[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 right holder of the registered trademark " "," which uses the trademark "," etc. for the designated goods, sought damages against Eul corporation, etc., which imports and sells golf loans, the case holding that the exercise of trademark rights by Gap corporation does not constitute abuse of rights, and even if the registration becomes null and void in relation to "the" trademark, etc. used by Eul corporation, the use of Eul corporation's trademark is not exempt from infringement of 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

[5] In a case where damage is sustained as a result of the continuous commission of a tort, whether the statute of limitations for a claim for damages due to a tort has run separately from the time when each damage became known (affirmative in principle)

[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, 66(1)1, and 66-2 of the Trademark Act / [4] Articles 2(1)7 and 66(1)1 of the Trademark Act / [5] Article 766(1)1 of the Civil Act

[1] Supreme Court Decision 2005Da67223 Decided January 25, 2007 (Gong2007Sang, 344) / [2] Supreme Court Decision 2006Hu3113 Decided June 28, 2007 (Gong2007Ha, 1193) / [4] Supreme Court Decision 2006Da40423 Decided October 13, 2006 (Gong2006Ha, 1914) / [5] Supreme Court Decision 98Da30285 Decided March 23, 199 (Gong199Sang, 728)

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

Kata golf Co., Ltd. and one other (Law Firm Dan et al., Counsel for the plaintiff-appellant)

Seoul High Court Decision 2011Na2984 decided November 30, 2011

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. Plaintiff’s ground of appeal

A. Regarding ground of appeal No. 1

A person shall be appointed.

원심은, 피고 주식회사 카타나골프(이하 ‘피고 회사’라고 한다)가 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 수입한 골프채(이하 ‘일본 카타나 골프채’라고 한다) 등을 판매하고 있는 인터넷쇼핑몰 홈페이지(그 도메인이름은 ‘www.swordgolf.kr’이다)가 2002. 4. 22. 소외인 앞으로 등록된 ‘katana.co.kr’이라는 도메인이름(이하 ‘이 사건 도메인이름’이라고 한다)에 의하여 자동으로 연결되도록 하는 방식을 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, 그 판시와 같은 사정만으로는 피고 회사가 이 사건 도메인이름을 사용하여 원고의 이 사건 상표권을 침해하여 왔음을 인정하기 어렵고 달리 증거가 없음을 이유로, 원고의 위 주장을 받아들이지 아니하였다.

The ground of appeal disputing the above judgment of the court below is merely erroneous in the selection and value judgment of evidence belonging to the free evaluation of the court of fact-finding and the fact-finding based thereon. The reasoning of the judgment below is not erroneous in the misapprehension of the principle of free evaluation of evidence in light of the evidence duly admitted.

In addition, the plaintiff alleged that the defendant company used the domain name of this case as a trademark and there is no legitimate interest in its registration and use. However, the court below's decision on this issue is merely an additional judgment based on the case where the defendant company recognized the use of the domain name of this case, and its propriety cannot affect the conclusion of the judgment. Thus, the above ground of appeal cannot be accepted without examining it.

B. Regarding ground of appeal No. 2

The court below determined as follows: (a) the sales amount and revenue amount of the Defendant Company; and (b) the Plaintiff’s use of the instant registered trademark in full scale due to the advertisement and publicity of the Defendant Company’s company with high domestic awareness of its revenue; and (c) the Plaintiff used Defendant mark 1 or Defendant 5 as indicated in the judgment of the court below for a long time; and (d) taking into account all the circumstances indicated in the pleadings, such as the Plaintiff’s neglect of such use without any specific sanctions prior to the instant lawsuit, thereby contributing to the expansion of damages; and (e) the amount of damages incurred by the Defendant Company by infringing the Plaintiff’s trademark right by November 9, 201, which is the date of closing argument of the court below after December 8, 2006, should be deemed as KRW 50 million.

Examining the reasoning of the lower judgment in light of the evidence duly admitted, the lower court did not err by misapprehending the legal doctrine regarding the assessment of damages or by exceeding the bounds of the principle of free evaluation of evidence.

2. As to the Defendants’ grounds of appeal

A. As to the grounds of appeal Nos. 1, 2, and 3

(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 of infringing the trademark right of the registered trademark, which is not worth being protected, and if the use of such trademark is permitted, 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 based solely on the awareness of general consumers formed in the market due to the use of the trademark cannot be deemed an abuse of rights.

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 of protecting ordinary 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 as indicated in the judgment of the court below, which are deemed identical or similar to the registered trademark of this case, were all used by Defendant Company from May 31, 200 after the registration date of the registered trademark of this case to “SWOD trademark”, which was imported and sold in Korea Kata or golf loans, etc. (in particular, the marks of Defendant 1 and 2 include the trademarks of this case, which do not exist in Japan and are only in the registered trademark of this case). The trademarks of this case were not used not only in Korea but also in Japan before the registration date of the registered trademark of this case, but also in Japan. In addition, from around 2003, Defendant 3 and 5 were changed from 200, to “SWOD trademark,” and Defendant 4 continued to purchase and sell the trademark of this case to the Plaintiff on June 11, 2004, Defendant company refused to sell them.

