[1] Standard for determining whether the exercise of trademark rights by a trademark right holder constitutes an abuse of rights / Whether a claim for prohibition of trademark infringement or compensation for damages against a trademark user on the ground that the trademark owner acquired the well-knownness of the trademark as a result of using the trademark identical or similar to the registered trademark after the trademark was duly applied for and registered (negative)

[2] In a case where the preceding registered trademark and its marks and designated goods are identical or similar, and the latter registered trademark is used after the registration of the preceding registered trademark, and the latter registered trademark is recognized as a trademark by a specific person at the time of the decision of registration of the latter registered trademark, and thus the registration becomes null and void, in relation to the latter part of Article 7(1)11 of the Trademark Act, whether the use of the latter person's trademark is legitimate in relation to the preceding registered trademark or is exempted from infringement of the trademark right of the preceding registered trademark (negative)

[3] In a case where foreign corporation Gap, which is a trademark holder of the registered trademark " "" with golf loans, sought prohibition against the use of a trademark against Eul corporation, which imports and sells golf loans using the trademark " "" and "", the case holding that Gap corporation's exercise of trademark rights does not constitute abuse of rights, and even if the registration becomes null and void in relation to Eul corporation's "the latter registered trademark "," etc. used by Eul corporation's company, the use of Eul company's trademark does not be exempt from infringement of Gap corporation's trademark rights

[4] Requirements for determining that an act of importing goods identical or similar to the designated goods bearing a trademark identical or similar to the domestic registered trademark does not constitute an infringement of registered trademark rights

[1] In order to exercise the trademark right as an abuse of the right to the registered trademark and thus it is not permissible to grant the trademark right. In light of the purpose and background of the application and registration of the trademark, and the specific and individual circumstances where the trademark right holder exercised the trademark right against the other party, it should be recognized that the exercise of the trademark right exceeds the purpose and function of the trademark system aimed at maintaining the business credit of the trademark user and protecting the interests of the consumers, thereby disturbing the order of fair competition and commercial transactions, causing confusion among consumers, or violating the principle of trust and good faith, etc.

In addition, even if a trademark identical or similar to a registered trademark is used on goods identical or similar to the designated goods after the legitimate application and registration of the trademark, without justifiable grounds, and the trademark becomes known to the general consumers in Korea, credit and customer attraction personnel gained in relation to the used trademark is an act infringing the trademark right, and there is no value to be protected, and if such trademark is permitted, it would damage the foundation of the registration principle adopted by the Trademark Act. Thus, a claim for prohibition of infringement or compensation for damages, etc. based on the trademark right of the registered trademark against a trademark user based solely on the awareness of ordinary consumers formed in the market using the trademark cannot be deemed as an abuse of rights.

[2] Even if a subsequent registered trademark after the registration of the prior registered trademark is identical or similar to the prior registered trademark, and the trademark of another person recognized as a trademark of a specific person at the time of the decision to register the subsequent registered trademark was used after the registration of the prior registered trademark, the subsequent registered trademark may be invalidated as it constitutes "a trademark likely to mislead or mislead consumers" as provided by the latter part of Article 7 (1) 11 of the Trademark Act, and the subsequent registered trademark may be seen as being actually protected. However, considering that the purport of the above provision is not to protect the prior registered trademark, not to protect the prior registered trademark, but to protect the trust thereof by preventing misconception or confusion among general consumers on the source of goods using the trademark already recognized as a specific person's trademark, such result is nothing more than indirect and anti-consive effects following the protection of general consumers' interests, and thus, it cannot be seen as a legitimate infringement of the prior registered trademark in relation to the prior registered trademark.

[3] In a case where foreign corporation Gap, which is a trademark holder of the registered trademark " "" with golf loans, sought prohibition against the use of a trademark against Eul corporation, which imports and sells golf loans using the trademark " "" and "", the case holding that even if Eul corporation acquired the registered trademark for legitimate purposes and used the trademark similar thereto without justifiable grounds, although Eul corporation's use of the trademark came to be recognized as a specific person's trademark or well-known trademark among domestic ordinary consumers, it is difficult to view Eul corporation's use of the trademark as abuse of right on the ground that Gap corporation's use of the registered trademark "," which is the latter part of Article 7 (1) 11 of the Trademark Act, constitutes an "trademark which is likely to mislead consumers" with Eul company's use of the registered trademark "," the registration becomes null and void on the ground that it constitutes a trademark "trademark which is likely to mislead consumers" under the latter part of Article 7 (1) 11 of the Trademark Act.

