Plaintiff (Law Firm Multiple, Attorney Jeong Young-soo, Counsel for the plaintiff-appellant)

Submarine Food Co., Ltd. and two others (Attorneys Park Young-soo et al., Counsel for the defendant-appellant)

June 22, 2011

Suwon District Court Decision 2009Gahap21303 Decided September 9, 2010

1. Of the judgment of the court of first instance, the part against Defendant Co., Ltd., Ltd., and the part against Defendant Co., Ltd., Ltd., and the part against Defendant Co., Ltd., Ltd., and Defendant Co., Ltd., and Defendant Co., Ltd., Ltd., and the part against Defendant Co., Ltd., Ltd., and Defendant Co., Ltd., and Defendant Co., Ltd., and the part against Defendant Co., Ltd., Ltd., and the part against Defendant Co., Ltd., and the part against them, are dismissed.

2. The remaining appeals of Defendant Sea-Bed Food Co., Ltd. are dismissed;

3. The plaintiff bears 80% of the total litigation cost between the plaintiff and the defendant corporation, and the above defendant bears 20% of the total litigation cost between the plaintiff and the defendant corporation, and the total litigation cost between the plaintiff, defendant corporation and defendant 3 shall be borne by the plaintiff.

The Plaintiff shall pay 10 million won, Defendant Sea-Bed Food Co., Ltd. (hereinafter “Defendant Sea-Bed Food”) (hereinafter “Defendant Sea-Bed Food”), and Defendant 3 shall pay 20% interest per annum from the day following the delivery of the complaint of this case to the day of full payment.

The part against the Defendants in the judgment of the first instance shall be revoked, and the corresponding plaintiff's claim shall be dismissed.

1. Basic facts

【Facts without dispute over evidence】 Evidence Nos. 1, 2-3-1, 2-1, 3-1, 8, 9, 1, 2, 11, 26, 4 through 7, 11, 5-1, 5-1, 5-2, 5-2, 5-2, 5-2, 5-2, 5-3

A. The Plaintiff is a person who runs the wholesale and retail business and the manufacturing business of the non-unified Kim in the name of “○○○○○○○.” The Defendant submarine Food is a corporation established on June 3, 2009 for the purpose of manufacturing, wholesale and retail business, etc. of food, and the Defendant’s primary food is a corporation established on June 21, 200 for the purpose of the food manufacturing business, neglect manufacturing business, i.e., seat-free Kim-type sales business, etc., and Defendant 3 operates the food distribution business, etc. from July 207 to “△△△△△△△△”.

B. On February 23, 1993, Nonparty 4 applied for trademark registration on the trademark indicated in attached list No. 1 (hereinafter “instant trademark”) as the designated goods and completed trademark registration on February 24, 1994 (registration number omitted). Nonparty 5 obtained the registration of transfer of rights on the portion of the instant trademark on March 19, 204 from Nonparty 4 as to the portion of 1/2, and on April 6, 2004 as to the remainder of 1/2, among the instant trademark rights, on April 14, 2004. Nonparty 1 obtained the registration of transfer of rights from Nonparty 5 on April 14, 2004, and Nonparty 6 obtained the registration of transfer of rights on the portion of the instant trademark rights from Nonparty 1 on May 25, 2004, and Nonparty 5 obtained the registration of transfer of rights on the portion of the instant trademark rights from Nonparty 2 on May 26, 2005.

C. However, Nonparty 8 and Nonparty 9, the obligees of Nonparty 5, respectively, won a lawsuit seeking cancellation of the above transfer contract and restitution against the Plaintiff and Nonparty 1, etc. on the ground that the transfer contract for the trademark of this case between Nonparty 5 and Nonparty 1, etc. was fraudulent, respectively, as Seoul Central District Court 2007Gahap71566, Sungwon District Court 2007Gahap10302, and the transfer of the trademark right of this case between the Plaintiff and Nonparty 1, etc. was affirmed. The Plaintiff, etc. appealed to the Supreme Court Decision 2009Da49711, 209Da49728 on October 15, 2009 through the appellate court, but the appeal was dismissed on October 15, 2009, and the decision became final and conclusive, and as a result, the registration of the transfer of the trademark right in the name of Plaintiff 1/2 of the trademark of this case was cancelled on July 15, 2010.

