[1] Where concurrent import of authentic goods does not infringe a domestic trademark right or exclusive license

[2] The case holding that even though a legally attached and sold product is recognized as a genuine product within Japan, if the product was exported to Korea beyond its border in violation of an agreement to sell only within Japan, such product shall not be deemed as a lawful concurrent import of a genuine product, at least within the Republic of Korea, because it is difficult to regard it as a genuine product

[1] A concurrent import of authentic goods shall, in principle, infringe upon the trademark right or exclusive license of the domestic owner of the trademark right or exclusive licensee, insofar as the territorialism applies to the trademark right. However, a foreign owner of the trademark right and the domestic owner of the trademark right are not likely to use the trademark right in a legal or economic relationship between them and to gain exclusive benefit by abusing the trademark right, and the goods produced and sold in a foreign country are not produced and imported by the order production method in a third country where personnel expenses are low. If the goods produced and sold in a foreign country are not different in quality from the goods produced and sold by the domestic owner of the trademark right or exclusive licensee, the domestic owner of the trademark right or exclusive licensee shall not infringe on the trademark right or exclusive license of the said goods, unless the import from a foreign country is likely to dilution such credit or customer attraction personnel with the goods affixed with the trademark for a long time in the Republic of Korea by an ombudsman who produces, sells, and takes advantage of quality compared with the goods produced and sold by the domestic owner of the trademark right or exclusive licensee.

[2] The case holding that even though a legally attached and sold product is recognized as a genuine product within Japan, if the product was exported to Korea beyond its border in violation of an agreement to sell only within Japan, such product shall not be deemed as a lawful concurrent import of a genuine product, at least within the Republic of Korea, because it is difficult to regard it as a genuine product

[1] Articles 65 and 66 of the Trademark Act / [2] Articles 65 and 66 of the Trademark Act

[1] Supreme Court Decision 96Do2191 delivered on October 10, 1997 (Gong1997Ha, 3528)

panco Co., Ltd. (Attorney Lee Young-young, Counsel for defendant-appellant)

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

Daegu District Court Order 2001Kahap647 dated December 3, 2001

1. The part of the order of the court below against the obligee shall be revoked.

2.(a) The obligor shall not use any mark listed in the separate sheet in the store, warehouse, office and factory signboards to sell such products, such as room stones, ccushion, car plug and so on as well as containers and containers thereof, advertising advertisements, name cards, packaging paper, shopping bags, etc., and any mark listed in the separate sheet;

(b) Each mark listed in the separate sheet in the debtor's store, warehouse, office and any other place shall be attached or printed with a direction indicator, embankment, cushion, car flass and so on, and its packaging, containers, advertisements, packaging paper, name cards, shopping bags, etc. and shall be placed under the custody of the execution officer entrusted by the creditor.

(c) The enforcement officer shall publicly notify the purport of the above order in an appropriate manner.

3. The costs of lawsuit shall be borne by the debtor in the first and second instances.

1. Purport of request;

The entries in paragraph (2) of this Article and the debtor shall not use each mark listed in the separate sheet for signboards outside the store, warehouse, office, or factory (the original judgment was rendered by citing an application corresponding to the back part of the original purport of the application, but the debtor accepted an objection raised by the debtor as 201Kahap10000 on February 15, 2002 and rendered a judgment dismissing the application, and the above judgment became final and conclusive around that time as the creditor did not appeal).

2. Purport of appeal;

The same shall apply to the text of the order.

1. Infringement on the exclusive license of trademark rights;

A. Facts of recognition

The following facts do not conflict between the parties, or can be acknowledged in full view of Gap evidence 1-1-4, Eul evidence 2-1-2, Eul evidence 3-1-4, Gap evidence 4-1-2, Gap evidence 5-1-4, Gap evidence 6 through 9, Gap evidence 21, 22, 24, 25, Eul evidence 4-23 through 29, Eul evidence 23-1-23, Eul evidence 23-2, and 2-2. There is no counter-proof.

(1) On February 5, 1997, Nonparty ○○○○○○○○○○○○○○○ filed an application for trademark registration of each of the marks listed in the separate sheet (hereinafter referred to as the “instant marks”) as designated goods on each of the following (registration number 1 omitted), with the registration number of July 31, 1998 (registration number 2 omitted), “F 1 omitted, 1997”, and the upper part, melter, first part, melter, carbox, brow, snowbrow, general storage room, milk amount, skin amount, sinkinky, sinkyky, cremation, cremation, sinkyke, sinkyke, 200, 300, 600, 60,0000, 60,0000,0000,0000,0000,000) on the designated goods.

(2) The obligee entered into a contract to establish an exclusive license for each of the above designated goods as to the mark of this case with the above trademark right holder, and completed the registration of establishment of each exclusive license as to the trademark right of the above (registration No. 1 omitted), (registration No. 1 omitted), (registration No. 2 omitted), (registration No. 3 omitted), (registration No. 4 omitted), and (registration No. 4 omitted), on June 29, 2002, and (registration No. 6 omitted).