[4] In order to ensure that an act of importing goods identical or similar to the designated goods bearing a trademark identical or similar to the designated goods registered in Korea does not constitute an infringement of the registered trademark right, the trademark should have been attached to goods imported by the foreign owner of the trademark right or the legitimate user of the trademark right, and the trademark attached to the imported goods should be deemed as indicating the same origin as the registered trademark in Korea due to the legal or economic relationship between the foreign owner of the trademark right and the Korean owner of the trademark right or other circumstances, and there should be no substantial difference between the imported goods and the goods bearing the registered trademark in Korea

[1] Article 2 of the Civil Act, Articles 50, 65, and 66-2 of the Trademark Act / [2] Articles 2(1)7, 7(1)11, and 66(1)1 of the Trademark Act / [3] Article 2 of the Civil Act, Articles 2(1)7, 7(1)11, 65, and 66(1)1 of the Trademark Act / [4] Articles 2(1)7, 66(1)1 of the Trademark Act

[1] Supreme Court Decision 2005Da67223 decided Jan. 25, 2007 (Gong2007Sang, 344) / [2] Supreme Court Decision 2006Hu3113 decided Jun. 28, 2007 (Gong2007Ha, 1193) / [4] Supreme Court Decision 2006Da40423 decided Oct. 13, 2006 (Gong2006Ha, 1914)

H-Swed (Law Firm Boba, Attorneys Soh-ho et al., Counsel for the plaintiff-appellant)

Other U.S. Sports Co., Ltd. (Law Firm Bobna, Attorneys Soh Engine et al., Counsel for defendant

Kata Golf Co., Ltd. (Law Firm Multilater et al., Counsel for the defendant-appellant)

Seoul High Court Decision 2010Na115746 decided November 30, 201

All appeals are dismissed. The costs of appeal are assessed against each appellant.

The grounds of appeal are examined (to the extent of supplement in case of supplemental appellate briefs not timely filed).

1. As to the grounds of appeal by the Plaintiff and the Plaintiff’s Intervenor

A. As to the Plaintiff’s ground of appeal No. 1

A person shall be appointed.

원심은, 피고가 일본의 주식회사 우메다쇼카이(주식회사 매전상회, 이하 ‘우메다쇼카이’라고 한다) 및 주식회사 카타나골프(주식회사 カタナゴルフ, 이하 ‘일본 카타나사’라고 한다)로부터 이들 회사가 생산하는 골프채(이하 ‘일본 카타나 골프채’라고 한다) 등을 국내에 수입·판매하면서 ‘ ’라는 상표를 사용함으로써, 지정상품을 ‘골프채(아이언), 골프공, 골프가방, 골프클럽’ 등으로 하고 오른쪽과 같이 구성된 이 사건 등록상표(등록번호 생략)에 관한 원고의 상표권(이하 ‘원고의 이 사건 상표권’이라고 한다)을 침해하였다는 원고의 주장에 대하여, 피고가 ‘ ’와 ‘ ’라는 상표(이하 ‘피고 사용상표들’이라고 한다) 등과 별도로 원고의 위 주장과 같은 상표를 사용하고 있음을 인정할 증거가 없다면서 원고의 위 주장을 배척하였다.

The allegation in the grounds of appeal disputing the above judgment of the court below is merely an error of the selection and value judgment of evidence and fact-finding based on the free evaluation of evidence belonging to the court of fact-finding. In addition, even when examining the reasoning of the judgment below in light of the evidence duly admitted, the court below did not err by violating the logical and empirical rules and exceeding the bounds of the free evaluation

In addition, since the court of final appeal is purely a legal judgment, the parties cannot dispute the fact-finding of the court below by submitting new arguments or evidence at the court of final appeal (see Supreme Court Decision 2005Da26550, Jul. 22, 2005, etc.). The argument that the above judgment of the court below is unlawful on the ground of new materials attached to the plaintiff's grounds of final appeal cannot be accepted

B. As to the Plaintiff’s ground of appeal No. 2

Even in cases where a mark similar to another person’s registered trademark is used, if it is not for the purpose of indicating source, which is the essential function of the trademark, and it cannot be perceived as the use of the trademark, the trademark right of the registered trademark cannot be deemed to have been infringed (see Supreme Court Decision 2001Da79068, Jun. 13, 2003, etc.).

