[1] Where a person who concluded a contract to establish an exclusive license with a trademark right holder and obtained prior consent from a trademark right holder to establish a non-exclusive license does not complete the establishment registration of the exclusive license, whether an exclusive licensee of a registered trademark may establish a non-exclusive license for another person (negative)

[2] The case holding that the use of a trademark is not a legitimate use of the trademark by a person who entered into only a master agreement with a trademark right holder and obtained permission for use from a person who did not complete the establishment registration of the exclusive license

[1] According to Article 56 (1) of the Trademark Act, the establishment of an exclusive license does not take effect unless it is registered. Thus, even if a person who signed a contract to establish an exclusive license with a trademark right holder does not register such establishment, the exclusive license under the Trademark Act cannot be acquired. According to Articles 57 (1) and 55 (6) of the Trademark Act, a non-exclusive license can only be established and granted by a trademark right holder or an exclusive licensee with the trademark right holder's consent. Thus, even if a person who signed a contract to establish an exclusive license with a trademark right holder and obtained prior consent from a trademark right holder on the establishment of a non-exclusive license, if the establishment of an exclusive license was not completed, the exclusive licensee of a registered trademark cannot establish a non

[2] The case holding that the use of a trademark is not a legitimate use of the trademark by a person who entered into only a master agreement with the trademark right holder and obtained permission for use from a person who did not complete the establishment registration of the exclusive license

[1] Articles 5(6), 56(1), and 57(1) of the Trademark Act / [2] Article 73(1)3 of the Trademark Act

[1] Supreme Court Decision 2002Hu703 decided Sep. 13, 2004 (Gong2004Sang, 1676)

Francl Raddi (Patent Attorney Jeong Young-young, Counsel for the defendant-appellant)

Walart Stez (Attorney Cho Tae-tae, Counsel for the defendant-appellant-appellant)

Patent Court Decision 2004Heo66 delivered on July 22, 2004

The appeal is dismissed. The costs of appeal are assessed against the plaintiff.

We examine the grounds of appeal.

1. According to Article 56(1) of the Trademark Act, the establishment of an exclusive license does not take effect unless it is registered. Thus, even if a person who has concluded a contract to establish an exclusive license with a trademark right holder does not register such establishment (see Supreme Court Decision 2002Hu703, Sept. 13, 2004). According to Articles 57(1) and 55(6) of the Trademark Act, a non-exclusive license can be established only for a person who has obtained the consent of the trademark right holder or an exclusive licensee who has obtained the consent of the trademark right holder. Thus, even if a person entered into a contract to establish an exclusive license with a trademark right holder and obtained the prior consent of the trademark right holder, if the establishment of the exclusive license was not completed, the exclusive licensee of a registered trademark cannot establish a non-exclusive license for another person.

2. According to the facts duly established by the court below, the plaintiff, who is the trademark right holder of the registered trademark of this case, changed its trade name into "Seman-riririririririririririririririririririririririririririririririri" ("Seriririririririri"), and the plaintiff, which is the trademark right holder of the registered trademark of this case (registration number omitted) and the right to establish non-exclusive license as to the registered trademark of this case, can not be seen as being used within 0 years before the establishment registration of the registered trademark of this case, or as being claimed by the plaintiff, the court below did not err in the misapprehension of legal principles as to the registered trademark of this case as an agent of the trademark right holder of the registered trademark of this case, since it cannot be seen as being used within 3 years before the establishment registration of the exclusive license of this case, since the court below concluded the trademark of this case as an agent of the plaintiff on June 3, 1999.

3. Therefore, the appeal is dismissed, and the costs of appeal are assessed against the losing party. It is so decided as per Disposition by the assent of all participating Justices.

Justices Kim Young-ran (Presiding Justice)