[1] The purport of Article 67 of the Trademark Act on the presumption of the amount of damages caused by the infringement of trademark right

[2] The contents of circumstances that can reverse the presumption of damages under Article 67 of the Trademark Act due to the infringement of trademark right, and the burden of proof

[3] The validity of set-off by one of the vicarious debtors jointly and severally liable (=the commercial effect)

[1] Article 67 of the Trademark Act / [2] Article 67 (2) of the Trademark Act / [3] Article 418 (1) of the Civil Act

[1] Supreme Court Decision 2002Da33175 Decided October 11, 2002 (Gong2002Ha, 2705) Supreme Court Decision 2003Da62910 Decided July 22, 2004 / [2] Supreme Court Decision 96Da43119 Decided September 12, 1997 (Gong197Ha, 3083) / [3] Supreme Court Decision 95Da24364 Decided December 10, 1996 (Gong197Sang, 297Sang, 297)

Seoul High Court Decision 2006Na14488 decided May 1, 2008

Korea Daily Distribution Co., Ltd. and two others (Law Firm Freedom, Attorneys O Jae-hun et al., Counsel for the plaintiff-appellant)

Defendant 4 (Law Firm Freedom, Attorneys O Jae Jae-hun et al., Counsel for the defendant-appellant)

Seoul High Court Decision 2004Na91900 delivered on November 8, 2005

All appeals are dismissed. The costs of appeal are assessed against each party.

The grounds of appeal are examined.

1. As to the Plaintiff’s appeal

Article 67(2) of the Trademark Act provides that when a person who has infringed a right receives a benefit from the act of infringement, the amount of benefit shall be presumed to be the amount of damage suffered by the holder of the right. Article 67(3) of the same Act provides that a person who has infringed the right may claim damages in the amount of damages suffered by the holder of the right. Thus, a trademark right holder or an exclusive licensee may claim damages in the amount of profit gained by the infringer from the infringement of the trademark right minus the expenses additionally incurred due to the infringement of the trademark right. In other words, the infringer may claim damages in the amount of profit gained from the infringement of the trademark right, or claim ordinary compensation for the infringer to allow another person to use the trademark corresponding to the period of infringement, the number of infringement, etc. However, where it is obvious that the above provision does not have any loss, the infringer is not liable for damages due to his assertion and proof that the damage cannot be caused by the act of the same kind of business, or at least the same amount could not be claimed and presented (see, e.g., Supreme Court Decision 2002Da36374.

According to the reasoning of the judgment below, the court below did not apply Article 67 (2) and (3) of the Trademark Act to the infringement of the trademark right or service mark right of Defendant Korea Food Co., Ltd., on the ground that it is difficult to view that the defendant Korea Food Co., Ltd. is engaged in the same kind of business that infringes the plaintiff's registered trademark right or service mark right of this case since the plaintiff Co., Ltd.'s domestic food supplied cherb with cherbs and did not sell the common cherbs with the manufacturing and selling of the common cherbs, and it did not have any separate supply line or sales network of common cherb's cherbs and good cherbs,

2. As to the defendants' appeal

A. As to the use of another trademark or service mark of the distribution of the Defendant Hanil Ginseng Co., Ltd.

Article 67 (2) of the Trademark Act estimatings the amount of damages suffered by the claimant as the amount of profit suffered by the infringer by the infringement. Under special circumstances where there is a benefit regardless of the use of a trademark or service mark infringed by the infringer's quality, technology, credit other than the design, trademark or service mark, sales policy, publicity, etc., it may be acknowledged differently from the above presumption. Such special circumstances may include that the infringer has gained benefit by using a trademark or service mark other than the trademark or service mark infringed upon, but the burden of proof is the infringer (see Supreme Court Decision 96Da43119 delivered on September 12, 197, etc.).

In light of the above legal principles and the records, the court below is just in rejecting the assertion by the defendant 2 as to the plaintiff 3's assertion that considerable part of the profits accrued during the period of infringement due to the plaintiff's non-existence of any right to the trademark and service mark, and there is no evidence to acknowledge it, and there is no error of law such as misunderstanding of legal principles or violation of the rules of evidence.

B. As to the infringement of Defendant Korea Food and Defendant 4

The grounds of appeal on Defendant Korea Food, and Defendant 4’s failure to establish an infringement of the registered trademark or service mark of this case are premised on the premise that the Nonparty is the legitimate owner of the registered trademark or service mark of this case, and it is not just a ground of appeal on the establishment of evidence and fact-finding, and the judgment of the court below that the Nonparty is not the legitimate holder of the registered trademark or service mark of this case is not erroneous in the misapprehension of the rules of evidence

C. Regarding the validity of a set-off

The grounds such as repayment that achieve the purpose of a claim among the vicarious debtors, such as joint tortfeasors, arise as to all the debtors. However, other reasons arise only when relative effect takes place, and Article 418(1) of the Civil Act concerning joint and several liability does not apply to the vicarious joint and several liability. Thus, even if one of the vicarious debtors jointly and severally liable offsets his/her obligation against his/her obligor’s opposite claim against the obligee at an equal amount, the effect of set-off does not extend to the other vicarious debtors jointly and severally liable (see Supreme Court Decision 95Da24364 delivered on December 10, 196, etc.).

The judgment of the court below which rejected the defendants' assertion under the premise that the agreement between the plaintiff company and the non-party does not extend to other defendants is just, and there is no error in the misapprehension of legal principles as otherwise alleged.

3. Conclusion

Therefore, all appeals are dismissed, 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 Shin Hyun-chul (Presiding Justice)