The lower court rejected the Plaintiff’s assertion that the Defendant infringed on the Plaintiff’s trademark right by using the instant trade name, on the grounds that there is no evidence to acknowledge that the Defendant used the Defendant’s trade name, “Fachi” (hereinafter “instant trade name”).

The ground of appeal disputing such judgment of the court below is merely erroneous in the selection of evidence and evaluation of value belonging to the free evaluation of the court of fact-finding, and it is not erroneous in the judgment of the court below in light of the evidence duly admitted, even though examining the reasoning of the judgment below in light of the evidence duly admitted.

In addition, the plaintiff asserts that the court below did not recognize the trade name of this case even though the defendant used the trade name of this case for the purpose of unfair competition against the plaintiff's registered trademark of this case. However, the court below's decision on this issue is merely an additional decision based on the assumption that the trade name of this case is used as a trademark, and its propriety does not affect the conclusion of the judgment, and the above argument

C. As to the Plaintiff’s ground of appeal No. 3

The court below held that the claim for the cancellation of the domain name against the defendant was without merit, since the plaintiff was not the non-party, but the non-party who registered the domain name "(domeral address omitted)" registered on April 22, 2002, while the plaintiff filed for the cancellation of the domain name against the registered user.

Examining the reasoning of the lower judgment in light of the evidence duly admitted, the lower court did not err in its judgment as otherwise alleged in the grounds of appeal, including violation of the principle of one-time resolution of disputes.

D. As to the ground of appeal by the Plaintiff Intervenor

The grounds alleged by the Plaintiff’s Intervenor are disputing some facts among the grounds that the lower court rejected the Defendant’s assertion of abuse of rights, and even if there were errors in the lower court’s fact-finding, the lower court’s determination rejecting the Defendant’s assertion of abuse of rights is only favorable to the Plaintiff’s Intervenor, and it cannot be said that there was an error of law affecting the conclusion of the judgment, as long as the lower court did not err

2. As to the Defendant’s ground of appeal

A. As to the grounds of appeal Nos. 1 and 2

(1) In order to exercise the trademark right as an abuse of the right to the registered trademark and thus it is not permissible to grant the trademark right. In light of the purpose and background of applying for and registering the trademark, and the specific and individual circumstances where the exercise of the trademark right against the other party is to exercise the trademark right, it should be recognized that the exercise of the trademark right against the other party deviates from the purpose and function of the trademark system aimed at maintaining the business credit of the trademark user and protecting the interests of the consumers, thereby disturbing the order of fair competition and commercial transactions, causing confusion among consumers, or violating the principle of trust and good faith, etc. (see Supreme Court Decision 2005Da67223, Jan. 25, 2007, etc.

In addition, even if a trademark identical or similar to a registered trademark is used on goods identical or similar to the designated goods after the legitimate application and registration of the trademark, and as a result, the trademark was made known to the general consumers in Korea, the credit and customer attraction gained in relation to the trademark used is an act infringing the trademark right of the registered trademark, and if it is not worth being protected, it would impair the foundation of the principle of registration adopted by the Korean Trademark Act. Thus, the claim for prohibition of infringement or damages, etc. based on the trademark right of the registered trademark against the user cannot be deemed an abuse of rights solely on the basis of the awareness of general consumers formed in the market due to the use of the trademark as above.

Meanwhile, even if a subsequent registered trademark after the registration of the prior registered trademark is identical or similar to the prior registered trademark, and the trademark of another person recognized as a trademark of a specific person at the time of the decision to register the subsequent registered trademark was used after the registration of the prior registered trademark, its registration may be invalidated because the subsequent registered trademark constitutes “a trademark likely to mislead or mislead consumers” as provided by the latter part of Article 7(1)11 of the Trademark Act, and as a result, the subsequent registered trademark may be seen as being in fact protected. However, considering that the purport of the above provision is not to protect the prior registered trademark, not to protect the prior registered trademark after the prior registered trademark, but to protect the trust thereof by preventing misconception or confusion among general consumers with respect to the source of goods using the trademark recognized as a trademark of a specific person, such result is merely an indirect and counter effect following the protection of general consumers’ interests, and thus, it cannot be seen that the prior registered trademark is being used in relation to the prior registered trademark (see Supreme Court Decision 2006Hu3131, Jun. 28, 2007).

