Plaintiff Co., Ltd. (Law Firmcheon-ro, Attorneys Yellow-Gyeongng et al., Counsel for plaintiff-appellant)

Defendant 1, et al. (Law Firm Newway Patent Office, Attorneys Han-san et al., Counsel for the defendant-appellant)

December 20, 2006

Seoul Southern District Court Decision 2005Gahap2531 Delivered on August 25, 2005

1. Of the judgment of the court of first instance, the part against the plaintiff corresponding to the money ordered to be paid next shall be revoked.

The defendants jointly and severally pay to the plaintiff 60,000,000 won and the amount equivalent to 20% per annum from July 16, 2003 for the defendant 1, 2, and 3, and from August 24, 2004 for the defendant 4, 5% per annum from August 24, 2004 to February 14, 2007, and 20% per annum from the next day to the full payment date.

2. The plaintiff's remaining appeals against the defendants are dismissed.

3. The total cost of the lawsuit shall be ten minutes and eight minutes shall be borne by the plaintiff and the remainder by the defendants respectively.

4. The monetary payment portion under paragraph (1) may be provisionally executed.

1. Purport of claim

(1) The Defendants jointly and severally pay to the Plaintiff the amount of KRW 1,024,304,841 and KRW 100,000,000,00,000 from the day following the delivery of the copy of the complaint of this case, and with respect to KRW 902,304,841, the amount of money with 20% per annum from the day following the delivery of the copy of the application for modification of the purport of this case as of June 21, 2005 to the day of each complete payment.

(2) The Defendants may not produce, use, transfer, lease, or import cosmetics using the trade names of "EASO" and "EASO" or "EASO" or display or subscribe for the transfer or lease of the cosmetics.

(3) The Defendants, using the trade name, "EASO" and "EASO", will destroy the goods and half-finished goods of cosmetics, etc. in custody.

(4) Defendant 3 Co., Ltd shall publish the explanatory advertisement listed in the Schedule 2 in each social aspect of the Joseon Daily, East Asia, Central Daily, and Korea Daily in the size of 7cm in width and 9cm in length, one time in size, respectively.

2. Purport of appeal

Of the judgment of the first instance court, the part against the plaintiff falling under one of the following items shall be revoked. The defendants jointly and severally seek 460,000,000 won and 100,000,000 won among them, shall be delivered to the plaintiff from the day after the delivery of the copy of the complaint of this case, and with respect to 360,000,000 won, 20% of the amount shall be paid from the day after the delivery of the copy of the application for modification of the purport of the claim of this case by June 21, 2005 to the day after the completion of each of the above items. The defendants shall seek the judgment stated in (2), (3),

1. Facts of recognition;

The following facts may be acknowledged by comprehensively taking into account the following facts: Gap evidence 1-1-6, Gap evidence 2-5, Gap evidence 16-16-18, Gap evidence 19-27, Gap evidence 29-1, 2, Eul evidence 1-1 through 3, Eul evidence 2-2, and 6, Gap evidence 3-1 through 15, Gap evidence 16-1 through 15, Gap evidence 17-1 through 3, and Gap evidence 18-1 through 16.

A. The plaintiff is a trademark right holder of the case 1 to 6 trademarks as follows.

(1) The trademark of this case 1

Trademark:

Date of the application: January 31, 1994

Date of registration: September 30, 1995

Number: 325122

Designated goods: 13 Chapter 13 (Synthesis for clothing, tax amount, clean storage, water rainn, clothinging greens, climatics, sypons, chemical sypons, clifynium, etc.)

(2) The two trademarks of this case

Trademark:

Date of the application: December 11, 1991

Date of registration: May 15, 1993

Number: 266721

Designated goods: 12 Category 12 (fresh, cremation, Sknishing, Creshing, Hegel, Hebrgel, herogener, herogens, herogens, herogens, herogens, Rabot oil, compactts, etc.)

(3) The three trademarks of this case

Trademark:

Date of the application: February 22, 1994

Date of registration: March 29, 1995

Number: 312579, 315922

Designated goods: 12th (312579), 13th (315922)

(4) The fourth trademark of this case

Trademark:

Date of the application: February 22, 1994

Date of registration: March 29, 1995

Number: 315917

Designated goods: 13 category

(5) The five trademarks of this case

Trademark:

Date of application: April 6, 2002

Date of registration: September 29, 2003

Number: 560992

Designated goods: Category 3 (Maak cam, Sshack cream, Skin ske, generalized cream, skin white cream, cosmetic, shamp and shamp, etc.)

