(영문) 서울고등법원 2016.10.27. 선고 2015나2070134 판결

1. The part of the judgment of the first instance, including the counterclaim claim filed by the Defendant (Counterclaim Plaintiff) added and expanded by this court, shall be modified as follows:

A. The plaintiff (Counterclaim defendant) shall:

1) The marks listed in paragraph 2 of the Schedule I shall not be displayed on, or delivered to, the lavers, calendars or their packaging sites, or packaging containers, or displayed, exported or imported, or displayed, displayed or distributed for that purpose, on advertisements, price lists, trade documents, signboards, labels, futures set, gift cards, homepages, television home shopping or Internet shopping mall;

2) The Plaintiff (Counterclaim Defendant)’s factory, office, or warehouse attached the mark described in Section A(1) of the above A, the finished product, semi-finished product, advertisement, and packing containers are discarded;

3) The Defendant (Counterclaim Plaintiff) shall pay 383,539,764 won with 5% interest per annum from October 7, 2014 to October 27, 2016, and 15% interest per annum from the next day to the day of full payment.

B. The defendant-Counterclaim plaintiff's remaining counterclaims are dismissed.

2. 9/10 out of the total litigation cost is borne by the Plaintiff (Counterclaim Defendant) and the remainder by the Defendant (Counterclaim Plaintiff) respectively.

3. The above paragraph 1(a) may be provisionally executed.

Purport of claim and appeal

1. Purport of claim

(a) Main claim;

Defendant (Counterclaim Plaintiff; hereinafter “Counterclaim Plaintiff”) shall not indicate the mark indicated in Section 1 of the attached Table 1 on the package of the goods, on which Co-Defendant C Co-Defendant C (hereinafter “Co-Defendant”) and each other (hereinafter collectively referred to as “Co-Defendant”) in the first instance trial, transfer or import the mark, display or distribute it for that purpose, or indicate, display or distribute it on advertisements, price lists, transaction documents, signboards, or labels on the goods that have been cooked, or on advertisements, trade documents, signboards, or labels. The Defendant’s office, the office, and the warehouse of the Defendant’s office, the container, signboard, advertisement of the finished product and semi-finished product on which the above mark is attached, which is stored in the warehouse, shall be discarded, and the Plaintiff (Counterclaim Defendant; hereinafter “Counterclaim Defendant”) shall pay 100,000,100 won and the amount calculated by the ratio of 20% per annum from the next day of delivery of a copy of the complaint to the day of complete payment.

(b) Counterclaim;

The plaintiff shall not transfer or deliver the marks listed in paragraph (2) of the attached Table 1 or "third party" to or from early Kim, U.S. Station or their packaging sites, packing containers, or display, export or import them for that purpose, trade documents, signboards or labels, futures set, homepage, television home shopping or Internet shopping mall, and shall not display or distribute them. The plaintiff's factory, office, or warehouse attached with the above marks kept in the plaintiff's factory, office, or warehouse shall discard the finished products, finished products, semi-finished products, advertising, packing containers, and 20% per annum from the day following the day of delivery of a copy of the counter-claim to the defendant to the day of full payment (the defendant extended the defendant's claim as to counter-claim).

2. Purport of appeal

A. The plaintiff

The part against the plaintiff among the part concerning the counterclaim of the judgment of the court of first instance shall be revoked, and the defendant's counterclaim corresponding to the above revoked part shall be dismissed.

B. Defendant

In the judgment of the first instance court, the part concerning the counterclaim shall be modified and the judgment, such as the purport of the counterclaim shall be sought.

Reasons

1. Scope of the judgment of this court;

The judgment of the court of first instance dismissed the plaintiff's main claim and partly accepted the defendant's counterclaim. Since both the plaintiff and the defendant filed an appeal only as to the counterclaim part, only the counterclaim claim is subject to the judgment of this court.

