[1] Criteria for determining the necessity of provisional disposition to determine temporary position, and whether there is a need for preservation in special circumstances such as application for provisional disposition seeking prohibition of infringement on trademark rights where there is a high probability that the trademark right will be invalidated in the future (negative)

[2] The case holding that the application for provisional disposition seeking the prohibition of infringement of the above registered trademark does not need to be preserved on the ground that the registered trademark "Malok" is identical with the pre-use trademark and its mark of the respondent recognized as well-known, and that the "periodicals, learning sites, books, and records" related to the application for provisional disposition among the designated goods are the same or similar to the "book" of the respondent, which is a product used by the pre-use trademark of the respondent, and thus, it is highly likely that the registration may be invalidated pursuant to Article 7 (1) 9 of the Trademark Act

[1] Article 300(2) of the Civil Execution Act, Article 7(1)9 of the Trademark Act / [2] Article 300(2) of the Civil Execution Act, Article 7(1)9 of the Trademark Act

[1] Supreme Court Decision 92Da40563 delivered on February 12, 1993 (Gong1993Sang, 971) Supreme Court Decision 2003Da30265 delivered on November 28, 2003 (Gong2004Sang, 42)

Jeong-ho (Law Firm General Law Office, Attorneys Kim Hong-seok et al., Counsel for the defendant-appellant)

Social deliberation loan Co., Ltd. (Law Firm Kim & Lee, Attorneys Lee Jong-chul et al., Counsel for the defendant-appellant)

Supreme Court Decision 2002Da56024 Delivered on July 9, 2004

Supreme Court Decision 2005Da22770 Delivered on August 25, 2005

Seoul High Court Decision 2005Na82491 decided May 3, 2006

The judgment below is reversed, and the case is remanded to Seoul High Court.

The grounds of appeal are examined.

Whether a provisional disposition to determine a temporary position under Article 300 (2) of the Civil Execution Act is necessary shall be determined on the basis of the court's discretion, taking into account the interests and loss relationships between the parties following the acceptance of the application for provisional disposition in question, the anticipated failure in the lawsuit on the merits, and all other circumstances. Furthermore, in the case of a satisfactory provisional disposition which imposes on the debtor for provisional disposition the duty of omission as to the prohibition of infringement of trademark rights, such as the order in the judgment on the merits, with regard to the prohibition of infringement of trademark rights, more careful and more careful decision should be made in determining the necessity of preservation. Thus, if there are special circumstances such as where it is highly probable that the trademark right will be invalidated in the future, the application for provisional disposition shall be deemed unnecessary in consideration of equity among the parties (see Supreme Court Decisions 92Da40563, Feb. 12, 1993; 2003Da30265, Nov. 28, 2003, etc.).

In light of the above legal principles and records, the registered trademark of this case (registration number No. 564818) using the mark as "Maraz which is not absolutely in English factory book" and using the designated goods as "Maraz, learning site, book, and book," etc. prior to the filing date of the trademark of this case, the pre-use trademark and its mark are identical to the pre-use trademark and its mark that are widely known to ordinary consumers as being published by the respondent as the trademark before the filing date of the trademark of this case, and the function of indicating the source of the trademark used in the goods such as "prob" is deemed to be for publishers rather than the author. Thus, among the designated goods of the trademark of this case, the "periodical, learning site, book, and book book" related to the application for provisional disposition of this case among the designated goods of the registered trademark of this case is likely to be invalidated pursuant to Article 7 (1) 9 of the Trademark Act because they are or similar to the "book" used by the respondent.

Therefore, even though the application for provisional disposition of this case is not necessary to preserve, the court below's judgment which judged otherwise erred by misapprehending the legal principles as to the necessity of preserving provisional disposition, which affected the conclusion of the judgment. The ground of appeal assigning this error is with merit.

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 Kim Young-ran (Presiding Justice)