Lee Jae-hee (Attorney Choi Young-hee et al., Counsel for the defendant-appellant)

Yellowju and 3 others (Law Firm Sang-ju, Attorneys Kim Jong-ho, Counsel for the plaintiff-appellant)

Seoul Central District Court Order 2005Kahap1851 dated July 28, 2005

1. The petitioner's appeal is dismissed;

2. Costs of appeal shall be borne by the applicant;

The decision of the first instance shall be revoked. The respondent shall not use the mark No. 1 in the attached list 2 for the goods listed in the attached list No. 2 or for their packaging and advertising advertisements, or manufacture, produce, sell, transfer, or exhibit for that purpose any goods using the above trademark. The respondent shall hold possession of the above mentioned goods and order the execution officer entrusted by the applicant to keep such goods. The execution officer shall publicly notify the purport of the above order in an appropriate manner.

1. Basic facts

In full view of the records of this case and the overall purport of the examination, the following facts are substantiated.

A. On February 19, 200, the applicant and the state of Huyoung filed an application for trademark registration of the goods listed in the separate sheet No. 1 (hereinafter “instant trademark”) as the designated goods listed in the separate sheet No. 1 (hereinafter “instant trademark”) and completed the trademark registration on May 25, 2001 (part of the designated goods are filed on April 25, 2003 and completed the registration thereof on January 25, 2005), and the state of Hu Young transferred the right to the instant trademark on July 1, 2003 to the applicant.

B. On January 28, 2004, the claimant and the respondent entered into a contract with the content that the trademark of this case is used for the mother and child produced by the respondent (hereinafter “instant contract”).

2. Summary of the grounds for application;

The Claimant transferred the right to use the trademark to the Respondent on December 5, 2003 without the consent of the Respondent, and on January 1, 2004, the above right to use the trademark was transferred to the Respondent. ② On January 20, 2004, the Respondent allowed the use of the trademark to the Jinsung, which is an item not designated under the contract of this case, and produced Titrts 8,50,000, where the Jinsung attached the trademark of this case. The Respondent notified the Respondent on May 7, 2004 to the Respondent of the termination of the contract of this case on the ground of the above violation of the contract, and the contract of this case was lawfully terminated, and the Respondent was no longer able to use the trademark of this case. The Respondent asserted that the Respondent violated the trademark of this case by obtaining the mother and child who attached the trademark of this case from the Respondent and selling it through the account book, and selling it through the Respondent.

3. Determination

A. Whether the respondent has transferred the trademark of this case without permission of the owner

As to the above assertion by the applicant, the materials submitted only to the record alone are insufficient to vindicate it, and there is no other evidence to vindicate it, so the above assertion by the applicant is without merit.

(b) Whether the termination is effective due to the use of trademarks other than designated goods;

In light of the data submitted by the applicant, there is not sufficient evidence to prove that the respondent, even if based on the data submitted by the applicant, the respondent, permitted the use of the trademark of this case for the production of Titrts, and even if the respondent, the respondent, even though he allowed the Respondent to manufacture non-designated goods under the contract of this case, it is insufficient to vindicate that the trust relationship was destroyed to the extent that it is impossible to maintain the contract of this case due to the above act of the Respondent. Thus, the respondent's assertion is without merit.

C. Infringement of copyright of the trademark of this case

(A) The mark used in the trademark of this case was widely known in the U.S. because it was used in the combination of “flying eyeball” and “Von Dutch” (hereinafter “the instant work”) which was the honor of the deceased, created by the DNA of the U.S. Dyebert Hbert, and “flying eyeball” and “Von Dutch” (hereinafter “the instant work”).

(B) After the deceased on September 19, 192, the above deceased succeeded to all rights related to the work of this case by Lorna Mica and Lorna Micel. On October 8, 1996, the above inheritor entered into a license agreement that the contract period from October 8, 1996 to October 7, 2005 with the contract area designated as the global area where the above company would use the design created by the deceased including the work of this case.

(C) On April 1, 1999, the Dach Sast beauty corporation transferred the right under the above contract to Micacas, and on June 8, 2005, the saves acquired all rights to the instant copyrighted works, etc. from the deceased’s successors who obtained the consent of Ecacell on June 8, 2005.

(D) Meanwhile, at the time of the registration of the trademark of this case, the applicant failed to obtain any consent on the use of the work of this case from the deceased’s heir or the satise.

(2) Even if a trademark right holder is in conflict with another's copyright that occurred prior to the filing date of the application for trademark registration, the use of a trademark for the designated goods that conflict with the designated goods cannot be used without the consent of the copyright holder (Article 53 of the Trademark Act). According to the above facts, the trademark of this case has been used far more than the registered trademark of this case, and the trademark used in the trademark of this case is merely merely a combination of the trademark of this case and thus it is in conflict with the above deceased's copyright on the copyrighted work of this case. Thus, apart from the effect of the registration itself of the trademark of this case, the applicant who did not obtain the consent on the use of the trademark of this case cannot use the trademark of this case within the extent inconsistent with the above deceased's copyright on the copyrighted work of this case, and further, the respondent's use of the trademark of this case cannot be claimed

4. Conclusion

Therefore, the application of this case is dismissed as there is no vindication of the right to be preserved, and the decision of the first instance court is legitimate, so the appeal by the applicant is dismissed, and it is so decided as per Disposition.

[Attachment List omitted]

Judges Cho Yong-ho (Presiding Judge)