Applicant (Attorney Lee Young-soo, Counsel for the plaintiff-appellant)

New Doo Museum Co., Ltd. (Law Firm Sejong, Attorneys Hong-soo et al., Counsel for the plaintiff-appellant)

October 12, 2005

Suwon District Court Decision 2005Kahap306 decided May 25, 2005

1. The respondent's appeal is dismissed.

2. The Respondent shall bear the costs of appeal.

1. The purport of the applicant's application: with respect to the case of an application for provisional injunction against the use of a trademark between the applicant and the respondent, the above court rendered a provisional injunction on April 25, 2005 with respect to the case of filing an application for provisional injunction against the use of the trademark between the applicant and the respondent, the security for the first debtor of the above order shall be increased to KRW 1,00,000 in cash from KRW 30,00,000 in accordance with the creditor's application procedure due to a change in the creditor's purpose of the provisional injunction, and the sound records listed in the separate sheet (3) in the separate sheet (2) of the disposition No. 1-A shall be added to the sound records stated in the separate sheet (2) of the order, and the applicant shall obtain the approval after changing the purport of the provisional injunction from the first instance court.

2. The purport of the request for objection and the purport of appeal: To revoke the judgment of the first instance, to revoke the above decision of provisional disposition, and to dismiss the request for provisional disposition of the applicant.

1. Factual basis

The following facts shall be clearly explained by record or by data submitted:

A. On October 22, 1999, the respondent for the purpose of manufacturing and selling music records, carc tapes, etc. produced and sold the compilation music records under the name of “the so-called “the so-called “the so-called “the so-called coffee.” On December 18, 2000, the respondent produced and sold the so-called “the so-called “the so-called “the so-called coffee No. 2” in the same manner.

B. The applicant, as indicated in the [Attachment List (1) of May 15, 2002, filed an application for trademark registration using the compact disks, etc. in which music recorded as designated goods with respect to the trademark arranging the Korean language “SaCK COFE” at the bottom of the English person called “BLACK COFE” as the designated goods, and completed the registration as of August 26, 2003 (hereinafter the registered trademark of this case) (hereinafter the registered trademark of this case), and on September 13, 2002, established a company of Jacck Co., Ltd. for the purpose of sound record planning and production business.

C. On November 13, 2002, the respondent entered into a contract on the manufacture and sale of music records with the content that the respondent is entitled to exclusively produce and sell the edited music records using the master music records of “the third dyna dyna dyna dyna dyna dyna dyna dyna dyna dyna dyna dyna dyna dyna dyna dyna dyna dyna dyna dyna dyna dyna dyna dyna dyna d', “the third dyna dyna d'

D. However, on November 5, 2004, after the registered trademark of this case, the respondent produced and sold the compilation records planned and produced by the respondent under the name of "the Han Dan 4 collection" without obtaining the consent or approval from the applicant, and on April 2005, the respondent planned, produced and sold the compilation records under the name of "the Han Dan 5 collection".

E. On April 25, 2005, the applicant filed an application with the respondent for provisional injunction against infringement under the trademark right of this case as the right to be preserved. On the condition that the applicant deposits KRW 30,000,000 in cash as security for the respondent within seven (7) days from the date the applicant was notified of this decision, the respondent shall not manufacture, sell, reproduce, lend, distribute, display, or display the trademark in the sound records ("Korean coffee 4") listed in the attached Table 1 (hereinafter "the attached Table 1"), and the respondent shall not set the possession of the goods, publicity, packaging, containers, and seals using the above trademark, and shall keep the enforcement officer entrusted by the applicant, and the enforcement officer shall make a public announcement of the purport of the above provisional injunction in an appropriate manner. The respondent filed an application for provisional injunction.

2. Determination

A. As to the infringement of trademark right

First, we will examine whether the respondent’s production and sale of the compilation music records of “the so-called “the so-called “the so-called “the so-called coffee 4” and “the so-called “the so-called “the so-called “the so-called coffee” infringes on the applicant’s trademark right to the registered trademark

Each of the above edited records produced by the respondent is a compilation work as stipulated in Article 2 subparag. 12 subparag. 3 of the Copyright Act, which is organized and arranged by the respondent. Barring special circumstances, the title or content of the work as a creative production can be used by anyone unless it conflicts with the Copyright Act, and has the same character as a common name or a public trademark indicating quality as that of the work. Thus, the use as a title does not affect trademark rights under Article 51 of the Trademark Act. However, in special cases, such as the use of another person's registered trademark as its title, it may be recognized that the use of the above Respondent was an identification mark indicating the source of the work in the actual transactional world, such as the Respondent's intent, and the process of its use, and thus, it can be seen that the above Respondent's use of the sound records has an effect on the Respondent's trademark rights in such a case (see Supreme Court Decision 205Da2770, Aug. 25, 2005).