(6) The six trademarks of this case

Trademark:

Date of application: April 6, 2002

Date of registration: September 29, 2003

Number: 56093

Designated goods: Three categories;

B. The plaintiff's business activities

(1) 원고는 2001. 11. 2.경 화장품 제조, 판매, 인터넷 홈쇼핑사업, 통신판매 및 방문판매업 등을 할 목적으로 설립된 회사로서, 2002. 초경 의술의 신인 아스클레피오스의 맏딸 이름으로 ‘의료’ 또는 ‘치료’의 의미를 담고 있는 ‘IASO(이아소)’를 상품명으로 정하고, 2002. 4. 6.경 이 사건 5, 6상표에 대하여 지정상품을 3류 마스크팩, 썬스크린 크림, 스킨밀크 등으로 하여 상표권 등록을 출원하였는데, 당시 이 사건 1상표에 대하여는 주식회사 ○○가, 이 사건 2, 3상표에 대하여는 주식회사 ○○이, 이 사건 4상표에 대하여는 주식회사 ○○가 각 상표권자라는 사실(이 사건 2, 3, 4 상표는 ○○ 주식회사가 상표권을 등록한 후 상표권을 이전하였음)을 알게 되었다.

(2) In order to prevent legal disputes arising from the infringement of trademark rights, the Plaintiff, on April 23, 2002, took over the trademark rights as to the trademark of this case 1 million won, and five million won for the trademark rights as to the trademark of this case 2, 3, and 4 on April 25, 2002, respectively, and completed the registration of change of trademark rights for each time.

(3) The Plaintiff started to develop this kind of product and container design from the time of its establishment on December 28, 2001, entered into a contract for the design development of cosmetics. The Plaintiff completed the design registration of cosmetics containers around July 8, 2002, requested ○○ Co., Ltd. to conduct research on whether the cosmetics developed around October 8, 202 have adverse effects on the cosmetics, and around that time, ○○ Co., Ltd. by means of OEM (OEM) OEM cream and pumps, Epicl clves and pumps, Epil 1, Epicl 1, Epid 1, Epid 3, Epil 1, Epil 3, Epil 2, Epil 1, Epil 5, Epil 2, Epil 3, Epil 3, Epil 2, Epil 3, Epil 3, Epil 3, Epil 4, Epil 2, Epil m.

C. Using the Defendant’s mark “Eternal EASO” (hereinafter “Defendant’s implementation mark”) indicated in the [Attachment 1 List of the Defendants

(1) Defendant 2’s trade name is changed to ○○○ (hereinafter “△△△△”). Defendant 1 Company is a company specializing in the cosmetic production process and packing process and receiving fees therefor. Defendant 4 Company is a company specializing in the sales agency service, which is a company specializing in the sales agency service and receives certain fees depending on the sales volume and intermediation of mail orders through the Internet or Kasc-sc-s-s-s-s-s-s-s-s-s-s-s-s-s-s-s-s-s-s-s-p-s-s-s-p-s-s-p-s-p-s-s-p-s-s-p-s-p-s-s-p-s-s-p-s-s

(2) On August 2002, Defendant 2 decided to manufacture and mail order the cosmetics using the Defendant’s implementation mark. Defendant 2 supplied the sprinkler cosmetic cosmetic (hereinafter “instant cosmetics”) between August 29, 2002 and September 2003 through Defendant 4, a sales agency, through Defendant 4, a sales agency, and Defendant 3 sold the instant cosmetics through broadcast, Internet, mail order mail order delivery, etc. during the period from December 29, 2002 to January 2004. The distribution and sales process of the instant cosmetics was conducted in order of Defendant 2’s purchase of raw materials (charges, containers) and packing request ? product charging work and product packing work by Defendant 4 ? Defendant 3’s sales agency.

(3) On the other hand, on August 12, 2002, Defendant 2 filed an application for trademark registration with respect to the combined trademark, which is composed of Eternal EASO (the first mark listed in the attached list, in that it was missing with paris on the lower end), but did not register the trademark, but manufactured and sold cosmetics using the Defendant-working mark, accompanied by paris in the first design.