(2) The reasoning of the lower judgment and the evidence duly admitted reveal the following circumstances.

On September 22, 1997, the Plaintiff applied for the registered trademark of this case in Korea and registered the trademark on November 17, 1998. Around that time, the Plaintiff entered into a golf loan export and sale contract (hereinafter “Plaintiff’s existing export and sale contract”) with the contents that the Plaintiff would sell Mamerca and Japanese cara and Japanese golf products produced by these companies in an area other than Japan and began to import and sell Japanese cara and golf products in Korea.

In addition, from 197 to 1997, the Plaintiff applied for and registered a trademark identical or similar to the registered trademark of this case in many countries, including Singapore and Thailand, and around that time, the Plaintiff used the trademark to advertise and sell golf bonds, etc. in Singapore.

이와 같이 원고가 우리나라와 싱가포르 등에서 이 사건 등록상표 또는 그와 동일·유사한 상표를 출원·등록하여 사용해 오기 시작한 시기는 우메다쇼카이가 일본의 야마하 주식회사(ヤマハ 주식회사)로부터 지정상품을 ‘골프용구’로 하고 ‘ ’와 같이 구성된 상표(이하 ‘일본 카타나 상표’라 한다)의 상표권이전등록을 받은 2000. 8. 18.이나 일본 카타나사(회사 설립일인 1998. 6. 16. 당시의 상호는 ‘주식회사 골프디자인’이었다)가 그와 같이 상호를 변경한 2000. 3. 15.보다 앞선다.

On the other hand, as indicated in the holding of the court below, Defendant 1 or 5 marks in the decision of the court below, including Defendant 1 and Defendant 5, which are recognized as similar to the registered trademark of this case, were all used by the Defendant from May 31, 200, after the date of the registration of the trademark of this case, by importing and selling Japanese cara or golf loans, etc. (in particular, Defendant 1 and Defendant 2 marks include Japanese cara trademark and logs located only in the registered trademark of this case). Prior to the filing date of the application and registration of the trademark of this case, Defendant 1 and Japan were not used not only in Korea but also in Japan. From around 2003, Defendant 203 changed the main trademark of Japanese cara or golf loans into “SWOD”, and Defendant continued to purchase and sell the trademark of this case to the Plaintiff on June 11, 2004, and Defendant continued to refuse to use the trademark of this case with its intention to use it as the Plaintiff in Korea.

From 200 to 200, the Plaintiff had suspended import and sale of the instant trademark from Japanese cara or golf loans, and the Plaintiff’s existing export and sale contract was completely terminated in around 2002 to 2003. However, since around 2002, the Plaintiff was supplied with golf bonds, etc. with the instant registered trademark attached in the manufacturing method of the main trademark (OEM) from Norway Co., Ltd. (Northland Co., Ltd.) in Japan and sold them in Singapore, etc. from around 2004. Since around 2004, the Plaintiff sold golf bonds, etc. with the instant registered trademark attached in Korea, and after the establishment of the said company, the Plaintiff was supplied with golf loans, etc. in Korea with the instant registered trademark attached from the said company.

① On February 12, 2009, the Defendant filed a trial on the cancellation of trademark registration against the Plaintiff on the instant registered trademark on March 2, 2006 and on February 12, 2009, and on February 12, 2009, a trial decision dismissing all of the claims for a trial on the invalidation of trademark registration became final and conclusive. Meanwhile, on February 12, 2009, the Defendant filed a lawsuit against the Plaintiff for a trial on the invalidation of trademark registration against the Plaintiff’s registered trademark (hereinafter “Plaintiff’s subsequent registered trademark”), each of which consists of “golization, golf clubs, golf bags, golf balls, etc.” and “the Plaintiff’s subsequent registered trademark”), each of which is the designated goods, and brought a lawsuit against the Plaintiff for a trial on the invalidation of trademark registration, which constitutes a series of objections to the latter part of Article 10(1) of the Trademark Act’s “the trademark,” which is recognized as a trademark of golf loans, etc. by the Defendant’s use, and caused the Plaintiff to be confused with Defendant 101(10.