D. On the other hand, on April 14, 2004, Nonparty 1: (a) decided on the trademark of this case to the deceased non-party 2 as "out of the Republic of Korea" and completed the registration of establishment of non-exclusive license; (b) the deceased non-party 2 died on May 22, 2008, the deceased non-party 3 succeeded to the non-exclusive license of the deceased non-party 2.

2. The plaintiff's assertion

From July 31, 2009 to June 30, 2010, the Defendants were liable to compensate the Plaintiff for damages caused to the Plaintiff by using the Defendants’ marks indicated in [Attachment List No. 2], similar to the instant trademark (hereinafter “Defendant’s marks”) and manufacturing and selling Choun Kim, thereby causing damage to the Plaintiff, who is a joint trademark right holder of the instant trademark. As such, the Defendants are liable to compensate the Plaintiff for damages. As part of the compensation for damages, the Defendants are liable to pay the Plaintiff the amount corresponding to that stated in their respective claims.

3. Whether the defendants' mark is similar to the trademark of this case

The trademark of this case is a trademark consisting of the letters of the three sections, “welves,” and has the concept of father and two arches. In appearance, there are no other peculiar characteristics except those written with a little thicken, and it is a trademark unfavorable to “welves” like the description.

On the other hand, the defendants' mark added the word "refinite" to the part of the word "refinite," which is similar to the trademark of this case (the trademark of this case and the defendants' mark do not have any particular feature in the form of the font, but the word body of the trademark of this case and the defendants' mark are very similar in the form of the letter body, especially the fact that it is surrounded by a serious real line, and that the long space of "vinite" of the third party is very similar in the form of "vinite," and the word "refinite" stated is smaller than the word body of the third party, and the size of the word "refinite" as stated above is smaller than the word body of the third party, and it appears that the shape of the trademark of this case and the defendants' mark can be perceived as a part of the trademark of this case as an ordinary consumer or an additional trader in the form of the shape of the trademark of this case, and therefore, it cannot be seen that the phrase "a trademark of this case" and the word of this case can be widely known.

In addition, the designated goods of the trademark of this case are "Glaver, the U.S., and the defendants also use the defendants' mark for "S. Kim," and the goods using the defendants' mark for the designated goods of the trademark of this case are identical or similar.

4. The propriety of the claim against the defendant 3

A. Determination on the cause of the claim

(4) According to the overall purport of the statements and arguments as indicated in the evidence Nos. 5-1, 2, and 6-2, 38, 39, and 41-1, 2, 5, 6, 7, 9, 11, 14, 16 through 27, and 29 (including each number No. Na) of the above evidence Nos. 3, which were offered to the △△△△△△△, etc., by Defendant 3 without the consent of the △△△△△△△, etc., on or after July 2009, Defendant 3 operated jointly with Defendant 3 and △△△△△△△△△△△, who holds a non-exclusive license in the Republic of Korea as to the trademark of this case; ② Defendant △△△△△△△△△, which was used by Defendant 3 (hereinafter referred to as “Defendant 3, etc.”), and which was used by Defendant 3, etc. to produce or supply the above goods to Defendant 3, etc.

According to the facts of recognition, Defendant 3 is recognized to have used the defendants' mark based on the non-exclusive license to use the trademark of this case by Nonparty 3 for the joint business with Nonparty 3. Thus, it cannot be deemed that Defendant 3, etc. manufactured and sold the Choun Kim using the defendants' mark, unless there are special circumstances to deem that Defendant 3, etc. was the acquisition of the non-exclusive license to use the trademark of this case by Nonparty 3 and Defendant 3, the non-exclusive licensee, but Defendant 3, the non-exclusive licensee, was operating △△△△△△, independently, and merely paid the non-exclusive license to the non-party 3 while operating the trademark of this case.