(d) Disputes between the plaintiff and the defendant surrounding the use of the defendant's implementation mark;

(1) On December 11, 2002, the Plaintiff, as the trademark right holder of the instant 1 through 4 trademarks, notified Defendant 1, Defendant 2, and Defendant 3 that the Defendants sold cosmetics using the Defendant’s implementation mark constitutes an act of trademark infringement. As such, the Plaintiff discontinued trademark infringement and disposes of all the goods under distribution and all the containers and packagings made for manufacturing cosmetics during the market.

(2) On November 7, 2003, the Plaintiff sought a trial to confirm the scope of right that the Defendant’s trademark falls under the scope of the trademark right of this case (affirmative). On May 22, 2003, the Intellectual Property Trial and Appeal Board accepted the Plaintiff’s claim on the ground that the Plaintiff’s designated goods of the trademark of this case 1 and cosmetics for which the Defendant’s implementation mark and the Defendant’s implementation mark are used are similar goods of the same kind. Defendant 3 filed a lawsuit to revoke the Defendant’s claim under the Patent Court No. 2003Hu3181, Patent Court Decision 2003. However, the above court dismissed the Defendant’s claim on November 7, 2003 (the above Defendant’s appeal was dismissed, and the above final appeal was dismissed on the ground that the registration of the Plaintiff’s trademark of this case was revoked on February 9, 2006.

(3) On March 3, 2003, Defendant 3 filed a lawsuit seeking the cancellation of the above trial decision on March 11, 2004 with the Intellectual Property Tribunal No. 2003No. 411, and the Intellectual Property Tribunal rendered a decision to revoke the Plaintiff’s claim on July 30, 2003 on the ground that the Plaintiff had never used the trademark of this case for the last three years from the date of the request for a trial in the chemical equipment nives or Cnivesium, the Plaintiff filed a trial ruling accepting the Defendant’s claim under Article 73(1)3 and (4) of the Trademark Act, and the Plaintiff appealed against it and filed a lawsuit seeking the revocation of the above trial decision on March 11, 2004, which became final and conclusive in the case of Supreme Court Decision No. 2004Hu4887, Jul. 12, 2004 (No. 1952).

(4) On September 29, 2003, the Plaintiff completed trademark registration for the trademark of this case 5 and 6 by designating the category 3 of new product categories as designated goods by combining the categories 12 and 13 of the former product categories.

2. Judgment on the plaintiff's claim for damages

A. Occurrence of damages liability

In determining the similarity of trademarks, the marks constituting the trademark must be similar to each other, and the designated goods should be similar to the designated goods. Whether or not the designated goods are identical or similar to the other goods should be determined in accordance with the transaction norms in consideration of the quality, shape, use, transaction circumstances, etc. of the goods (see Supreme Court Decisions 91Hu1793 delivered on May 12, 1992; 93Hu541 delivered on September 14, 1993).

Examining the similarity between the trademark 1 and the Defendant’s implementation mark, the trademark 1 of this case consists of four parts in English letters, and the trademark 2, 3, and 4 of this case consists of “IS” in English, “IS” in Korean, and the Defendant’s implementation mark consists of “EETNNITISO” in English, and “ISISISISISISIISIISIISISIISIISIISIISIIISIISIIISIISIISISIISIISISISIISISIISISISISISISISISISISISISISISISISISISISISISISISISISISISISISISISISISISISISISISISIISISISISISIISISISISIISISISISISISISISISISISISISISISIISISISISISIISISISISISIISIIISIISIS.

Furthermore, according to the facts found above, the defendants were required by the plaintiff to suspend the infringement of trademark rights on December 2002, and the plaintiff knew of the fact that he produced the cosmetics using the trademark of this case, but they manufactured and sold the cosmetics of this case identical with or similar to the designated goods of the trademark of this case 1 through 4, which are identical to the designated goods of the trademark of this case 1 through the trademark of this case. Thus, this constitutes trademark infringement that is likely to cause or threaten confusion as to the source of goods under the transaction norms.

Therefore, the defendants' infringement of trademark 1 to 4 constitutes a tort against the plaintiff who is a trademark right holder. Thus, barring special circumstances, the defendants are liable to compensate the damages suffered by the plaintiff due to the infringement.

