Requirements to accept the application for provisional injunction against infringement of trademark

Article 65(1) of the Trademark Act; Article 300(2) of the Civil Execution Act

Applicant (Law Firm Lowal, Attorney Kim Dong-op, Counsel for defendant-appellant)

[Defendant-Appellee] Korea T&M Co., Ltd. (Attorneys Lee Im-soo and three others, Counsel for defendant-appellee)

Seoul High Court Order 2005Ra139 dated August 31, 2005

The reappeal is dismissed.

The grounds of reappeal are examined.

A trademark right holder may claim prohibition or prevention of infringement against a person who infringes or is likely to infringe a trademark right under Article 65 (1) of the Trademark Act, and if there are other necessary reasons to avoid substantial damage or prevent imminent danger, it is possible to claim a provisional disposition that determines a temporary position under Article 300 (2) of the Civil Execution Act in the form of a provisional disposition. However, in order to accept such provisional disposition application, the respondent has committed an infringement using a trademark identical or similar to the applicant's registered trademark on the goods identical or similar to the designated goods, or has yet to do so, or there is a specific fact that it is highly probable that such infringement has not yet occurred but is likely to occur, and further, the right to be preserved should be acknowledged if the court deems it necessary to preserve the trademark when considering the purpose of the provisional disposition.

In full view of the adopted evidence, the court below acknowledged that the applicant’s registered trademark of this case (No. 383612) of this case, which is the designated goods of the automobile luminous system, is written as "IMFAL" and is written as "IMFAL" in Korean, and the trademark attached to the automobile luminous system (hereinafter referred to as "infringe trademark") which the respondent imported from the United States and sold from the United States, is also written as "3M" with the word "3M," and thus, the respondent does not release the registered trademark of this case, if the applicant requests the respondent to suspend the use of the trademark, and the respondent notified the respondent that the trademark attached the infringing trademark will not be sold in Korea, and then the respondent does not release the trademark, and thus, the registered trademark of this case and the infringed trademark of this case are not likely to mislead or confuse because the part of "3M" among the infringed trademarks is widely known, and dismissed the application for prohibition of provisional injunction on the ground that the above facts do not recognize the necessity to preserve the trademark.

The registered trademark of this case and the infringed trademark of this case are different in their overall appearance from each other, but can be separately observed only from each other. Even if there are circumstances widely known in the part of "3M" among infringed trademarks, considering the meaning and contents of "13M" part, and combination with "3M" part, it cannot be said that the part "1" part "3M" is weak or that it does not disregard its distinctiveness, or that it does not bring about attention to consumers (see Supreme Court Decision 2005Hu134, Nov. 9, 2006). Thus, even if the trademark attached to part of goods imported and sold by the respondent is more and more obvious than the "3M" part, the registered trademark of this case and the infringed trademark of this case are similar to the trademark of this case, and the court below's reasoning is inappropriate, in light of the above legal principles and records, it is difficult to see that the respondent's request for provisional injunction against infringement of the trademark right of this case is not sufficient to acknowledge that the trademark of this case is not infringed upon the respondent's right to use of the trademark of this case.

Therefore, the reappeal is dismissed. It is so decided as per Disposition by the assent of all participating Justices on the bench.

Justices Kim Nung-hwan (Presiding Justice)