In addition, the defendant's first-class product is also being produced by Choun Kim in which the defendants used the mark, based on the non-party 3's non-exclusive license from the defendant 3, etc. and supplied it to the defendant 3, etc. Thus, it cannot be deemed that such act of the defendant first-class product infringes on the trademark right of this case.

Therefore, without any need to examine the Plaintiff’s claim against Defendant C, U.S., and Defendant C, it is without merit.

B. Judgment on the Plaintiff’s assertion

As to this, the plaintiff, the joint trademark right of this case, and the plaintiff and the deceased non-party 2 (the father of non-party 3), whose representative director had been the representative director, limited to the area of non-exclusive license in Korea on August 8, 2005, and limited only to the quantity of products produced by subcontracting method to be supplied to Haice, a non-exclusive license contract for the trademark of this case was established on April 14, 2004, and the non-party 3 succeeded to the above non-exclusive license of the deceased non-party 2. The plaintiff asserted that the use of the defendants' mark as above exceeds the scope of non-exclusive license owned by the non-party 3, and thus the use of the defendants' mark constitutes infringement of the trademark of this case.

According to the overall purport of the statement and oral argument as to evidence No. 9, it is acknowledged that the non-exclusive license contract was concluded between Non-Party 1 and the Plaintiff and Minejin Food Co., Ltd. as alleged by the Plaintiff. However, according to the trademark register of this case (Evidence No. 1 and No. 10 of Evidence No. 2), it is not proven to recognize that Non-Party 5 determined the region of the trademark of this case as "discharge of Korea" and completed the registration of establishment of non-exclusive license as to the trademark of this case to the deceased non-party 2, and there is no other evidence to prove that Non-Party 5 established non-exclusive license to the deceased non-party 2. The above non-exclusive license contract and non-exclusive license contract between Non-Party 1 and the Plaintiff and the deceased non-party 5 are different in terms of the parties to each contract, especially the non-exclusive license established, and thus, it is difficult to view that the content of the non-exclusive license and non-exclusive license as alleged by the Plaintiff between the Plaintiff and the non-exclusive licensee 2.

5. Appropriateness of requests for Defendant submarine food;

A. Whether Defendant submarine Food infringed the trademark right of this case

According to the overall purport of Gap evidence 3-2, 20, 33, and 34-1, 2, Eul evidence Nos. 1, 2, 4, 5, 6, 7, 11-2 and 3 of Eul evidence Nos. 1, 2, 2, 4, 6, 7, 11-3, and 11-3, it is recognized that defendant submarine Food used the defendants' mark from July 2009 to December 2009, and manufactured and sold Choun Kim, using the defendants' mark, and as seen above, the defendants' mark is not only identical with the trademark of this case and its name, concept, external or similar, but also it is likely that the defendants' products are identical or similar to the designated goods of the trademark of this case and thus, it may cause confusion with the general consumers and other transaction parties, barring special circumstances. Thus, the act of the defendants' acts of manufacturing and selling the trademark of this case using the defendants' mark constitutes an infringement of the trademark of this case.

Therefore, Defendant submarine Food is liable to compensate the Plaintiff for the damages incurred by the Plaintiff due to the infringement of trademark rights of this case.

In addition, the plaintiff asserts that the defendant submarine food continues to manufacture and sell Choun Kim on or after January 2010. However, if the plaintiff purchased it directly on or after January 6, 2010, the plaintiff stated the product of the defendant submarine food (Evidence A3) and the product package of the defendant submarine food (Evidence A20) attached to the plaintiff's preparatory document as of May 11, 2010 as of December 23, 2010 (the whole purport of the pleading is recognized as being normal 1 year according to the purport of the pleading), each of the above products is deemed to have been sold after manufacturing the defendant submarine food on or after December 23, 2009. However, the plaintiff's assertion that the above products were seized after the search and sale of the above products (Evidence No. 19, No. 29-1, 29-1, 3, 40-1, 40-4, and 14 of the above products were not known as the result of the search and sale of the above products.