(3) On the other hand, the non-party A (the representative non-party 1, the non-party 1, the non-party 2) (the non-party 2) (the non-party 1, the non-party 4; hereinafter referred to as "the non-party 1") granted the clothes and fashion-related goods related to the mark of this case to the non-party 1, the non-party 4 (the non-party 1, the non-party 4; hereinafter referred to as "the non-party 1") who is a Italian corporation, exclusive right to produce and sell the goods related to the mark of this case in Japan and other areas, and the non-party 2) granted the non-party 1, the non-party 1, the non-party 2, the non-party 3, the non-party 2, the non-party 1, the non-party 3, the non-party 1, the non-party 1, the non-party 3, the exclusive right to manufacture or sell the trademark of this case to the plaintiff.

(4) The ELmark supplied the goods to Estedo with the direction-setting, cub and cub, etc. manufactured on the basis of the exclusive re-working license between the non-party Sstedo Co., Ltd. (hereinafter referred to as the "Sstedo"), upon entering into a sales contract with the content that the goods will be sold only in Japan and sold or distributed to foreign countries. The Estedo supplied the said goods to Estedo. On November 9, 1998 in the name of "Spoland (Spoland)", "Spoland (Spoland)", in violation of the above contract, between the debtor and the debtor engaged in the business of importing and selling the automobile goods, and then exported the goods of this case to the debtor, after entering into a supply contract with the content that the goods of this case (hereinafter referred to as the "goods of this case").

(5) The debtor imported the goods of this case from E.I.D. and sold them at the store of the trade name "Spoland", and used the mark in this case on the interior walls, employees' boxes, etc. In addition, the debtor published an advertisement using the words, such as "automobile life" in October 199, July 200 and October 200, February 200, and "CarV" in February 2001, along with the product photographs attached to each of the marks of this case in February 2001.

(b) Markets:

According to the above facts, the obligor shall be deemed to have infringed upon the obligee's exclusive license by importing and selling the goods of this case with the instant mark attached with the exclusive license in the Republic of Korea from Japan. Thus, barring any other special circumstance, the obligor shall be obliged to suspend the sale and sale of the goods of this case as well as publicity and advertisement activities for the purpose of selling the goods of this case by performing the obligation to prohibit and prevent the infringement on the exclusive license of this case

2. The debtor's defense

A. The debtor's assertion

The debtor asserts that the scope of the creditor's exclusive license does not extend to the goods of this case, since the creditor's goods imported and sold by the debtor with the exclusive license as to the mark of this case are not identical or similar to the goods of this case, and even if the goods are identical or similar to the goods of this case, this does not infringe the creditor's exclusive license

(b) Markets:

(1) Whether the goods are identical or similar goods

(A) Whether the designated goods are similar should be determined on the basis of whether there is a concern for misconception as to the goods manufactured or sold by the same business entity when using the trademark identical or similar to the goods compared to the goods. However, the similarity of the designated goods should be determined on the basis of the common sense of the general trading society by comprehensively taking into account the characteristics of the goods, such as quality, shape, use and production, sales sector, scope of consumers, etc. (see Supreme Court Decision 2000Hu815, Oct. 27, 2000).

(B) First, in light of the whole purport of the examination as to whether the instant mark's designated goods such as melter, spoke, spoke, spoke, and spoke are identical or similar goods from among the instant goods, the term "cuber, spoke, spoke, spoke" is the same as G2606 in terms of the classification of product categories as indicated in the Enforcement Rule of the Trademark Act, and the term "cuber, spoke, spoke" and "cuber" are the same as G2602 in terms of the above similar military code, and even if cuber, cuber, spoke, spoke, and spoke are limited to automobiles, it is not different from those of cuber or spoke, spoke, spoke or spoke, and it is not different from those of cuber or spoke, spoke, spoke or spoke, etc.

(C) Next, in light of the whole purport of examination as to whether the "motor vehicle direction system" among the instant marks is identical or similar to the designated goods of the instant marks, it cannot be concluded that the two are identical or similar goods, since the quality, shape, use and production of the instant marks and the scope of consumers is different, even though the instant marks fall under the same kind of product classification, it cannot be concluded that the two are identical or similar goods, in view of the whole purport of examination as to whether the “motor vehicle direction system” among the instant marks is the same or similar goods, and the “non-medical direction system” registered as the designated goods of the instant marks is the same as that of the human body or cosmetic No. 14-3 of the instant marks, and thus, it is difficult to determine that the instant marks fall under the same kind of product or similar goods. However, in light of the above purport of examination as to the written contents of evidence No. 5-1 to No. 21, 22, 24, and 25 evidence, the “non-medical direction system for the designated goods of the instant marks is included in the direction for manufacturing or non-use.”

