[1] The method of determining similarity of a product mark under Article 2 subparagraph 1 of the Unfair Competition Prevention and Trade Secret Protection Act in the case of a product mark composed of a combination of names

[2] Where an application for registration of a trademark based on his/her name is deemed as an unfair competition act

[3] Whether the court can calculate the amount of damages by applying the above provision in a lawsuit concerning unfair competition committed before the enforcement of Article 14-2 (5) of the Unfair Competition Prevention and Trade Secret Protection Act (affirmative)

[4] The deadline for filing an appeal against non-object (=the time when the deadline for filing an appeal expires)

[1] Whether a product mark is similar to another's product mark widely known in the Republic of Korea under Article 2 subparagraph 1 of the Unfair Competition Prevention and Trade Secret Protection Act shall be determined on the basis of the general consumers or traders in the transaction room by observing the product mark in terms of appearance, name, and concept, etc., and on the basis of awareness that the consumer or the traders feel both of the product marks. However, the "goods mark combining letters, letters, or diagrams, etc., with which a separate observation of each constituent part cannot be deemed as being natural in the transaction because it is indivisible to the extent that it is not natural in the transaction." The "goods mark combining letters, letters, or diagrams, etc." does not always be called and conceptualized by the entire constituent part, but simply "the part that can function to distinguish one's own goods," and where two or more names or concepts have occurred from a product mark, if one of them is identical or similar to another's product mark, it can be seen as similar to the name of the combined product mark as a whole, and the same holds true even in the case of the product.

[2] If a trademark is acquired in the form of a trademark for the purpose of making profits by using a trademark identical or similar to another person's goods mark widely recognized in Korea, not for the purpose of distinguishing one's goods from another's goods, but for the purpose of causing confusion with another person's goods, the application for trademark registration itself is the purpose of unfair competition. The same applies to cases where a trademark based on a name is applied for registration.

[3] Article 14-2(5) of the Unfair Competition Prevention and Trade Secret Protection Act is only a provision newly established by the Act as amended by Act No. 6421 of Feb. 3, 2001. However, the above provision does not have any special transitional provision as to the above provision in the Addenda of the amended Act (amended by Act No. 6421 of Feb. 3, 2001). The above provision concerns the method of calculating the amount of damages, not as to elements for establishing damages, but as to the method of calculating the amount of damages, if it is extremely difficult to prove the facts necessary to prove the amount of damages due to the nature of the pertinent fact, it is only prepared to facilitate the verification of the amount of damages. In light of the above, Article 14-2(5) of the amended Unfair Competition Prevention and Trade Secret Protection Act, the court may apply Article

[4] The time limit to file an additional appeal is until the time limit for submitting the appellate brief corresponding to the time of closing argument in the appellate court.

[1] Article 2 subparag. 1 of the Unfair Competition Prevention and Trade Secret Protection Act / [2] Articles 2 subparag. 1 and 15 of the Unfair Competition Prevention and Trade Secret Protection Act, Articles 7(1)10 and 12, and 41(1) of the Trademark Act / [3] Article 14-2(5) of the Unfair Competition Prevention and Trade Secret Protection Act / [4] Articles 403, 425 and 427 of the Civil Procedure Act

[1] Supreme Court Decision 98Hu2627 decided Apr. 11, 200 (Gong2000Sang, 1197) Supreme Court Decision 2001Da4057, 4064 decided Apr. 26, 2002 (Gong2002Sang, 1249) Supreme Court Decision 200Da64359 decided Apr. 25, 2003 (Gong203Sang, 1242), Supreme Court Decision 2003Do3906 decided Jan. 26, 2006 (Gong206Sang, 390, 356) / [2] Supreme Court Decision 98Da49142 decided May 12, 200 (Gong200, 1371 decided Apr. 25, 201)

Hui Hui Hui Za (Law Firm Hau, Attorneys Yoon Ho-ho et al., Counsel for the plaintiff-appellant-appellant)

Defendant (Law Firm Barun, Attorneys Choi Young-ro, Counsel for defendant-appellant)

Seoul High Court Decision 2000Na53078 delivered on December 29, 2005

The defendant's appeal is dismissed. The costs of appeal and incidental costs are assessed against each party.

1. Judgment on the Defendant’s grounds of appeal

A. As to the first ground for appeal

The admission of evidence and fact-finding are within the exclusive jurisdiction of the fact-finding court, and this is not a legitimate ground for appeal unless it goes beyond the limit of the principle of free evaluation of evidence (see Supreme Court Decision 2005Da77848, May 25, 2006). Based on these legal principles, examining the reasoning of the judgment below in light of the records, it is justified that the court below recognized the fact that the defendant attached trademarks in the annexed list No. 5 of the judgment of the court below (hereinafter referred to as "the defendant's product mark") to the defendant's goods, such as the visibility and egress produced by the defendant from September 1997 to March 18, 199, and sold them, and there is no violation of the rules of evidence as otherwise alleged in the ground for appeal.