On the other hand, on September 13, 2009, the Defendant submarine Food was served with a copy of the complaint of this case after it was produced by sampling the Choun Kim in which the Defendants’ mark was used, but on December 23, 2009, it was alleged that it was merely manufactured and sold an amount equivalent to KRW 5,583,200 in the total amount of Choun Kim in which the Defendants’ mark was used, but it is difficult to view the trademark infringement period of the Defendant submarine Food as different from that of the above, solely on the statement (including the paper number) of evidence Nos. 1, 2, 3, 6, 7, 11 through 15.

B. Determination as to the assertion of Defendant Seab Food

The defendant submarine Food brought an action against the plaintiff, the non-party 8 and the non-party 9 against the plaintiff, the non-party 5 and the non-party 1 for the cancellation of the above transfer contract and the restoration thereof on the ground that the transfer contract for the trademark of this case was a fraudulent act, and the judgment accepting the claim of the non-party 8 and the non-party 9 became final and conclusive in the above lawsuit, and the transfer registration of the plaintiff's name on July 15, 2010 was cancelled, so the plaintiff cannot file a claim for damages retroactively lose the status of the trademark right holder

In cases where a creditor is sentenced to the revocation of a fraudulent act that orders the beneficiary or subsequent purchaser to restore a responsible property, together with the revocation of a fraudulent act, the effect of the revocation is limited to between the creditor, beneficiary, or subsequent purchaser, and thus, the beneficiary or subsequent purchaser is merely liable to restore the property to the original state due to the revocation of a fraudulent act. The legal relationship formed between the debtor and the debtor or the revocation is not retroactively effective (see, e.g., Supreme Court Decision 2005Da1407, Apr. 12, 2007). Therefore, even if the judgment ordering the cancellation of the registration of transfer of the trademark right in the name of the plaintiff on the ground of the revocation of the fraudulent act becomes final and conclusive on the ground of the revocation of the fraudulent act, it cannot be deemed that the plaintiff retroactively lost the status of the owner of the trademark in the name of the plaintiff, and at least, it is reasonable to deem that the plaintiff holds the status of the owner of the trademark in the name of the defendant, until July 15, 2010.

Therefore, the above argument of defendant submarine food is without merit.

C. Scope of damages

(1) The Plaintiff’s share in the trademark right of this case

The plaintiff, the first holder of the trademark of this case, and the non-party 11, the plaintiff, who is the owner of the trademark of this case, jointly operated Red Sea Food Co., Ltd., due to business difficulties, whose liabilities increase due to increase in the number of red Sea Food Co., Ltd., and transferred the trademark of this case to the plaintiff on March 18, 2004, and the plaintiff became the owner of the trademark of this case from that time. Since the plaintiff trusted the trademark of this case to the non-party 1, the plaintiff asserts that it is not

However, even if the plaintiff agreed to take over the entire trademark right of this case from Nonparty 4 as the plaintiff's assertion, the plaintiff is merely a claimant for the registration of transfer of trademark right unless the registration of transfer has been completed, and the trademark right of this case was transferred to Nonparty 5 and Nonparty 1, etc. thereafter, there is no evidence to acknowledge that the plaintiff acquired the trademark right of this case from Nonparty 4. Rather, considering the purport of the whole pleadings in the statement in Eul 3 and 4, it is reasonable to conclude that the plaintiff would pay KRW 5 million per month for the acquisition of the trademark right of this case owned by Nonparty 7 in return for the consent of Nonparty 5, who is the joint owner of trademark right of this case. The plaintiff did not claim for the registration of transfer of trademark right of this case from the Suwon District Court 2009Ga7857, which was the ground for revocation of trademark right of the trademark right of this case, but the above court dismissed the plaintiff's claim for the registration of transfer of the trademark right of this case as the sole owner of the trademark right of this case.