B. Determination of the defendants' assertion

(1) As to this, the Defendants asserted to the effect that the Plaintiff only engaged in the business of manufacturing and selling cosmetics, other than the designated goods, using the trademark of this case, which is registered as a kind 13 in which the designated goods are Class 13, and that the Plaintiff did not engage in the business of manufacturing and selling the designated goods of the registered trademark, in particular, the manufacturing and selling the cosmetic, which is similar to the cosmetics, and that the decision to revoke the registration became final and conclusive as in the above facts recognized, and thus, the Plaintiff did not incur any damage to

The plaintiff, as seen above, was established for the purpose of manufacturing and selling cosmetics, and registered as trademark rights after setting "ISO" like the registered trademark of this case as the name of cosmetics goods. The plaintiff registered the category of goods of 13 which are the kinds of goods as designated goods. The plaintiff acquired the trademark of this case from the previous owner of the trademark, which he knew that the trademark of this case 2 through 4 is registered as the group of goods of 12 through 13 as designated goods. The plaintiff was engaged in the business of manufacturing and selling cosmetics using the trademark of this case. On September 29, 2003, the plaintiff registered the trademark of this case with the trademark of 5 and 6 trademarks as to the category of goods of 3 which are cosmetics of this case. In full view of the above facts, the plaintiff, who was engaged in manufacturing and selling cosmetics of this case using the trademark of this case 1 through 4, did not cause any business damage to the defendant's designated goods of this case due to the use of the trademark of the same kind as the above trademark of this case.

(2) In addition, Defendant 4 asserted to the effect that there was no intention or negligence on trademark infringement, since there was no notification from the Plaintiff as to trademark infringement until the copy of the complaint of this case was served.

On December 11, 2002, Defendant 4 Co., Ltd. knew or could have known the infringement of trademark rights of this case, considering the relation between the Defendants, the distribution route of the cosmetics of this case, and the dispute between the Plaintiff and Defendant 3 Co., Ltd. after the Plaintiff’s notification, as seen earlier, around December 11, 2002, Defendant 4 Co., Ltd. was aware or could have known of the infringement of trademark rights of this case. Thus, the above Defendant’s assertion is without merit.

C. Scope of damages liability

(1) Article 67(2) of the Trademark Act provides that where an owner of a trademark right or an exclusive licensee claims compensation from a person who has intentionally or negligently infringed on his/her trademark right or exclusive license for damages caused by the infringement, the profits gained by the infringer as a result of the infringement shall be presumed to be the amount of damages suffered by the owner of the trademark right or exclusive licensee. Paragraph (5) of the same Article provides that where it is extremely difficult to prove the facts necessary to prove the amount of damages due to the nature of the relevant fact, even though the damages were incurred in a lawsuit for infringement of trademark right, the court shall recognize a reasonable amount of damages based on the purport

(2) (A) The Plaintiff asserted that the amount computed by deducting the purchase amount from the sales amount of the instant cosmetics from December 2, 2002 to January 2004 should be deemed as profits obtained from the infringement of one trademark of this case. According to the statements in the evidence Nos. 30-1, 2, and 31, the sales amount of the instant cosmetics from December 2002 to January 2004 is KRW 2,55,797,050, and the purchase amount is KRW 1,531,492,209, and the difference between the sales amount and the purchase amount during the above period is recognized as KRW 1,024,304,841 (2,55,797,050 won - 1,531,492,209).

However, according to the facts found above, the actual distribution and sale process of the cosmetic of this case belongs to the profits of Defendant 2 after purchasing raw materials (cosmetic charging materials and containers) and deducting the expenses of personnel expenses, factory operating expenses, etc. from the above commission in the case of Defendant 2 1 / Sales Agency / Defendant 4 / Sales Agency / in the case of Defendant 3 corporation in this process, the entire amount after deducting the purchase amount from the sales amount is not profits. In the case of Defendant 3 corporation in this process, the remainder after deducting the expenses of the production of home shopping, model and heading expenses, etc. from the sales amount. In the case of Defendant 4 corporation, the remainder after deducting the expenses of personnel expenses, operating expenses, etc. for employees from the fixed amount of fees for filling and packing work is attributed to the profits of Defendant 2. In the case of Defendant 1 corporation, the remainder after deducting the expenses of the above commission from the total sales amount to the sales amount of the above 14.20 / 20 14.24.

