[1] Criteria for determining the similarity of a combined trademark composed of the combination of names

[2] The case holding that a trademark consisting solely of a combination of “GINNI” and “VERSACE” falling under the name of a Vietnamn company, or a trademark consisting of only adult “Versace” and “Versace” as well as a trademark consisting of a combination of “VERSACE”, “VIDO”, or “VIDO” and “ALDO” and “ALDO” and “AVI”, which correspond to the above performance and name, are all similar trademarks that are likely to mislead or confuse ordinary consumers or traders

[3] The case holding that it is difficult to view the trademark "VERSUS" and "GINNNVIVVCEE", the English version of the original body, as the English version of the calendar model, as the combination trademark of letters and diagrams placed at the bottom, or the trademark "VERSUS" and the trademark of the English body of the pen, the English version of the pen, as the English version, can be conceptualized and named only with "VERS" or "VERSAE", and thus, it is difficult to view the trademark as similar to the use trademark consisting of combinations of "AFREO" or "AFREDO" or "AFREE", respectively.

[4] The meaning of "the date when the injured party becomes aware of such damage and of the identity of the perpetrator," which is the starting point of the short-term extinctive prescription of damage claim

[5] The case holding that although the damages claim against the person holding the registered trademark right due to the infringement of the trademark right or unfair competition had already expired at the expiration of the short-term extinctive prescription period of three years, the gains obtained by the infringer from using a trademark similar to the registered trademark without any legal ground shall be returned to the person holding the registered trademark right

[1] Whether a trademark is similar shall be determined by whether there is a concern for mistake or confusion as to the origin of the trademark when the two trademarks used for the same kind of product are observed in terms of appearance, name, and concept, etc., and when ordinary consumers or traders feel the trademark in trade based on the direct perception of the trademark. The combination trademark combining each constituent element of letters, letters, or diagrams is not necessarily named, concept, but rather, a combination trademark combining each constituent element of the entire constituent element with the entire constituent part, unless it is an indivisible trademark to the extent that it is deemed natural in trade if the separate observation of each constituent element is made, only a part of the constituent part may be called, concept, and meaning. In addition, if it is possible to think of two or more names or concepts from one trademark, if it is deemed identical or similar to another's trademark, the two trademarks should be similar, and even in the case of a combination of names made by the combination of trademarks, their name shall not be readily determined as the same as the name of the person in trade.

[2] The case holding that a trademark consisting solely of a combination of “GINNI” and “VERSACE” falling under the name of a Vietnamn company, or a trademark consisting of only adult “Versace” and “Versace” as well as a trademark consisting of a combination of “VERSACE”, “VIDO”, or “VIDO” and “ALDO” and “ALDO” and “AVI”, which correspond to the above performance and name, are all similar trademarks that are likely to mislead or confuse ordinary consumers or traders

[3] The case holding that since the English trademark "VVERSAE, an English English in the original body, and "GINNNIVVVIE," which is an English in the original body, is a combination trademark of letters and diagrams posted at the bottom, or the trademark "VVVISAE," which is an English in the original body, and the English version of the pen, are located at the bottom, the English trademark "GINNNIVVVIE," which is a small body difficult to be identified in one eye, and the English trademark "VVSAE," which is a combination of "VERS" or "VERS," which is a English body, has a large number of English parts and hard to be seen as being combined with "VERS" or "VERS," and thus, it is difficult to view it as similar only to the "VERSAE" or "VACEEEE", because it can be seen as a combination of "VERS" or "VERS," written evidence

[4] The "date when the injured party becomes aware of the damage and the perpetrator", which is the starting point of the short-term extinctive prescription of the damage claim due to a tort, means the time when the injured party actually and specifically recognizes the elements of the tort, such as the illegal harmful act, the occurrence of the damage, and the existence of proximate causal relation between the harmful act and the damage, but the fact that such requirements are satisfied is not required to be determined legally by the final judgment or

[5] The case holding that although a claim for compensation for damages suffered by a person holding a registered trademark due to an act of infringement of trademark right or unfair competition had already expired at the expiration of the short-term extinctive prescription period of three years, the gains obtained by the said infringer from using a trademark similar to the registered trademark without any legal ground shall be returned to the person holding

[1] Article 7 (1) 7 of the Trademark Act / [2] Article 7 (1) 7 of the Trademark Act / [3] Article 7 (1) 7 of the Trademark Act / [4] Article 766 (1) 7 of the Civil Act / [5] Articles 741 and 766 (1) of the Civil Act