2. Basic facts

A. The registered trademark of this case

Marks: The marks are identical to the marks listed in Section 1 of Schedule 1. The filing date/registration date/registration number: D/ E/ F designated goods: Category 8 Kim, U.S., protruding

B. Progress of registration of transfer of trademark right of the registered trademark of this case

1) After G filed an application for trademark registration of the instant registered trademark and completed trademark registration, G completed the registration transfer of the trademark right of the instant registered trademark (hereinafter referred to as the “instant trademark right”) in the future of H on March 19, 2004 and April 6, 2004 (per one-half shares on each day).

2) On April 14, 2004, H completed the registration of transfer of the trademark of this case in the future of I, and thereafter, I completed the registration of transfer of shares in the trademark of this case in order of L on May 25, 2004, J in the future of J, August 9, 2005, and K in the future on August 22, 2005.

3) The Defendant, a creditor of H, and M respectively filed a lawsuit against L and I seeking revocation and restitution on the ground that the instant trademark transfer contract between H and I was fraudulent (Seoul Central District Court 2007Gahap71566, Suwon District Court 2007Gahap10302), and each of the above judgments became final and conclusive on October 15, 2009 (Supreme Court 2009Da49711, 209Da49728), and accordingly, on July 15, 2010, the registration of the transfer of trademark in the name of H, J, K, and L was entirely cancelled.

4) As such, H restored the registered title of the instant trademark right, and following the death, H completed the registration transfer registration of one-third of shares among the instant trademark rights in N,O, and P, the heir on June 15, 201.

5) N,O, and P are each debtor, and M is subject to the Incheon District Court Decision of 201TTT28497, July 29, 201, and completed the registration on August 2, 2011. The defendant completed the registration on October 7, 201 upon receipt of the decision of seizure of trademark rights by Incheon District Court Decision of 201TT32281, Oct. 6, 201. On December 30, 2012, Incheon District Court ordered the conversion of trademark rights upon the defendant’s application, and in the procedure, the defendant paid the trademark right of this case in KRW 410,000,000 and paid the trademark right in KRW 410,000,000, and completed the registration of transfer due to Defendant’s sale on September 23, 2013.

C. The Plaintiff’s mark of actual use and the packaging of the original and Defendant’s products

1) The Plaintiff manufactured a laver product using each package indicated in [Attachment 2] No. 1 of the attached Table 2, which indicated the marks indicated in [Attachment 1] No. 2 of the attached Table No. 1 (hereinafter "the marks of this case") and sold on the general store, the Plaintiff's website, and the Internet shopping mall. From the time the judgment of the first instance court of this case was rendered, the Plaintiff manufactured and sold the laver products using each mark indicated in [Attachment 1] No. 2(b) through (d) of the attached Table No. 1 of the attached Table No. 2 (hereinafter "each mark of this case" in the order of entry in the attached list No. 2, 3, and 4; hereinafter "each of the marks of this case," in addition to the marks of this case No. 1 of this case).

2) On April 9, 2003, the Defendant established Y, a corporation for the purpose of manufacturing, processing, and selling Kim, etc., and operated a business, such as selling laver products or selling laversing lavers, by using 'Y' as an indication of the origin of Kim products. As seen earlier, the Defendant acquired the instant trademark right, and changed the name of the Defendant company from 'Y Co., Ltd.’ to 'Y Co., Ltd.’ on January 7, 2014, the Defendant manufactured and sold the products of lavers by changing the packaging of the products of lavers into the packaging of the attached Table 2(3). From July 2014, the Defendant manufactured and sold products of laversing using the packaging of the attached Table 2(4).

