In a case where the subsequent owner of a registered trademark proves that the sale of products, which had already been registered, was infringed on the right to the prior registered trademark, due to a trial ruling on invalidation of the subsequent registered trademark from the owner of the registered trademark, and subsequent adjudication on invalidation becomes final and conclusive, the subsequent owner of the registered trademark knew or could have known that the sale of products, which had already been attached to the registered trademark, could infringe on the right to the prior registered trademark, and thus, the subsequent owner of the registered trademark, determined that the sale made after the date constitutes tort

Articles 66 and 67 of the former Trademark Act (amended by Act No. 7289 of Dec. 31, 2004)

Plaintiff (Attorney Lee Han-con et al., Counsel for the plaintiff-appellant)

Defendant (Law Firm Jeong, Attorneys Park Sang-young et al., Counsel for the defendant-appellant)

Busan High Court Decision 2006Na18433 Decided August 1, 2007

The appeal is dismissed. The costs of appeal are assessed against the defendant.

The grounds of appeal are examined.

1. Examining the reasoning of the judgment below in light of the records, the court below obtained a certification from the plaintiff on September 9, 2003 that the defendant's act of selling products attached with the registered trademark of this case (No. 416497, 467823, and 526030) infringed upon the plaintiff's right to the registered trademark of this case. Since the decision invalidating the registered trademark of this case became final and conclusive on July 2004 and the decision invalidating the registered trademark of this case became final and conclusive on September 9, 2004, it was deemed that the defendant knew or could have known that the defendant's act of selling products attached with the registered trademark of this case may infringe the plaintiff's right to the registered trademark of this case, and the defendant's act of selling products attached with the registered trademark of this case after September 9, 2003 constitutes tort against the plaintiff. The judgment below is justified in the misapprehension of legal principles as to the validity of the registered trademark of this case.

2. Examining the reasoning of the judgment below in light of the records, the court below held that the claim for damages based on the plaintiff's prior registered trademark right does not constitute an abuse of rights. Such decision of the court below is just, and there is no error of law by misunderstanding the legal principles as to abuse of rights in the registered trademark right as

3. Examining the reasoning of the judgment below in light of the records, the court below is just in holding that the defendant sold products to which the registered trademark of this case was attached, thereby infringing the plaintiff's right to registered trademark, and thereby causing losses to the plaintiff who runs the same kind of business. There is no error of law by misunderstanding legal principles as

4. Therefore, the defendant's appeal is dismissed. It is so decided as per Disposition by the assent of all participating Justices on the bench.

Justices Shin Young-chul (Presiding Justice)