[1] Supreme Court Decision 96Hu313, 320 decided Mar. 25, 1997 (Gong1997Sang, 1231) Supreme Court Decision 97Hu2842 decided Nov. 23, 199 (Gong2000Sang, 54) Supreme Court Decision 98Hu690 decided Feb. 25, 200 (Gong2000Sang, 1197) decided Apr. 11, 200, Supreme Court Decision 2001Da4057, 4064 decided Apr. 26, 200 (Gong2000Sang, 1197) decided Apr. 26, 2008; Supreme Court Decision 2000Da629497 decided Apr. 25, 2003; Supreme Court Decision 2008Da974979 decided Apr. 29, 2007)

Hui Ba Hui (Law Firm Hau, Attorneys Shin Don-hwan, Counsel for the plaintiff-appellant)

C&D Co., Ltd. (Law Firm Barun Law, Attorneys Han Han-seok et al., Counsel for the defendant-appellant)

April 7, 2006

1. The defendant shall pay to the plaintiff 10 million won with 5% interest per annum from December 6, 2000 to April 28, 2006, and 20% interest per annum from the next day to the day of complete payment.

2. The plaintiff's primary claim and the remainder are dismissed, respectively.

3. 13/18 of the costs of lawsuit shall be borne by the Plaintiff, and the remainder by the Defendant, respectively.

4. Paragraph 1 can be provisionally executed.

The defendant shall pay to the plaintiff the amount of 362,101,266 won and the amount calculated by the ratio of 6% per annum from December 6, 200 to the service date of a copy of the application for amendment of the claim of this case, and 20% per annum from the next day to the day of complete payment (the plaintiff shall claim for return of unjust enrichment in preliminary case).

1. Basic facts

The following facts are not disputed between the parties, or may be acknowledged by taking into account the whole purport of the pleadings in each entry in Gap evidence 1, 2, 3, 4, 5, 6, and 7 (including the number of each entry):

A. On July 25, 1979, the Plaintiff was established and registered as a corporation of the Republic of Italian, global well-known Republic of Italian, which is engaged in the manufacture, sale, and incidental business thereof, as designated goods, the Plaintiff’s trademark indicated in the [Attachment 1] list with the Korean Intellectual Property Office from around 1982 to around 198 (hereinafter collectively referred to as “Plaintiff’s trademark”; among the Plaintiff’s trademark, trademarks 1 to 17 as indicated in the [Attachment 1] list among the Plaintiff’s trademark, as trademarks listed in the [Attachment 1], and trademarks 18 to 24 as trademarks listed in the [Attachment 2] list.

B. Without the Plaintiff’s consent, the Defendant manufactured and sold some of the designated goods listed in the attached Table 2, which indicated the trademark using letters such as “ALFRED VISACE” and “AVE” (hereinafter collectively referred to as “Defendant’s trademark”) or the trademark containing such letters (hereinafter referred to as “Defendant’s goods”).

C. Around March 1999, the Plaintiff filed a provisional injunction against the Defendant against the Defendant on April 29, 199 by filing an application for a provisional injunction against the Defendant’s trademark with the Seoul District Court 9Kahap780, and the Defendant filed an objection against the above provisional injunction order with the Seoul District Court 99Kahap1224 on July 30, 199, but the Defendant was sentenced to a judgment approving the above provisional injunction order on July 30, 199, and the Defendant filed an appeal with the Seoul High Court 9Na43617 on December 6, 200 and with the Supreme Court 200Da4071 on December 6, 200 and April 26, 2002, and the above provisional injunction order became final and conclusive on April 26, 2002.

D. The defendant filed an application to suspend compulsory execution against the above provisional disposition by incidental to the process of filing an appeal against the above provisional disposition order and the judgment of objection against provisional disposition. Accordingly, the Seoul District Court made a decision to suspend compulsory execution against the above provisional disposition order by July 30, 1999, which is the date of the judgment of the objection against provisional disposition as of May 7, 1999, until July 30, 1999, the date of the judgment of the objection against provisional disposition as of August 99, 1999, which is the date of the judgment of the appeal (99Na43617). The defendant made a decision to suspend compulsory execution against the above provisional disposition order by December 6, 200, which is the date of the judgment of appeal on the objection against provisional disposition as of August 9, 1999.