B. Regarding ground of appeal No. 2

(1) Whether a product mark is similar to another's product mark widely known in the Republic of Korea under Article 2 subparagraph 1 of the Unfair Competition Prevention and Trade Secret Protection Act (hereinafter "the Unfair Competition Prevention Act") shall be determined on the basis of the overall observation of both product marks in terms of appearance, name, concept, etc., and the perception that ordinary consumers or traders in the transactional process feel on both product marks. However, the "goods mark combining letters, letters, or diagrams, etc., with which a separate observation of each constituent part cannot be recognized as being indivisible to the extent that it is not natural in the transaction." The "mark combining letters, letters, or diagrams, etc.," which is not called and conceptualized by the whole constituent part, is not called and conceptualized by the whole constituent part, but simply "the part capable of performing the function of distinguishing one's own goods." Where two or more names or concepts are generated from a product mark, one of them is identical with or similar to the other's product mark, if it is identical with the other's product mark or similar to the other's name, 200 460.20.20

In the same purport, the court below is justified in holding that the Defendant’s product mark can be referred and conceptualized only with “VERSACE” and in such a case, the Defendant’s product mark is identical with the Plaintiff’s trademark Nos. 1 through 5 of the attached Table 3 of the decision of the court below that is widely known in Korea (hereinafter “Plaintiff’s product mark”) and its title and concept, and thus, both product marks are likely to cause mistake or confusion as to their source as a whole.

(2) In addition, if a trademark right is acquired in the form of trademark for the purpose of making profits by using a trademark identical or similar to another person's goods mark widely recognized in Korea, not for the purpose of distinguishing one's goods from another's goods, but for the purpose of causing confusion with another person's goods, the purpose of the application for trademark registration itself is to apply for unfair competition (see Supreme Court Decision 2000Da4487, Apr. 10, 200). The same applies to a case where a trademark based on a name is applied for trademark registration.

According to the facts duly admitted by the court below, although ALFRED VISACE was registered on the basis of its name with respect to trademarks listed in the fourth list of the decision of the court below, such registration does not aim at distinguishing the trademark from others' goods, but is to acquire trademark rights in the form of obtaining profits by free transfer of the plaintiff's product mark's image and customer attraction, which is widely used in the Republic of Korea, and thus, the judgment of the court below to the same purport is just.

(3) Therefore, the court below did not err in the misapprehension of legal principles as to the establishment of unfair competition act as otherwise alleged in the ground of appeal.

C. Regarding ground of appeal No. 3

In light of the time and process of acquiring the well-knownness of the Plaintiff’s product mark and the Defendant’s behavior pattern as indicated in the records, etc., the court below is just in finding the Defendant’s intent or negligence sufficiently. The Defendant’s product mark is designed on the basis of the name of beer, the frame of aler, where the Plaintiff’s product mark is a dyer of the United States, and is designed on the basis of the name of beer, and the use or registration of the trademark is general trend in the case of fashionner, and the Defendant’s product mark is used on the basis of a trademark use agreement with the Republic of Korea, which is granted the right to use the domestic trademark from the beer, and it is difficult to deem that there is a considerable reason to recognize that the Defendant’s use of the Defendant’s product mark does not constitute an unfair competition act. There

D. Regarding ground of appeal No. 4

According to Article 14-2(5) of the Unfair Competition Prevention Act, where it is extremely difficult to prove the amount of damage due to the nature of the pertinent fact even though damage was incurred in a lawsuit relating to an unfair competitive act, the court may recognize a reasonable amount of damage based on the overall purport of pleadings and the result of examination of evidence. Although the above provision was newly established only in the Unfair Competition Prevention Act as amended by Act No. 6421, Feb. 3, 2001, the Addenda to the Unfair Competition Prevention Act stipulates that "this Act enters into force as of July 1, 2001, and does not apply the penal provisions of Article 18(3) until December 31, 201, with regard to the person who committed an unfair competitive act under Article 2(c) and (g) as amended by Act No. 1405, Dec. 25, 2001, the above provision does not have any special transitional provisions concerning the elements for establishment of damages and it is extremely difficult to prove the amount of damage prior to the declaration of damages.

The court below applied Article 14-2 (5) of the amended Unfair Competition Prevention Act in calculating the amount of damages caused by the defendant's unfair competition act prior to the enforcement of the amended Unfair Competition Prevention Act, and determined the amount of damages KRW 40,00,00 in consideration of the defendant's infringing items, infringing period, size of sales, degree of proof, and all other circumstances revealed in the proceedings of this case. In light of the above legal principles and the records, the above judgment of the court below is just and reasonable, and there is no error in the misapprehension of legal principles as to

2. Judgment on the plaintiff's supplementary appeal

Before determining the grounds of incidental appeal by the Plaintiff, the time limit for filing an appeal on behalf of the Plaintiff shall be deemed to be until the expiration of the period for submitting the appellate brief corresponding to the time of closing argument in the appellate court (see Supreme Court Decision 2000Da30165, Mar. 23, 2001). According to the records, it is apparent that the Plaintiff filed an appeal on April 25, 2006, which was served on the appellant by the notice of receipt of the records of the appeal on February 20, 206 to the Defendant, the appellant, and thus, the Plaintiff’s incidental appeal of the instant case is unlawful, and its defects cannot be corrected.

3. Conclusion

Therefore, the defendant's appeal is dismissed, and the plaintiff's appeal is dismissed, and the costs of appeal and the costs of appeal are assessed against each party. It is so decided as per Disposition by the assent of all participating Justices on the bench.

Justices Kim Hwang-sik (Presiding Justice)