(3) Examining these circumstances in light of the legal principles as seen earlier, although the Plaintiff applied for and registered the instant registered trademark for justifiable purposes and acquired the trademark right, the Defendant continued to use the Defendant’s used trademarks, which were similar to the instant registered trademark, for a long time after the Defendant started to use the Defendant’s trademark, after which the instant registered trademark was registered, without justifiable grounds, and continuously cause dispute with the Plaintiff and continued to use the Defendant’s used trademarks for a long time. Thus, even if the Defendant’s use of the trademark came to be recognized as a specific person’s trademark or well-known trademark among domestic ordinary consumers as a result of such use of the trademark, it is difficult to deem that the Plaintiff’s exercise of the instant trademark right against the Defendant, by deviating from the purpose or function of the trademark system, constitutes an abuse of rights

In addition, comprehensively taking into account the aforementioned circumstances, the Plaintiff’s act of importing golf loans, etc. attached with the instant registered trademark from Japan constitutes unfair international trade practices in violation of Article 4 of the Act on the Investigation of Unfair International Trade Practices and Remedy against Injury to Industry in relation to the Japanese cara or trademark, or the Defendant’s act of importing and selling Japanese cara or golf loans, etc. from May 31, 2000 to September 11, 2009, which began to have been nine years from September 11, 2009, cannot be viewed otherwise on the ground that the instant lawsuit was filed.

Meanwhile, as seen earlier, the registration of the Plaintiff’s subsequent trademarks constitutes “a trademark likely to mislead consumers” under the latter part of Article 7(1)11 of the Trademark Act in relation to the trademark, etc. used by the Defendant. However, it cannot be said that the use of the Defendant’s trademark is legitimate in relation to the Plaintiff’s trademark registered prior to the Defendant’s use of the trademarks, or that the Plaintiff’s infringement on the Plaintiff’s trademark right of this case cannot be said to be avoided.

(4) Therefore, the lower court’s determination that the Plaintiff’s exercise of trademark right in this case did not constitute an abuse of right, contrary to what is alleged in the grounds of appeal, did not err by misapprehending the legal doctrine as to abuse of trademark right, unfair competition act and well-knownness under Article 2 of the Unfair Competition Prevention Act, and Article 7(1)11 of the Trademark Act, or by exceeding the bounds of the principle of free evaluation of evidence and logical and empirical rules.

B. Regarding ground of appeal No. 3

On the grounds indicated in its reasoning, the lower court accepted the Plaintiff’s assertion against the prohibition of using the Defendant’s trademark with respect to “golf products” other than “golf products” (golf products, golf strings, golf strings, golf hacks, golf hacks, golf hacks, and golf hacks) and ordered the prohibition of its use. Examining the reasoning of the lower judgment in light of the records, including the evidence duly admitted, the lower court’s determination that led to the above conclusion is acceptable even if the lower court’s reasoning was insufficient. In so doing, contrary to the allegations in the grounds of appeal, there were no errors by violating the principle of pleading and the principle

C. Regarding ground of appeal No. 4

In order to ensure that an act of importing goods identical or similar to the designated goods on which a trademark is attached, which is identical or similar to the designated goods 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 owner of the trademark right or the legitimate user of the trademark right. The trademark attached to the imported goods in Korea is closely related to legal or economic relations with the foreign owner of the trademark right or due to other circumstances, or can be seen as indicating the same origin as the registered trademark in Korea, and there should be no substantial difference between the imported goods and the goods on which the trademark owner in Korea attached the registered trademark (see Supreme Court Decision 2006Da40423, Oct. 13, 2006, etc.).

The court below rejected the defendant's assertion that the defendant's act of using the defendant's trademark in the advertisement of the defendant's import and sale of Japanese cara or golf loans attached with the defendant's trademark on the plaintiff's trademark of this case and Japanese cara or Japanese cara or Japanese carabagy's trademark in close relation with the law or economy, or it cannot be viewed that the defendant's trademark attached to Japanese cara or golf loans cannot be viewed as indicating the same source as the trademark of this case due to other circumstances. The court below rejected the defendant's assertion that the defendant's act of using the defendant's trademark in the advertisement should be permitted as acts that infringe the plaintiff's trademark of this case.

Examining the reasoning of the lower judgment in light of the evidence duly admitted, the lower court’s determination is based on the legal doctrine as seen earlier, and there was no error of misapprehending the legal doctrine on concurrent imports.

3. Conclusion

Therefore, all appeals are dismissed, and the costs of appeal are assessed against each appellant. It is so decided as per Disposition by the assent of all participating Justices on the bench.

Justices Shin Young-chul (Presiding Justice)