2. Judgment as to the main claim

A. The plaintiff's assertion

The plaintiff asserts that the act of manufacturing and selling the defendant's goods indicating the defendant's trademark similar to the plaintiff's registered trademark from March 1999 to December 6, 200 constitutes an infringement of trademark rights under Article 66 (1) 1 of the Trademark Act. At the same time, this constitutes an act of unfair competition under Article 2 subparagraph 1 (a) and (b) of the Unfair Competition and Trade Secret Protection Act (hereinafter "Unfair Competition Prevention Act"), and thus, it constitutes an act of unfair competition under Article 2 subparagraph 1 (a) and (b) of the Unfair Competition and Trade Secret Protection Act. Thus, the defendant is liable to compensate the plaintiff for damages therefrom.

B. Determination as to the Plaintiff’s first trademarks

(1) Whether the plaintiff's first trademark is well known

In light of the above circumstances, it is reasonable to view that the Plaintiff’s first trademark was a well-known well-known trademark that had been widely known domestically around 1999 in light of the registration status, the period of use, and well-knownness of the Plaintiff’s trademark in Korea.

(2) Whether the plaintiff's first trademarks and the defendant's trademarks are similar

The similarity of trademarks shall be determined by whether there is a concern for mistake or confusion as to the origin of a trademark when general consumers or traders feel the trademark by observing two or more trademarks used for the same kind of product in terms of appearance, name, concept, etc. In addition, if it is possible to think of two or more names or concepts from one trademark, one of them shall be similar if it is deemed identical or similar to another's trademark, and even in the case of a combination of names made by combinations, the same shall not apply where a combination of the parts consisting of letters, letters, or figures, but it shall not necessarily be called or conceptualized by the whole parts of the composition, unless it is an indivisible combination to the extent that it is deemed natural in the trade, upon separate observation of each part, it may be called or conceptualized simply by a part of the composition unless it is an integral combination to the extent that it is not natural in the trade (see, e.g., Supreme Court Decision 200 after the judgment 209Da879799, Feb. 29, 2009).

In the instant case, the Defendant’s trademarks and Defendant trademarks are similar to those of the Plaintiff’s trademarks to the extent that they may be mistaken and confused as if they were the goods manufactured and sold by the Plaintiff, and the Plaintiff’s first trademarks are composed solely of a combination of “VERSACE” and “Versce,” which correspond to the name of the Vietnam company, or adult “Versce,” and the Defendant’s trademarks are composed solely of “VERSAE,” which correspond to the nature of the Vietnam company, and “VVE”, or “LFREDO,” which correspond to the above work’s name, can be recognized by taking into account the overall purport of the arguments by the Plaintiff, or by taking into account the following circumstances, the Defendant’s trademark’s name or language tendency to be used as a simple language name, rather than the Plaintiff’s name or language tendency to be used as a whole, given that each part of the trademarks is not natural if separately observed, it is unreasonable to the extent that it is not natural in the trade.

Thus, the plaintiff's first trademarks and the defendant's trademarks referred or abbreviated merely by "beer company" are identical to their titles and concepts, so they are likely to cause misconceptions or confusions among ordinary consumers or traders by observing them in an objective, overall, and separately, and thus, are similar trademarks.

C. Determination as to the Plaintiff’s second trademarks

The Plaintiff’s trademarks 2 are the English trademark with only the combination trademark of letters and diagrams posted at the lower end or the English body of the English body “VERSACEE” and the “GINNNIVVSACEE”, which are the English body in the reverse-type model, respectively, and also the English body with the bottom of “GINNNI VIVVSCE”. However, although the English body of the Plaintiff, “GINNNIVVIEE” is difficult to identify in one body, it is difficult to accurately recognize the iron body, while the trademark of each of the above trademarks is larger than the English body of the Plaintiff, and thus, it is difficult to view the Plaintiff’s trademark as a whole or similar to the Plaintiff’s trademark, since it is difficult to view that the trademark of each of the above trademarks is an objective trademark “VVSCE,” and thus, it is difficult to view the Plaintiff’s trademark as a whole.

D. Whether liability for damages is established due to violation of the Trademark Act and the Unfair Competition Prevention Act

According to the above facts, the defendant's act of manufacturing and selling the defendant's goods by marking the defendant's trademark similar to the plaintiff's trademark No. 1, which is well-known trademark registered by the defendant, constitutes an unfair competition act that infringes the plaintiff's right to registered trademark and causes confusion with the plaintiff's goods. The defendant is presumed to have been aware of the fact that the plaintiff's trademark No. 1 was already registered under Article 68 of the Trademark Act, and in light of the time of acquiring well-knownness of the plaintiff's trademark and its process, it can be sufficiently recognized that there was intention or negligence for the above unfair competition act. Thus, the defendant is liable to compensate the plaintiff for damages

E. Defendant’s defense of extinctive prescription

In this regard, the defendant defenses that the above damage claim has expired by prescription. As such, the date when the victim became aware of the damage claim and the identity of the perpetrator refers to the time when the victim actually and specifically recognized the facts of the tort, such as illegal harmful acts, the occurrence of damage, and the proximate causal relation between the harmful act and the damage. However, the fact that the requirements are satisfied by the final judgment that the victim satisfies such requirements is not required to have public authority or conviction in this regard.

