2017Da217847 Action

1. The HERMES INTNIONL;

2. Emers Korea Limited Liability Company

Attorney Kang Tae-tae et al., Counsel for the defendant-appellant

Defendant 1 and one other

Law Firm LLC et al., Counsel for the plaintiff-appellant

Seoul High Court Decision 2016Na2035091 Decided February 16, 2017

July 9, 2020

The judgment of the original court shall be reversed, and the case shall be remanded to the Seoul High Court.

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

1. On the ground of appeal No. 1, the court below held that the defendants' products are similar to the plaintiffs' kelly Bag and Birkin Bag (hereinafter "the product mark of this case") on the grounds that the defendants' products are similar to the plaintiffs' kelly Bags and Birkin Bags (hereinafter "the product mark of this case") cannot be seen as having concerns over causing confusion between the defendants' products and the product mark of this case as the same source.

Examining the reasoning of the original judgment in light of relevant legal principles and records, the lower court did not err in its determination by exceeding the bounds of the principle of free evaluation of evidence against logical and empirical rules, as otherwise alleged in the grounds of appeal, or by misapprehending the legal doctrine on the possibility of confusion as to the product subject under Article 2 subparag. 1(a) of the former Unfair Competition Prevention and Trade Secret Protection Act (amended by Act No. 15580, Apr. 17, 2018; hereinafter “former Unfair Competition Prevention Act”).

2. On the ground of appeal No. 2, the lower court determined that it was difficult to view that the discriminatory characteristics bearing the mark of the instant product did not constitute an unfair competition act under Article 2 subparag. 1(c) of the former Unfair Competition Prevention Act, on the grounds that the Defendants’ act of manufacturing and selling the Defendant’s products did not constitute an unfair competition act under Article 2 subparag. 1(c) of the former Unfair Competition Prevention Act.

Examining the reasoning of the original judgment in light of the relevant legal principles and records, the lower court did not err in its judgment by misapprehending the legal doctrine regarding the mark recognition requirements in relation to unfair competitive acts, as alleged in the grounds of appeal.

3. As to the third ground for appeal

A. Article 2 Subparag. 1(j) of the former Act on the Prevention of Unfair Competition (hereinafter referred to as "(j)") is one of the unfair competition acts added under the Unfair Competition Prevention Act amended by Act No. 11963, Jul. 30, 2013. It newly established a provision on new types of unfair competition acts, which were not included in the scope of application of the former Unfair Competition Prevention Act. This is a supplementary provision for the regulation of unfair competition acts by reflecting the changing concept of trade in a timely manner in order to clearly determine the new type of unfair competition. In full view of the aforementioned legal provisions and legislative purport, (j) as well as the aforementioned provisions do not limit the type of "the outcomes, etc. subject to protection, etc.", and thus, (i) not only the tangible objects, but also the new form of property rights may be included in the previous form of property rights.

In determining “A performance, etc.”, comprehensive consideration should be given to the reputation or economic value of the aforementioned outcome, customer attraction factors in the outcome of the project, and the importance and competitiveness of the outcome of the project in the relevant business sector. Whether the performance, etc. was made through an adequate investment or effort should be determined specifically and individually in light of the substance and degree of such investment or effort in the industrial sector to which the right holder belongs, such as performance, and it should be determined that economic benefits infringed upon by the use of the performance, etc. without permission do not belong to the so-called public sector where anyone can freely use the same. In addition, in order to fall under “Unauthorized use for one’s own business without permission in a manner contrary to the fair commercial practices or competition order, it should be determined that the right holder and the infringer are in competition relationship or in the near future, whether the right holder is able to enter into a competitive relationship, and whether the content and degree of such investment or effort is likely to be confused with the two parties’ outcomes or commercial practices or services, referring to the extent of confusion between the two parties and the two parties.

