[1] Criteria for determining whether a mark indicating another person's goods under Article 2 subparagraph 1 (a) of the Unfair Competition Prevention and Trade Secret Protection Act is widely known and the method of application

[2] The point of time to determine whether a product is well-known in violation of Article 18(3)1 and Article 2 subparag. 1 of the Unfair Competition Prevention and Trade Secret Protection Act (=the time of infringement)

[1] Whether a mark indicating another person's goods is widely known in the Republic of Korea under Article 2 subparagraph 1 (a) of the Unfair Competition Prevention and Trade Secret Protection Act is a standard for determining the use period, method, pattern, quantity, scope of use, scope of transaction, etc., and whether it is objectively widely known under the social norms and the actual circumstances of transaction of goods. In cases where a trademark or a product mark with no or weak distinctiveness becomes widely known in the Republic of Korea as a result of the use of a trademark or a product mark, the standard should be strictly interpreted and applied since it grants a right to a mark that is not originally recognizable.

[2] Whether a mark indicating another person's goods is widely known in the Republic of Korea under Article 18 (3) 1 of the Unfair Competition Prevention and Trade Secret Protection Act should be determined at the time of infringement.

[1] Article 2 subparagraph 1 (a) of the Unfair Competition Prevention and Trade Secret Protection Act / [2] Article 2 subparagraph 1 (a) and Article 18 (3) 1 of the Unfair Competition Prevention and Trade Secret Protection Act

[1] Supreme Court Decision 99Hu1645 delivered on September 17, 199 (Gong1999Ha, 2215) Supreme Court Decision 98Do2250 delivered on April 10, 2001 (Gong2001Sang, 1167) Supreme Court Decision 2003Do7827 Delivered on April 13, 2006

Defendant 1 and one other

Defendants

Attorney Han Han-chul

Daejeon District Court Decision 2007No1929 Decided November 16, 2007

The conviction part of the judgment of the court below is reversed, and that part of the case is remanded to the Daejeon District Court Panel Division.

The grounds of appeal are examined.

According to the evidence adopted by the first instance court, the lower court determined that the Defendants’ act of manufacturing and selling mack using the original parts marked with the trademark “” (registration number No. 610813, the designated goods: synthetic fibres, the mixed fire-prevention fiber textile goods, etc.; hereinafter “instant trademark”) constituted an unfair competition act under Article 2 subparag. 1(a) of the Unfair Competition Prevention and Trade Secret Protection Act (hereinafter “Unfair Competition Prevention Act”) between March 8, 2005, the time of the instant infringement, from March 8, 2005, to August 1, 2005.

However, it is difficult to accept such judgment of the court below for the following reasons.

Article 2 subparag. 1 (a) of the Unfair Competition Prevention Act provides that the act of causing confusion with another person's goods by using "as widely known in the Republic of Korea," another's name, trade name, trademark, container or package, or other goods identical or similar to a mark indicating another person's goods, or by selling goods using such goods, shall be deemed as "unfair competition act" and Article 18 (3) 1 of the same Act provides that a person who has engaged in an unfair competition act under Article 2 subparag. 1 (a) of the same Act shall be punished by imprisonment for not more than three years or by a fine not exceeding 30 million won. Whether a mark indicating another person's goods is widely known in the Republic of Korea under Article 2 subparag. 1 (a) of the same Act shall be determined based on the period, method, mode, quantity, scope of trade, etc. of trade, and whether it is objectively known in terms of social norms (see Supreme Court Decisions 99Do691, Sept. 14, 2001; 2008Do3797, etc.).

According to the facts and records acknowledged by the court below, the trademark of this case as a whole constitutes a trademark of the nature indicating the quality, efficacy, use, etc. of designated goods in a common way, by being recognized by traders or users to the extent of "synthetic textile textile goods which have an essential function in blocking the outer line" as a whole in relation to the designated goods (the Patent Court Decisions 1169 pages, 1175 of the trial record, judged that the mark used by the defendants falls under a trademark of the nature as a trademark of the nature, but this provision applies to the trademark of this case), and the fact that the trademark of this case acquired well-knownness as a result of the use of a trademark of a non-distinctive or weak nature display, the trademark of this case shall be determined by strict standards, and it shall not be presumed that the trademark of this case was advertised to a certain degree

In light of the above legal principles, it is difficult to view that the trademark of this case, which was registered on March 9, 2005 at the time of the infringement, was widely known domestically as a trademark of Co., Ltd. between March 8, 2005 and August 29 of the same year (the prosecutor, who was prosecuted as a violation of the Trademark Act on March 29, 2006, submitted an application for changing the indictment to add the trademark of this case to the conjunctive facts charged with the violation of the Unfair Competition Prevention Act on January 12, 2007, and submitted evidentiary materials as to the well-knownness of the trademark of this case. Many of such evidence were produced after the infringement of this case, 2006, newspaper search materials made in March 9, 2007, and web search materials, and thus, it is insufficient to recognize the remainder of the trademark of this case as widely known to the Republic of Korea at the time of the infringement.)

Therefore, even if there is room to see that the Defendants had the intention of unfair competition, the Defendants’ act of manufacturing and selling Maices using the original body bearing the trademark “” does not constitute an unfair competition act that causes confusion with the goods using the trademark of this case, Co., Ltd.

Nevertheless, in determining whether the trademark of this case was acquired well-knownness, the court below held that the defendants' act violates the Unfair Competition Prevention Act without examining the evidence properly, and that the defendants' act was erroneous in the misapprehension of legal principles as to the well-knownness of the product mark under Article 2 subparagraph 1 (a) of the Unfair Competition Prevention Act and failing to exhaust all necessary deliberations, which affected the conclusion of the judgment, and there is reason to point this out.

Therefore, without further proceeding to decide on the remaining grounds of appeal, the guilty part of the judgment below is reversed, and this part of the case is remanded to the court below for a new trial and determination. It is so decided as per Disposition by the assent of all participating Justices on the bench.

Justices Kim Nung-hwan (Presiding Justice)