Therefore, since the respondent used the mark identical to the applicant's registered trademark of this case on goods identical or similar to the designated goods, the applicant's trademark right was infringed. Thus, the applicant may claim against the respondent the prohibition and prevention of the trademark infringement.

B. As to the respondent's argument

First, the respondent asserts that the registered trademark of this case by the applicant is registered for the purpose of unfair competition and its registration is null and void, and even if not, the application of provisional injunction in this case was filed for the purpose of unfair competition, so it should not be accepted as an abuse of right.

In order to be seen as an act for the purpose of unfair competition or unfair competition with the applicant's act of registering the registered trademark of this case or the filing of provisional disposition of this case, the name of "mar and coffee" which the respondent continues to use as the title of the above compilation phonogram must first obtain well-knownness as the respondent's product mark, and thus, it should first be examined. Generally, the title of the work or character, the name of the compilation phonogram of this case, etc. do not appear as the essential function of expressing the source of the product like the trademark, and it is not easy to acquire the product mark or the well-knownness of the product mark, and it is more so long as it is a general name without originality or unique character, it is difficult for the respondent to obtain the product mark as the name of "mar and coffee" of the respondent at the time of the application for the registration of the trademark of this case, i.e., it is hard to see that the respondent made and released the above 200 years prior to 30 years prior to the filing of the registration of this case, and 200.2 years prior to the sale of the phonogram.

In addition, in order for the exercise of the right to be denied as an abuse of right, the exercise of the right is to give pain to the other party on a subjective basis and to inflict damage on the other party, and there should be no benefit to the person who exercises the right, and it can be viewed that it violates the social order objectively (see Supreme Court Decision 93Da4366, May 14, 1993; Supreme Court Decision 2003Da5498, March 25, 2005, etc.). As seen above, the respondent's conclusion of the music record sales contract with the Jinama Co., Ltd. established by the applicant and the above music record sales contract with the applicant, and at least it is acceptable for the applicant to have the legitimate right as to the title, at least implicitly, by which the respondent entered into the above contract with the Jinama Dama 2003Da5498, Mar. 25, 2005, and in light of this point, the applicant's application of the provisional disposition does not have any benefit to the applicant.

Furthermore, the respondent asserts that the application for provisional disposition in this case is not permissible, since he has each compilation copyright on his “satch and 5 collection”.

However, as seen above, it is recognized that the respondent plans and manufactures "the so-called "the so-called "the so-called coffee 4" and "the so-called "the so-called "the so-called "the so-called "the so-called "the so-called" and "the so-called "the so-called "the so-called "the so-called coffee" in this case is prohibited from using the trademark "the so-called "the so-called "the so-called" in this case as a title of each of the above-mentioned compilation records produced by the respondent. Thus, it cannot be the ground for preventing the respondent from claiming the prohibition.

3. Conclusion

Therefore, the respondent has the right to prohibit the production or sale of music records, such as the attached Forms (2) and (3) using the registered trademark of this case in attached Forms (1) and (1). Therefore, the respondent has the right to be preserved for the application of the provisional disposition of this case. In addition, in light of the background leading up to the application and registration of the registered trademark of this case, and the timing and circumstances of the production and sale of music records such as the attached Forms (2) and (3) of the respondent, it is recognized that there is a need to preserve the provisional disposition of this case. Thus, it is reasonable to maintain the provisional disposition order of this case and approve the provisional disposition of this case by adding "the advanced coffee five collection" to the prohibited object according to the alteration of the purport of the application in the first instance procedure of this case and by changing the security amount accordingly, it is reasonable to approve the order of the provisional disposition of this case. The judgment of the first instance is justified as the conclusion, and

[Attachment]

Judges Kim Young-tae (Presiding Judge) Kim Jong-ho