B. According to the evidence duly adopted by the lower court, the following circumstances can be revealed. 1) Kkin kin kin kin kin kin 1950s and Kin kin kin kin kin kin kin kin kin kin kin kin kin kin kin kin kin kin kin kin kin kin kin kin kin kin kin knin kin kin kin kin kin kin kin kin kins at the local factory of the Plaintiff’s France, and its domestic consumer price belongs to a highest price of at least one million won and a high-class kin kin kin kin kin kin kin kin kin kin kin kin kin kin kin kin kin knin kin kin kin kin kin kin kin k.

3) The plaintiffs advertised all kinds of products of the plaintiffs, including "malare", "nobless", and "sanee," in major domestic fashion magazines. From 2007 to 2015, the plaintiffs' domestic advertising expenditure amounting to approximately 12.8 billion won, and the plaintiffs' domestic sales revenue amounting to approximately 3,12.2 billion won. 4) As above, the product sign of this case is used continuously, exclusively in Korea and exclusively, and is in the shape of the front part of the upper part, knife, knife-type, knife-type, knife-type, knife-type, knife-type, and knife-type, so it is difficult to view that it falls under the category of "public interest" because it is difficult to protect the general consumers as the source of specific products.

5) Although the products of the plaintiffs and the defendants are different in material, price, and main customer floor, some models among the plaintiffs' products are similar to the pattern of the defendants' products. It is not easy to observe the defendants' products in terms of the side and side in which the design of this case is not attached, it is not easy to distinguish them from the plaintiff's products. The defendants' products obtained human seal from consumers seems to have made a substantial contribution similar to the product of this case. 6) As seen in the above paragraph 2, the plaintiffs limited the supply amount of kin and kin white. As the products were sold in a similar form of product, it can be an obstacle to maintaining the scarcity of the product of this case, and thus, it can be seen that the defendants' products of the same kind as the plaintiffs continue to manufacture and sell the defendant's products in Korea, which are the products of the same kind as the plaintiffs, are likely to cause a decrease in economic value or decrease in demand for the plaintiffs' products.

7) Even if Defendant 1 uses slke Fun, the Defendants’ intent to use the product mark of this case and take advantage of the well-knownness and awareness of the product mark of this case can be inferred. It is difficult to see that the act of commercial sale by attaching slick B on the product mark of another person widely known to consumers without the consent of another person is an act corresponding to the fair competition order. The Defendant’s act of selling the product mark of another person, such as clothes manufacturing business chain, cosmetic, cosmetic, Daz., Daz., Gay brand-type, Gay brand-manufacturing business, Gay brand-type, and so on through cooperation or collaboration with 'Mail', etc., the instant design of this case and the Defendant’s brand-type products, such as brand-type and brand-type, have been widely sold to other foreign consumers and made use of the product mark such as GaU-U.S. PNA-type brand-type products.

C. Examining the aforementioned circumstances in light of the legal principles as seen earlier, the Defendants’ act of using the instant product label without permission constitutes an act infringing on the economic interests of others by using it for their own business without permission in a manner contrary to fair commercial practices or competition order, such as the outcome that the Plaintiffs created by considerable investment or effort.

D. Nevertheless, the lower court determined to the effect that the product mark of this case constitutes “the outcome made by the Plaintiff’s considerable investment or effort.” However, since the Defendants’ manufacturing and selling of the Defendants’ products did not constitute “special circumstances that are not justified by the fair trade order and free competition order,” it does not constitute (j) item. In so determining, the lower court erred by misapprehending the legal doctrine on the unfair competition acts stipulated in (j), thereby adversely affecting the conclusion of the judgment. The allegation in the grounds of appeal pointing this out is with merit.

4. Conclusion

Therefore, the judgment of the court below is reversed, and the case is remanded to the court below for a new trial and determination. It is so decided as per Disposition by the assent of all participating Justices on the bench.

Justices Kwon Soon-il

Justices Lee Ki-taik

Justices Park Jung-hwa-hwa