 20) alone is insufficient to recognize the intervenor's assertion that the plaintiff still suffered damage to the plaintiff as the service mark holder by running genetic testing business using the mark No. 1, 2, and 3 similar to the plaintiff's service mark right after the plaintiff had completed the registration of transfer with respect to the plaintiff's service mark right in the name of the intervenor.

Therefore, the Intervenor’s assertion that Defendant Cown operated genetic testing business using a mark similar to the Plaintiff’s registered service mark and caused damage to the Plaintiff or the Intervenor, a person holding the service mark, is without merit.

(h) the existence of statutory liability for damage under the Trademark Act (preliminary claim).

【Creditor’s Claim】

The Intervenor asserts that Defendant Crown and Defendant Crown, who used the mark Nos. 1, 2, and 3 similar to the Plaintiff’s service mark, infringed the Plaintiff’s service mark right by conducting genetic testing business, and thus, Defendant Crown and Defendant C are liable for legal damages based on the Trademark Act at least 67-2 to the Intervenor who acquired the service mark right from the Plaintiff or the Plaintiff as the holder of the service mark right.

[Judgment]

According to Articles 67-2(1) and 2(3) of the Trademark Act, the holder of a service mark right may claim compensation for a considerable amount of damages not exceeding 50 million won, instead of claiming compensation for damages under Article 67 of the Trademark Act against a person who has intentionally or negligently infringed on the right to his/her service mark using a service mark identical or similar to the registered service mark that he/she uses, or similar to, the designated service business. In such cases, the court may recognize a reasonable amount of damages in consideration of the overall arguments and the result of examination of evidence. Such statutory damages claim shall be applied from the first lawsuit on infringement of the right to use the service mark or exclusive license after the date of entry into force of the Free Trade Agreement between the Republic of Korea and the United States of America pursuant to Article 1(4) of the Trademark Act (amended by Act No. 1113, Dec. 2, 2011).

However, as seen earlier, there is no evidence supporting that Defendant Cown used the registered service mark as a person holding the service mark while running the genetic testing business using the mark Nos. 1, 2, and 3 similar to the Plaintiff’s service mark.

In addition, the marks Nos. 1, 2, and 3 used by Defendant Cown are similar to the Plaintiff’s service mark, but it cannot be concluded that they constitute a service mark identical or similar to the Plaintiff’s service mark.

Therefore, the Intervenor’s assertion that Defendant Crown-jin and Defendant C used a mark identical or similar to the registered service mark used by the Plaintiff or Intervenor and actually engaged in genetic testing business is without merit.

(i) A copy of the request for deletion of similar marks indicated on the web site, etc. of Defendant Crown;

【Creditor’s Claim】

The Intervenor deleted the mark Nos. 1, 2, and 3 similar to the Plaintiff’s service mark at the web site, etc., but this is temporary and there is a concern for using the similar mark in the web site, etc. in the future. Therefore, the Intervenor seeks to delete the similar mark indicated on Defendant Crown’s web site, etc. based on the right to claim the prevention of the service mark right.

[Judgment]

However, Defendant Crown deleted the mark Nos. 1, 2, and 3 similar to the Plaintiff’s service mark at the web site, etc. after the Plaintiff’s criminal complaint. Since Defendant Crown runs genetic testing business using only four marks which do not infringe Plaintiff’s service mark right, the Intervenor cannot request the deletion of a similar mark if it does not use a similar mark at the time of the closing of argument.

In addition, it cannot be deemed that Defendant Cown could again use the similar mark on the web site, etc., and the Intervenor’s above assertion is without merit.

4. Conclusion

Thus, Defendant Crown shall not use the marks Nos. 1, 2, and 3 for the genetic testing business. The marks Nos. 1, 2, and 3 for the genetic testing business shall not be displayed, displayed, or distributed in advertisements, test results, transaction documents, signboards, or name plates with respect to the genetic testing business, and the marks Nos. 1, 2, and 3 for the genetic testing business with the marks No. 1, 2, and 3 shall be deleted.

Therefore, the Intervenor’s claim against Defendant Cown is justified within the scope of recognition as above. The remainder of the claim against Defendant Cown, the claim against Defendants 2 and 3, and the conjunctive claim against Defendant Cown and Defendant 3 added by the Intervenor in this court is without merit. The part of the first instance judgment against Defendant Cown (excluding the part of the claim for prohibition of use of the name) is unfair, and thus, the relevant part is modified based on Defendant Cown’s appeal, and the Intervenor’s appeal against the Defendants is all dismissed. The Intervenor’s conjunctive claim against the Defendants is all dismissed. The Intervenor’s conjunctive claim against Defendant Cown and Defendant 3, added by this court, are all dismissed.

[Attachment]

Judges Lee Dong-sung (Presiding Judge)

심급 사건

-서울남부지방법원 2013.9.26.선고 2012가합14853

서울고등법원 2014.7.24.선고 2013나71687, 2013나71694(병합)

-대법원 2016.9.30.선고 2014다59712, 59729

원심판결

-서울남부지방법원 2013. 9. 26. 선고 2012가합14853, 2012가합23338(병합) 판결

본문참조판례

-2002. 10. 11. 선고 2002다33175 판결

-대법원 1994. 5. 24. 선고 94후265 판결

-대법원 1995. 11. 21. 선고 95후804 판결