[1] Where an act of importing goods identical or similar to the designated goods on which a trademark identical or similar to a trademark registered in Korea is attached does not constitute an infringement of the registered trademark right

[2] Where a foreign trademark right holder sells or exports goods to the Republic of Korea in violation of an agreement restricting the place of sale after attaching the trademark, whether the violation of such agreement alone constitutes an unlawful trademark (negative)

[1] In order to ensure that an act of importing goods identical or similar to the designated goods on which a trademark identical or similar to a trademark registered in Korea is attached does not constitute an infringement of the registered trademark right, the trademark should have been attached to the imported goods by the foreign trademark right holder or the legitimate licensee, and the trademark should have a close relationship with the foreign trademark right holder or the legitimate licensee of the trademark right in Korea, or under other circumstances, the trademark attached to the imported goods can be seen as indicating the origin identical or similar to the registered trademark in Korea.

[2] Even if goods have been sold or exported to other areas in violation of the agreement on the place of sale restriction between the parties to the transaction after attaching a trademark by a foreign trademark holder or a legitimate licensee, such circumstance alone does not change the source of the goods. Thus, the violation of such agreement does not constitute an unlawful trademark duly attached by a foreign trademark holder.

[1] Articles 2(1)6 and 66 of the Trademark Act / [2] Article 2(1)6 of the Trademark Act

panco Co., Ltd. (Law Firm Doo, Attorneys Lee Young-soo et al., Counsel for the defendant-appellant)

Debtor (Law Firm Sejong, Attorneys Jeon Jeon-soo et al., Counsel for the defendant-appellant)

Daegu High Court Decision 2002Kahap20 delivered on October 4, 2002

Of the judgment of the court below, regarding the case of a provisional injunction against the use of the trademark between the creditor and the debtor as to the Daegu High Court 2001Ra61, the part of the judgment of the court below which approved the mark "RBERA DI CAMINO" and the mark "Roberta Dmerino" as to the mark "debris, coo, car coo, car coo, packing containers and containers thereof, propaganda, packing paper, shopping bags" shall be reversed, and the above part of the judgment of the court below shall be revoked, and the appeal by the creditor corresponding to the above revoked part shall be dismissed. The remaining appeal by the debtor shall be dismissed. The total costs of the lawsuit shall be borne by each party.

1. The grounds of appeal are examined.

A. The judgment of the court below

In full view of the evidence adopted, the court below held that since the creditor's provisional disposition (registration number 1 omitted): the registered trademark (registration number 2 omitted); the registered trademark (registration number 2 omitted); the registered trademark (registration number 3 omitted); the registered trademark (registration number 3 omitted); and the registered trademark (registration number 4 omitted); and the registered trademark (registration number 4 omitted); the debtor's trademark (registration number : NABT DI CA CAU CAO) were manufactured by the debtor's ELmark Co.,, Ltd. (hereinafter referred to as "ELmark"); the debtor's application for sale of the above imported goods; the debtor's trademark constitutes a non-use-use-use-use-use-use-use-use-use-use-use-use-use-use-use-use-use-use-use-use-use-use-use-use-use-use-use-use-use-use-use-use-use-use-use-use-use-use-use-use-use-use-use-of-use-use-use-use-use-use-use-use-use-go.

B. Judgment of the Supreme Court

(1) As to the grounds of appeal Nos. 1 and 3

According to the records, the above fact-finding and judgment of the court below on the similarity of goods, abuse of rights or good faith are just, and the judgment of the court below contains judgment on the part of the debtor's application for custody of enforcement officers on the goods, and it cannot be said that there is omission of judgment on that part. Thus, there is no error of law such as misunderstanding of legal principles as otherwise

(2) Regarding ground of appeal No. 2

In order to ensure that an act of importing goods identical or similar to the designated goods of which a trademark is attached, which is identical or similar to the trademark registered in Korea, does not constitute an infringement of the registered trademark right, the trademark should have been attached to the imported goods by the foreign trademark owner or legitimate user, and the trademark attached to the imported goods can be seen as indicating the same source as the registered trademark in Korea due to the legal or economic relationship between the foreign trademark owner and the registered trademark owner in Korea, or other circumstances; and on the other hand, even if the goods were sold or exported to another area in violation of the agreement on the restriction of the place of sale between the parties to the transaction after attaching the trademark to the foreign trademark owner or legitimate user, such circumstance alone does not change the source of the goods; therefore, the violation of such agreement alone does not make the trademark legitimately attached by the foreign

According to the above legal principles and records, the registered trademark right holder of Japan, which is identical to the registered trademark (registration No. 4 omitted), has been a Co., Ltd. Co., Ltd. (hereinafter referred to as "Co., Ltd.") since around 1979, with Lmark, entered into an agreement with Lmark to allow Lmark to produce and sell goods bearing the above mark. Estedo purchased goods such as "vehicle seat, cood, car cood, car straw, and car strawing agent" produced by Lmark, and the debtor imported the above goods from Estedo to Korea. Thus, the above goods imported by the debtor cannot be said to be goods bearing the trademark right holder of a foreign country or legitimate licensee, even if exported to Korea in violation of the agreement on the place of sale, as recognized by the court below, even if they were exported to Korea in violation of the registered trademark agreement.

However, even if examining records, it is difficult to understand who is the registered trademark right holder in Japan," which is identical with the registered trademark "(registration number 2 omitted) and (registration number 3 omitted), so it is difficult to understand the relationship with the registered trademark right holder in Korea. As seen above, it is not only to import goods from a foreign country with which the above trademark is attached, but also to make Lmark produce and sell goods on which the above trademark is attached, and thus it is committed an act of using them as the source of goods. Thus, it cannot be said that there is any legal and economic relationship between the registered trademark right holder in Japan and the domestic registered trademark right holder, the trademark right holder or the exclusive licensee, or any other circumstance that the source of goods imported by the debtor is substantially identical with the registered trademark right holder in Korea.

Therefore, the above decision of the court below is somewhat inappropriate in its reasoning, but it is just in its conclusion, and the court below did not order the fact-finding to the trademark right holder in Japan or to disclose the relationship between the trademark right holder in Italian and the trademark right holder in Japan, but it cannot be said that there is an incomplete hearing due to the violation of the duty of explanation in the judgment below. Thus, there is no error of law such as misunderstanding of legal principles

2. On the other hand, according to the records, the court below's decision on the invalidation of the registered trademark (registration No. 1 omitted) was rendered by the Intellectual Property Tribunal 2003Da74 on July 22, 2004 and the above registered trademark became final and conclusive on July 22, 2004. Therefore, since the above registered trademark was not deemed to have existed from the beginning, among the provisional disposition decision of this case, the exclusive license of the above trademark is deemed to have been preserved as the right to the use of the trademark in relation to the mark "Roberta DI CAO" and "Roberta dImin" as the right to the use of the trademark in this case.

3. Therefore, in the judgment of the court below, the above part of the provisional disposition decision of this case cannot be maintained as it is, and it is sufficient for the court to directly judge this case. Thus, the above part of the provisional disposition decision of this case shall be revoked. The creditor's appeal corresponding to the above revoked part shall be dismissed. The remaining appeal by the debtor shall be dismissed. All costs of the appeal shall be borne by each party. It is so decided as per Disposition by the assent of

Justices Shin Hyun-chul (Presiding Justice)