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 As to the instant registered trademark against the Plaintiff, the Defendant Company filed a trial on the cancellation of trademark registration due to non-use on March 2, 2006 and February 12, 2009, and on February 12, 2009, a trial on the invalidation of trademark registration became final and conclusive. Meanwhile, on February 12, 2009, the Defendant Company filed a trial on the invalidation of trademark registration against the Plaintiff, and filed a lawsuit on the invalidation of trademark registration against the Defendant’s registered trademark (hereinafter “Plaintiff’s subsequent registered trademark”), each of which constituted “golization”, “golization, golf white, golf ball, etc.” composed of two different trademarks on February 12, 2009, and filed a trial on the invalidation of trademark registration against the Defendant’s registered trademark (hereinafter “Plaintiff’s subsequent registered trademark”), each of which constitutes a series of objections to the latter part of Article 15(1) of the Trademark Act and Article 17(2) of the Trademark Act, which became final and conclusive among consumers.

(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 Company continued to use the trademark for a long time after the use of Defendant 1 mark or Defendant 5 mark identical or similar to the instant registered trademark, which is identical or similar to the instant registered trademark, after which the instant registered trademark was registered, and continuously caused disputes with the Plaintiff and continuously used these trademarks for a long time. Thus, even if such use of the trademark led to the recognition among domestic ordinary consumers as a specific person’s trademark or well-known trademark as a result of such use, it is difficult to deem that the Plaintiff’s exercise of the trademark right against the Defendants by deviating from the purpose or function of the trademark system, thereby impairing the order of fair competition and commercial transactions or violating the principle of good faith, thereby

In addition, considering the aforementioned circumstances comprehensively, 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 of emera, or the Defendant Company’s commencement of importing and selling Japanese cara or golf loans, etc. in Korea from May 31, 2000 to December 8, 2009, cannot be viewed as different since the Plaintiff filed the instant lawsuit on the ground that the instant lawsuit was filed on December 8, 2009.

Meanwhile, as seen earlier, the Plaintiff’s subsequent trademarks constituted “trademarks likely to mislead consumers” under the latter part of Article 7(1)11 of the Trademark Act in relation to Defendant 2, 3, and 5 marks. However, in relation to the Plaintiff’s trademark right prior to Defendant 2, 3, and 5 marks, the Plaintiff’s use of the trademark prior to Defendant 2, 3, and 5 marks cannot be deemed legitimate, or the Plaintiff’s infringement on the Plaintiff’s trademark right.

(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, latter part of Article 7(1)11 and Article 76(1) of the Trademark Act, or by exceeding the bounds of the principle of pleading and free evaluation of evidence

B. 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 lower court determined that Defendant Company’s act of importing and selling Defendant 3, 4, and 5’s instant trademark rights constitutes infringement on the Plaintiff’s trademark right, on the grounds that it cannot be deemed that Defendant 3, 4, and 5 marks attached to Japanese cara or golf loans cannot be deemed that Defendant 3, 4, and 5, which are the trademark right holder of the instant registered trademark, are closely related to legal or economic aspects, or Defendant 3, 4, and 5, which are the trademark right holder of the instant trademark, are not identical to the instant registered trademark due to other circumstances, on the grounds that the Plaintiff’s existing export and sales contract was terminated from 2004, after Defendant 3, 4, and 5 marks were attached to the Plaintiff’s trademark right holder.

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.

C. Regarding ground of appeal No. 5

(1) As seen earlier, the lower court did not err by misapprehending the legal doctrine on damages compensation and by exceeding the bounds of the principle of free evaluation of evidence against logical and empirical rules and by exceeding the bounds of the principle of free evaluation of evidence, in so doing, that it is reasonable to deem the damages suffered by the Plaintiff as the Defendant Company infringed on the Plaintiff’s trademark right from November 9, 201, which was the date of closing the argument in the lower judgment.

(2) In a case where a continuous tort occurred as a result of the continuous tort, barring any special circumstance, the damages are damages arising from a new tort. Thus, the extinctive prescription of a claim for damages due to a tort under Article 766(1) of the Civil Act should be deemed to proceed separately from the time when each damages became known (see Supreme Court Decision 98Da30285 delivered on March 23, 199, etc.).

For the reasons indicated in its holding, the lower court deemed that the Plaintiff’s right to claim compensation for damages arising from the infringement of trademark rights that occurred three years prior to the filing of the instant lawsuit on December 8, 2009 lapses due to the lapse of the three-year statute of limitations. On the other hand, the lower court determined that the Plaintiff’s right to claim compensation for damages arising therefrom is not extinguished by the statute of limitations, and

The judgment of the court below seems to be based on the above legal principles, and there were no errors in the misapprehension of legal principles as to the period of extinctive prescription of damages liability due to trademark infringement and its starting point, or in violation

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)