[Reasons for Recognition] Facts without dispute, Gap's entries or images, and the purport of the whole pleadings, as well as Gap's statements or images, and the purport of the whole pleadings

3. Judgment on the counterclaim

A. Whether the plaintiff's act constitutes the defendant's trademark infringement of this case

1) Determination of similarity of marks

(1) The mark No. 1 of this case is added with the word "instigious difficulty" to the word "third party". It is recognized as an additional part in appearance in the shape that combines with the size of the added word or the shape of the "third party". The word "instigious difficulty" is merely an expression emphasizing the personality guidance or reputation, etc. of the name "third party". It cannot be deemed as a new concept even if combined with the "third party". Accordingly, the mark No. 1 is similar to the registered trademark of this case.

(2) The mark No. 2 of this case is combined with the word "instigious" in the mark No. 1 of this case, and the word "c." added with the word "c." The added part seems to be recognized as an additional part to ordinary consumers or traders in the form of use, and it is difficult to conclude that a new concept is formed. In the case of the mark Nos. 3 and 4 of this case, the word "instigious three" is written differently in color and size. The word "instigious three and 4 of this case, the word "instigious three" is written differently from the word "instigious three hundred years, the word "instigious three" and the part is written differently in size. The name of the product that was packaged by inserting the word into the front package of the package is recognized as "the name of the product that was loaded". Accordingly, the part of the mark No. 3 and 4 of this case functions as the origin of the product.

Thus, the marks No. 2 through 4 of this case are similar to the registered trademark of this case, as shown in the first marks of this case.

2) Plaintiff’s use

As seen earlier, it is recognized that the Plaintiff’s products using the instant mark are manufactured and sold on the packaging paper with the Plaintiff’s trade name attached as indicated in attached Table 2 List 2(2) and packing containers (the fact that there is no dispute). In light of such circumstances, the Plaintiff’s or the Plaintiff’s agent can be deemed to have produced and sold the U.S. products using the instant mark, and the description of evidence No. 101 is insufficient to reverse it by itself. Meanwhile, the U.S. products are identical or similar to Kim, U.S., the designated goods of the instant registered trademark.

3) Infringement or threat of infringement

The Plaintiff’s act of producing and selling the lavered goods using each of the instant marks constitutes the Defendant’s act of infringing the instant trademark rights. Furthermore, in light of the Plaintiff’s business form, it is recognized that the Plaintiff’s act of manufacturing and selling the instant marks constitutes an infringement on the instant trademark rights. Furthermore, in light of the Plaintiff’s business form, each of the instant marks is marked on the laver, basin or its packaging paper, and thus, it appears that there is a concern for displaying and distributing them on the advertisement, export or import, trade documents, signboards, labels, futures sets, gift cards, websites, websites, TV home shopping, or Internet shopping mall. Furthermore, it is also recognized that the Plaintiff’s plant, office, and warehouse attached each of the instant marks of this case, which are kept in storage, is also obligated to destroy finished products, finished products, semi-finished products, half-finished products, advertisements, packing containers

B. Judgment on the plaintiff's defense

1) Defenses that the mark Nos. 2 through 4 of this case constitutes Article 51(1)1 of the former Trademark Act

【Plaintiff’s Claim】

The phrase of the mark Nos. 2 through 4 of this case is merely an indication of the Plaintiff’s trade name in a common way. Even in terms of the mode of use, the part of the mark Nos. 3 and 4 of this case, stating the phrase “I see in good faith for 30 years,” is not perceived as a trademark. The phrase of the text also indicates the typical source of business, and thus, the phrase of “” constitutes “an indication in a common way under Article 51(1)1 of the former Trademark Act (amended by Act No. 14033, Feb. 29, 2016; hereinafter referred to as the “former Trademark Act”).

[Judgment]

In order to indicate a trade name in a common way, without indicating the trade name in a special form, such as a unique letter, color, and tamatic letter, and combining it with other elements such as diagrams, general consumers should be able to recognize that the mark is the trade name. The phrase "the part of the mark 2 or 4 in this case" in the letter "I see in the love of 30 years for the 30-year period," is only the part of the "Stol third party" in the letter "I see in the color and size different from the size on the name of the goods." In addition, the phrase "the mark 2 or 4 in this case" is used as a trademark for the purpose of distinguishing the origin of the goods, and it seems difficult for general consumers to recognize it as a trade name. Therefore, it is not the plaintiff's defense for this part of this case.