Therefore, the right to claim compensation for damages arising from the infringement of trademark right of this case also belongs only to the Plaintiff.

As to this, the plaintiff asserts that if the trademark holder did not engage in business activities during the period of using another person's registered trademark without permission, there is no business loss suffered by the trademark holder due to the act of infringement. Since the non-party 1, the joint trademark holder of the trademark of this case, did not operate the Choun Kim in early 2006, the defendant submarine Food should compensate the plaintiff for the total amount of damages, not 1/2, due to the infringement of trademark of this case.

However, among the trademark rights of this case, the issue of the claim for damages concerning the non-party 1/2's share is between the non-party 1 and the defendant's submarine food, and it does not affect the legal relationship between the plaintiff and the defendant's submarine food. Thus, the plaintiff's above assertion is

[Calculation of Amount of Damages]

The plaintiff asserts that the defendant submarine food should pay as damages the amount equivalent to the total sales during the period of infringement of the trademark right of this case multiplied by the plaintiff's operating profit ratio of the trademark owner of this case.

However, according to the overall purport of Gap's statements and arguments Nos. 4, 5, 6, and 10-1 through 125, 11-2, and 3, the total amount of sales of the trademark infringement period between July 2009 and December 2009 of the defendant submarine Food cannot be deemed as the sales of the goods infringing the trademark of this case, and thus, the plaintiff's above assertion is without merit.

On the other hand, the defendant's submarine food is merely 5,583,200 won in total when the defendants' marks are used. However, the defendant's submarine food is not accepted as seen above.

Ultimately, it is difficult to compute specifically the amount of damages suffered by the Plaintiff due to the infringement of the trademark right of Defendant submarine Food. Accordingly, pursuant to Article 67(5) of the Trademark Act, the court is bound to calculate the amount of damages sustained by the Plaintiff based on the overall purport of the pleadings and the results of the examination of evidence. According to the record of evidence No. 22 and the result of the first instance court’s response to an order to provide tax information on red taxation, the total sales during the period of infringement of the trademark right of this case constitute 450,774,204. According to the above evidence, the considerable portion of the above evidence shows that other marks than the defendants’ mark appear to be the sales amount of the Choun-un Kim used. The Plaintiff is not the sole owner of the trademark of this case, but the joint owner of the trademark right, and the sales amount and operating profit ratio of ○○○○○○○ operated by the Plaintiff, which is ratified by the statement No. 21 and No. 2 of this case’s complaint, it is reasonable to deem the damages suffered by the Plaintiff’s infringement of the trademark right of this case.

D. Sub-determination

Therefore, the defendant submarine food has a duty to dispute on the existence and scope of the obligation to implement the trademark rights of this case from December 31, 2009, which is the date when the infringement of the trademark rights of this case occurred to the plaintiff, to December 17, 201, which is the date when the defendant submarine food was rendered a significant judgment, to pay 5% per annum under the Civil Act and 20% per annum under the Act on Special Cases Concerning Promotion, etc. of Legal Proceedings from the next day to the date when the obligation to perform is fully paid.

6. Conclusion

Therefore, the plaintiff's claim against the defendant submarine food shall be accepted within the scope of the above recognition, and the remaining claim against the defendant submarine food, the delivery of the defendant's goods, and the claim against the defendant 3 shall be dismissed as it is without merit. Since the part against the defendant in the judgment of the court of first instance which differs from this conclusion is unfair, the plaintiff's claim shall be revoked by accepting some appeals against the defendant submarine food, the delivery of the defendant's goods, and the appeal against the defendant 3, and the corresponding claim shall be dismissed, and the remaining appeal against the defendant submarine food shall be dismissed as it is without merit. It is so decided as per Disposition.

Judges Lee Ki-taik (Presiding Judge)