Where a trial decision on invalidation of trademark registration becomes final and conclusive after an act infringing a trademark right, whether such act constitutes a trademark infringement under Article 93 of the Trademark Act (negative)

Articles 71(3) and 93 of the Trademark Act

Supreme Court en banc Decision 93Do839 delivered on May 16, 1996 (Gong1996Sang, 1783)

Defendant

Defendant

Seoul Eastern District Court Decision 2004No453 Decided December 29, 2004

The judgment of the court below is reversed, and the case is remanded to the Seoul Eastern District Court Panel Division.

The grounds of appeal are examined (to the extent of supplement in case of supplemental appellate briefs not timely filed).

Even if the trial decision that the act of infringing another person's right to registered trademark was completed before the decision that the trademark registration be invalidated becomes final and conclusive, if the trial decision that the trademark registration be invalidated thereafter became final and conclusive, the trademark right did not exist from the beginning, and such act cannot be deemed as a trademark infringement (see Supreme Court en banc Decision 93Do839 delivered on May 16, 196).

The summary of the facts charged of this case is that the defendant, etc., asserted the invalidation of the trademark of this case against the head of the Korea Intellectual Property Office on Oct. 30, 2004 and obtained a trial decision of invalidation of registration on Oct. 30, 2004, and the lawsuit of revocation of the above trial decision of the head of the fisheries et al. against it becomes final and conclusive after the Patent Court Decision 2004Hu8015 decided Apr. 8, 2005, and the appeal of this case became final and conclusive after the Supreme Court Decision 2005Hu165 decided Apr. 16, 2005.

Thus, since the trademark of this case was not existing from the beginning, it cannot be deemed that the defendant's act, such as the facts charged, violated the trademark right of this case to the head of the fishery, the judgment below cannot be maintained, and the defendant's ground of appeal pointing this out is justified.

Furthermore, since the date of registration of the trademark of this case was May 29, 2002, the act before trademark registration cannot be deemed as a trademark infringement unless there are special circumstances. However, the court below found that all of the facts charged in this case including the act before trademark registration was guilty, it erred by misapprehending the legal principles of the Trademark Act, even in this respect.

Therefore, the judgment 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 Shin Shin-chul (Presiding Justice)