(B) Meanwhile, with respect to Defendant 3’s net profit derived from the sale of the instant cosmetics, the Defendants were merely 2,55,797,050 won to the sales of the instant cosmetics, and 5,753,700 won multiplied by 2.4% of the average net profit rate of the above Defendant from 202 to 204. In the case of Defendant 4, the Defendants purchased the instant cosmetics from Defendant 2 for 67,000 won for 67,000 won per set and supplied them for 69,818 won to Defendant 3 for 56,416,360 won as the instant cosmetics, but there were no net profit from 20,000 won to 30,000 won as the average profit from the sale of the instant cosmetics. However, in the case of Defendant 1, the Defendants did not have any net profit from 20,000 won to 30,000 won as evidence of 20,000 won to 34,04.

(3) Ultimately, the case constitutes a case where it is found that damage was caused by a trademark infringement but it is difficult to prove the fact necessary to prove the amount of damage due to its nature, and the court has no choice but to recognize a reasonable amount of damage based on the purport of the entire pleadings and the result of examination of evidence. Thus, in full view of the following: the Plaintiff’s acquisition price of each of the trademarks of this case, the Plaintiff’s business size and awareness of the Plaintiff, the Defendants’ business size and guidance; the manufacturing process and sale method of the cosmetics of this case; the size of the products and sale proceeds of the cosmetics of this case; the Defendants’ forms, frequency and duration of the infringement of trademark rights of the Plaintiff and the Defendant’s business, and the like nature of the business carried on by Defendant 3 Co., Ltd. and Defendant 2, it is reasonable to deem that the Plaintiff’s property damage caused by the trademark infringement would be KRW 100 million.

D. Sub-committee

Therefore, the defendants are jointly and severally liable to the plaintiff for damages of KRW 10 million and the amount of KRW 40 million from July 16, 2003 to the date of service of a copy of each complaint of this case; from August 24, 2004 to July 14, 2005 to the date of adjudication of the first instance court, the defendants 1, 2, and 3 are jointly and severally liable for damages of KRW 60 million to the plaintiff; from July 16, 2003 to August 24, 2004 to the date of adjudication of the first instance court; from August 25, 2007 to the date of adjudication of the first instance court, the defendants are jointly and severally liable for damages of KRW 10 million to the plaintiff; from August 16, 2003 to August 24, 2004 to the date of adjudication of the first instance court, each of which is prescribed by the Special Act on Special Cases Concerning the existence and scope of their obligations.

3. Judgment on the plaintiff's claim for prohibition

The Plaintiff sought to the Defendants the full prohibition of the use of the Defendant’s implementation mark and the destruction of goods and half-finished goods manufactured using the Defendant’s implementation mark. In full view of the overall purport of the evidence duly admitted, the Defendants appear not to have manufactured and sold cosmetics using the Defendant’s implementation mark from February 2, 2004 to the present time, and there is no evidence to acknowledge that the Defendants might have committed trademark infringement of each of the trademarks of this case. Accordingly, the Plaintiff’s assertion on this part is not accepted.

4. Determination on the plaintiff's explanation and claim of consolation money

The Plaintiff sought to publish the Plaintiff’s business credit in a daily newspaper as shown in the attached Table 2, which is necessary for restoring the Plaintiff’s business credit on the ground that the Plaintiff’s business credit has been lost due to the infringement of the Plaintiff’s trademark right, and sought compensation of KRW 100 million due to credit damage. However, as to the fact that the Plaintiff’s business credit has been lost due to the infringement of the Plaintiff’s trademark right, it is insufficient to acknowledge the Plaintiff’s assertion on each of the evidence No. 13-1 through 5, A32, and 33, and there is no other evidence to acknowledge it. Therefore, the Plaintiff

5. Conclusion

Therefore, the plaintiff's claim of this case is justified within the scope of the above recognition, and the remaining claims are dismissed without merit. Since the part against the plaintiff which differs in some conclusion from the judgment of the court of first instance is unfair, it is revoked, order the defendants to pay the amount additionally accepted in the trial, and order the defendants to pay the remaining appeal against the plaintiff against the defendants. It is so decided as per Disposition.

[Attachment 2] Omission of Explanations Advertisement]

Judges Dong-dong (Presiding Judge)