2) Defenses that the defendant's acquisition and exercise of trademark rights constitute abuse of rights

【Plaintiff’s Claim】

The Defendant asserted that the amount paid by the Defendant to A was paid in accordance with the settlement recommendation decision made by the Seoul Central District Court 2006Gahap9823) on the loans, etc. for which A had sought personal loans, etc. from the Defendant (Seoul Central District Court 2006Gahap9823), but the said amount was paid as a substitute payment for the payment of the amount of the promissory notes endorsed by H, and filed an application for compensation order. In the course of mediating the original transaction between the fishermen, the Promissory notes issued in the name of the original capital as security for the payment was deceiving the court as "the method of filing an application for compensation order, etc." (U.S. District Court 2007Gahap5, 134). In light of the above circumstances, the Defendant acquired the trademark right of this case in the process of realizing the trademark of this case, which was progress with the enforcement title, constitutes abuse of the trademark right of this case.

[Judgment]

The statements in Gap evidence Nos. 58, 59, 85, and 94 alone are insufficient to recognize that the defendant had taken wrong compensation order by deceiving the court in such manner as alleged by the plaintiff, and applied for an order for realization of the trademark right of this case as an executive title, and there is no other evidence to acknowledge otherwise. Otherwise, there is no reason to deem that the acquisition of the trademark right of this case by the defendant was intended to abuse the trademark right of this case. Rather, it is recognized that the defendant paid A927,00,000 won to the promissorysory notes issued by He by deception and received the return of the said promissory notes by paying the amount of KRW 927,00,00 to A as a result of the endorser’s performance of his/her duty of recourse (the purport of each statement and each statement in

The Defendant purchased the instant trademark right in KRW 410,00,00 in the realization process conducted by the court’s order, and had been engaged in manufacturing and selling the instant trademark since 2003, and seems to have acquired the instant trademark right in order to actually use the said trademark for the said business. The purchase price was KRW 410,00,000, which was formed by the use of the instant registered trademark until the time of purchase, including the value of credit and customer smoking personnel, and thus, the Defendant may be deemed to have paid a reasonable price with the said purchase price.

Therefore, the defendant's acquisition and exercise of trademark right of this case cannot be seen as abuse of trademark right, and the plaintiff's defense is without merit.

(iii) the right of continued use of the trademark prior to the filing;

【Plaintiff’s Claim】

The Plaintiff succeeded to the status of the mark No. 1 identical with the registered trademark of this case, which is similar to the registered trademark of this case, from G continuously used in Korea prior to the application for trademark registration of this case. Pursuant to Article 57-3(1) of the former Trademark Act, the Plaintiff has a legitimate right to use the mark No.

[Judgment]

Article 7 of the Addenda to the former Trademark Act (Act No. 8190 of Jan. 3, 2007) provides that "Article 57-3 of the amended provisions of Article 57-3 shall apply to the trademark for which another person first files an application for trademark registration and is registered after July 1, 2007, from the case where the pre-user satisfies the requirements of the amended provisions." The registered trademark of this case was registered E. Article 57-3 (1) of the former Trademark Act is not applicable to the registered trademark of this case. The plaintiff's defense is without merit.

4) Defenses against the use of each of the marks of this case based on registered service mark right

【Plaintiff’s Claim】

L A. The Plaintiff established an exclusive license for the above registered service mark, and thus, the Plaintiff’s use of each of the instant marks is within the scope of the right to use the above registered service mark. Therefore, the Defendant cannot claim against the Plaintiff for the prohibition of use of each of the instant marks.