(D) Therefore, we cannot accept the Defendant’s assertion that the obligee’s designated goods with exclusive license as to the instant mark are not identical or similar to the instant goods imported and sold by the obligor.

(2) Whether an act constitutes concurrent import of authentic goods

(A) Where a trademark right holder registers a trademark identical to that of the Republic of Korea in accordance with each domestic law, the act of importing and selling goods on which a trademark is lawfully affixed and sold in a foreign country in accordance with that domestic law without permission of the trademark right holder or exclusive licensee; in other words, concurrent import of authentic goods, as a matter of principle, trademark rights or exclusive license of the domestic trademark right holder or exclusive licensee shall be infringed unless the trademark right is applied to the trademark right; however, there is a close legal or economic relationship between the trademark right holder and the domestic trademark right holder or between him/her; thus, there is no concern that the trademark right holder and the domestic trademark right holder might unfairly gain exclusive profits by abusing the trademark right; and the goods produced and sold in a foreign country are not imported by the main production method in a third country with low labor cost compared to the goods produced and sold by the domestic trademark right holder or exclusive licensee; if there is no difference in quality between the goods produced and sold in the Republic of Korea and the goods manufactured and sold, the domestic trademark right holder or exclusive licensee has to obtain independent credit or customer dilution from the domestic consumer from him/her.

(B) First, as to whether the instant goods imported and sold by the debtor were the goods sold by attaching and selling the instant mark in accordance with the domestic law of Japan and being exported to Korea lawfully, that is, whether the instant mark is a genuine goods, the Health Center granted to Lmark an exclusive license for production and sale in Japan and its other regions. The Lmark agreed not to sell and distribute the instant goods only within Japan after the instant goods were produced, and sold the instant goods to E.I.D. to E.D. with the agreement that it would not sell and distribute them to any foreign country. Accordingly, according to the above recognized facts, the instant goods were properly attached and sold in Korea in accordance with the domestic law of Japan. However, it is difficult to view the instant goods as a genuine goods of Korea beyond the scope of the Republic of Korea because the instant mark violated the agreement to sell the instant goods within Korea.

(C) Furthermore, as to whether a trademark right holder in Japan and a trademark right holder in the Republic of Korea are the same person or have a close legal or economic relationship between them, as acknowledged earlier, the trademark right holder in the Republic of Korea as to the mark of this case is a natural person who is separatedly "○○○○○○○○○○○○○○○○○○○○○○○." It is clear that the exclusive licensee is the creditor. Within Japan, it is unclear whether the trademark right holder or the exclusive licensee on the mark of this case is in the Republic of Korea or not, and according to the evidence No. 6 and evidence No. 23-1 and 2, it is unclear whether the trademark right holder or the exclusive licensee is in the Republic of Korea or not (the evidence No. 6, lawsuit No. 23-1 and No. 2, it appears that the trademark right holder is the exclusive licensee, while it appears that the trademark right holder or the representative director in Japan and ○○○○○○○○○○○○ is an economic trademark right holder or not in the Republic of this case.

(D) Furthermore, according to the evidence as mentioned above, the creditor obtained an exclusive license from ○○○○○○○○○○○○, a domestic owner of the trademark of this case, and registered as the exclusive licensee on November 17, 1999, and then produced and sold goods bearing the mark of this case, and had an independent credit and customer attraction for the mark of this case from domestic consumers. Thus, it is reasonable to deem that the debtor's act of importing and selling the goods of this case from Japan could dilution such credit and customer attraction. Thus, even if the goods of this case imported and sold by the debtor are genuine goods, such concurrent import is in violation of the creditor's exclusive license.

(E) Therefore, the obligor’s above assertion to the effect that the obligor’s act of importing and selling the instant goods constitutes an act of concurrent importation of authentic goods and thus does not infringe the obligee’s exclusive license as to the instant mark is without merit.

3. Conclusion

Therefore, since the debtor has imported and sold the goods bearing the mark of this case by infringing the creditor's exclusive license and engaged in publicity and advertisement activities for the sale thereof, as well as in the future, the part falling under the item of Paragraph 2 of this case among the creditor's application of this case demanding the debtor to suspend infringement of exclusive license as above against the debtor should be cited as it has been sufficiently substantiated and the need for preservation of the right to be preserved. Since the part against the creditor in the judgment of the court below is unfair with different conclusions, the corresponding part of the judgment of the court below which accepted the creditor's appeal and ordered the debtor to suspend infringement of exclusive license as described in Paragraph 2 of this case, and the costs of lawsuit shall be decided as per Disposition at the expense of the debtor who lost both the first and second court.

Judges Yellow wood (Presiding Judge) Kim Tae, Taecheon Kim