In full view of the overall purport of arguments in the statement No. 1, No. 1-2, and No. 3 (including paper numbers), the plaintiff already received a provisional disposition against other companies using the same trademark as the defendant's trademark on Oct. 28, 1998, and sent the defendant a document requesting the suspension of use of the defendant's trademark on the basis of the above provisional disposition. The defendant's refusal to comply with the above request, and the defendant filed an application against the defendant for the prohibition of use of the defendant's trademark around Mar. 1999. Thus, it is reasonable to view that the plaintiff had actually known the defendant's infringement of the trademark right, the defendant's act constitutes unfair competitive act, and the damage and the perpetrator's act. The above lawsuit of this case had already been filed on Apr. 26, 2005.

3. Determination on the conjunctive claim

A. Whether the obligation to return unjust enrichment was established

According to the facts found in the above 1. and 2.B., the defendant, without any authority, sold the defendant's products manufactured using the defendant's trademarks similar to the plaintiff's No. 1 trademarks, which are similar to the registered plaintiff's No. 1 trademarks, thereby making profits without any legal grounds and thereby causing damage to the plaintiff. Thus, the defendant shall return the profits to

B. Scope of return of unjust enrichment

The plaintiff asserts that since the defendant used the defendant's trademark from March 1999 to December 6, 200, that 147,510,901 won in 199, and 260,918,745 won in operating income in 2000, the above operating income was generated by the defendant's other trademarks, the defendant should return all of the above operating income for 21 months to the plaintiff.

In light of the following facts: (a) the Defendant filed an application for the suspension of compulsory execution every stage against the Defendant’s order to prohibit the use of the trademark No. 99k and 780 and its provisional disposition; (b) the Defendant’s use of the Defendant’s trademarks similar to the Plaintiff’s 1 trademarks for 21 months from March 1999 to December 6, 200; (c) the Defendant’s use of the Defendant’s trade profits for 0-10 and 6-10-6-6-6-17-7-7-7-7-7-7-7-7-7-7-7-7-7-7-7-1-7-1-7-1-7-7-1-7-1-7-1-7-7-1-7-1-7-1-7-1-7-1-7-1-7-1-7-1-77-1-7-17-17-17-197-197-7-17-7-19-7-7-17-17-7-7

On the other hand, the beneficiary returned unjust enrichment, and if the damage is less than that of the right to claim the return, it would be sufficient to refund only to the extent of the amount of damage. Thus, as seen above, the defendant's profit gained by using the defendant's trademark in this case is recognized as equivalent to 100,00,000 won. In full view of the statement in Gap evidence No. 8, the plaintiff granted the plaintiff's right to exclusive import and sale of clothing and clothing out of the plaintiff's goods in Korea to the land trade company, and accordingly, it can be acknowledged that the plaintiff's royalty for 217,197,030 won was paid or to be paid from the land trade company, the plaintiff's total royalty for 00,000 won is hard to determine the amount of damage due to the defendant's act of infringement of the trademark right, i.e., Article 67 of the Trademark Act concerning the scope of damages suffered by the infringer's trademark right holder, and it can be found that the plaintiff's damage was proved by the defendant's act.

Therefore, as seen earlier, the Defendant is presumed to have been aware of the fact that the Plaintiff’s trademarks No. 1 were already registered at the time of the above profit. Therefore, it is reasonable to view that the Defendant was a malicious beneficiary at the time. The Defendant is obligated to pay to the Plaintiff the amount of KRW 100,000,000 as unjust enrichment return and the damages for delay calculated at the rate of 5% per annum as stipulated in the Civil Act from December 6, 2000, which the Plaintiff seeks as to the existence and scope of the obligation to pay to the Plaintiff as unjust enrichment return, until April 28, 2006, which is reasonable to dispute over the existence and scope of the obligation to pay to the Plaintiff.

4. Conclusion

The plaintiff's primary claim is dismissed as it is without merit, and the conjunctive claim is accepted within the scope of the above recognition, and the remainder is dismissed as it is without merit. It is so decided as per Disposition.

Judges Magk-Jin (Presiding Judge)