[Judgment]

The use of a service mark includes not only the act of using the service mark on advertisements, price lists, transaction documents, signboards, or labels on the service business, but also the act of providing the service using the service mark on ‘goods offered for consumers' or ‘goods used for providing the service' (see, e.g., Supreme Court Decision 2010Hu3080, Jul. 28, 201). The use of a service mark includes the act of displaying the service mark to provide the service (see, e.g., Supreme Court Decision 2010Hu3080, Jul. 28, 201). The use of a trademark similar to a registered trademark is distinguishable from the service mark whose purpose is to identify the source of the goods and the service mark whose purpose is to distinguish the identity of the provider of the service. The use of the service mark by indicating it to the service mark owner's "goods, price lists, transaction documents, signboards, or labels" does not constitute the use of the registered service mark (limited to the designated service business, and thus, it does not constitute an act of confusion with the trademark right holder's.

In this case, L is recognized to have completed the registration of a service mark as AF AB by filing an application for the registration of a service mark with respect to six designated services, such as the sales agency business of the laver and the sales brokerage business of the laver (Evidence A84). However, even if the Plaintiff holds the exclusive license with respect to L’s above registered service mark, the Plaintiff’s use of the registered service mark by displaying it on the Plaintiff’s laver, U.S. products or their packaging/containers, product advertising, fixed price list, trading document, sign, label, label, website, TV home shopping, Internet shopping mall, etc. does not constitute the use of the above service mark. Such an act constitutes an infringement of the Defendant’s trademark right.

【Plaintiff’s Claim】

L is engaged in business together with the above service mark right and the trademark right of this case, and only the trademark right of this case is divided into force by revocation of fraudulent act, and only the trademark right of this case belongs to the defendant cannot be applied to this special case. In such a case, either the holder of the service mark right or the trademark right may not request the other party to prohibit the use of the mark. The occurrence of mistake or confusion between consumers is inevitable, and the overlapping part of the right is a matter that needs to be shared by both the holder of the service mark right and the trademark right holder.

[Judgment]

A trademark is aimed at distinguishing the source of goods, and the service mark is aimed at distinguishing the provider of intangible services, and the trademark right and the service mark right are different from each protected area even if the mark is identical and similar.Although there is no claim for prohibition against use within each exclusive scope of the registered service mark or registered trademark, infringement may be established against each exclusive use, and this case falls under this case. The plaintiff's above assertion is contrary to the premise and it is difficult to accept.

Pursuant to Article 65 of the former Trademark Act, the Defendant may request the Plaintiff to prohibit the use, etc. of each of the marks in this case and to discard any product created therefrom. The Defendant is claiming the prohibition of the use, etc. of each of the marks in this case or “third party” and the disposal of the product created therefrom. As long as citing the prohibition and disuse of each of the marks in this case, the Defendant does not separately determine the prohibition of use, etc. of the “third party” mark. Therefore, the Defendant may request the Plaintiff to prohibit the use, etc. of each of the marks in this case specified as the marks in attached Table 1 List 2 and to dispose of the product created therefrom.

(d) Claim for damages;

1) Occurrence of damages liability

A) A person who infringes another person’s trademark right is presumed to have been negligent regarding such infringement (Supreme Court Decision 2013Da21666 Decided July 25, 2013). Therefore, according to Article 66-2 of the former Trademark Act, the Plaintiff is liable to compensate the Defendant for damages caused by the infringement of another person’s trademark right from September 23, 2013 (the date of acquisition of the Defendant’s trademark right) to the present day.

Meanwhile, Article 67(3) of the former Trademark Act provides that a trademark right holder, etc. claims compensation for damages caused by infringement of a trademark right, etc. shall reduce his/her responsibility to assert and prove the damage, and does not purport to recognize the infringer’s liability to compensate for damages even in cases where it is obvious that the damage has not occurred. However, in light of the purport of the provision, the degree of assertion and certification as to the occurrence of damages is sufficient to assert and prove the risk or probability of the occurrence of damage. If a trademark right holder proves that he/she carries on the same kind of business as the infringer, it is actually presumed that he/she has suffered business damage due to infringement of a trademark right, barring any special circumstances. Moreover, it may be deemed that the damage has occurred in special circumstances, such as where a trademark already used for a considerable

The instant registered trademark was used from around 198 and was continuously used after the registration in 1994. Although the Defendant acquired the instant trademark right on September 23, 2013, the Defendant engaged in manufacturing and selling the instant registered trademark before the acquisition of the instant trademark right, and was temporarily not using the instant registered trademark during the period from September 23, 2013 to December 31, 2013. Taking into account these circumstances, the Defendant may be deemed to have suffered damage by the Plaintiff’s trademark infringement even during the period from September 23, 2013 to December 31, 2013, and the said period also includes the period of infringement of the instant trademark right.

2) Scope of damages

【Defendant’s Claim】

The Defendant entered into a trademark use agreement with X on May 19, 2014, and receives a user fee equivalent to 5% of the total sales from the said company for the use of the instant registered trademark. The amount ordinarily entitled to receive for the use of the instant registered trademark from September 1, 2013 to December 31, 2015 is equivalent to 7,670,795,282 of the sales of the goods using the trademark. Since the Plaintiff’s total sales from September 1, 2013 to December 31, 2015 were KRW 7,670,79,764 (i.e., the amount ordinarily entitled to receive from the Plaintiff for the use of the instant registered trademark during the said period is 383,539,764 won (i.e., 7,670,795,282 won x 5%). The Plaintiff seeking compensation for damages under Article 67(3) of the former Trademark Act against the Plaintiff.

【Plaintiff’s Claim】

Not only the products in which the Plaintiff used the instant registered trademark but also other products that do not use the instant registered trademark are sold. The Plaintiff’s total sales claimed by the Defendant include sales of other products that do not use the instant registered trademark.

[Judgment]

The court may, notwithstanding Article 67 (1) through (4) of the former Trademark Act, recognize a reasonable amount of damages based on the purport of the entire pleadings and the result of examination of evidence where it is extremely difficult to prove the amount of damages due to the nature of the relevant facts, even though the damages were incurred in a lawsuit concerning infringement of trademark rights (Article 67 (5) of the former Trademark Act)

From September 1, 2013 to December 31, 2015, the Plaintiff’s sales amount of 7,670,795,282 won (sales data submitted by the Plaintiff on May 17, 2016) incurred from the sale of dried products using each of the instant marks from September 1, 2013 to December 31, 2015. The Defendant concluded a trademark use contract with X on May 19, 2014, with the use fee equivalent to 5% of the total sales amount in return for the use of the instant registered trademark. The Plaintiff claimed for damages against Nonparty X, Co., Ltd., Ltd., the amount of damages incurred from the use of the instant marks without permission, 5% of the sales amount arising from the use of the instant marks x 5% of the sales amount (i.e., KRW 25% of the sales amount arising from the use of the instant trademarks x 37% of the instant registered trademark x 375% of the sales amount arising from the Defendant’s use of the instant trademarks.

3) Sub-decisions

On October 7, 2014, the day following the delivery date of a copy of the counterclaim as requested by the Defendant, the Plaintiff is obligated to pay damages for delay at each rate of 5% per annum as stipulated in the Civil Act and 15% per annum as stipulated in the Act on Special Cases Concerning the Promotion, etc. of Legal Proceedings, from the next day to the day of full payment, to October 27, 2016, where the Plaintiff deems it reasonable to dispute over the existence and scope of the obligation to pay for delay, as requested by the Defendant.

4. Conclusion

Thus, the defendant's counterclaim claim is accepted within the scope of the above recognition, and the remaining counterclaim claim should be dismissed as it is without merit. However, the judgment of the court of first instance is inappropriate with a different conclusion. The defendant's claim added and expanded in the trial court is partially accepted, and the part of the counterclaim in the judgment of the court of first instance is modified.