Whether a person who asserts an unfair competition act under Article 2 subparagraph 1 (c) of the Unfair Competition Prevention and Trade Secret Protection Act should separately assert and prove the outcome or possibility of damaging his/her distinctiveness or reputation (affirmative)

Article 2 subparag. 1 (c) of the Unfair Competition Prevention and Trade Secret Protection Act regulates the act of "damageing the distinctiveness or reputation of another person" by using a mark identical or similar to a mark indicating another person's goods or business. Thus, in order to constitute an unfair competition act, the occurrence of simple abstract risk alone is insufficient, and even if the specific result of impairing the distinctiveness or reputation is objectively exist or is not so high, such possibility is extremely high. Thus, the outcome or possibility of damaging the distinctiveness or reputation of another person's mark should not be presumed, on the ground that the use of a mark was a fact using a product mark or business mark identical or similar to a famous trademark, and the use of the mark is not the result or possibility of damaging the distinctiveness or reputation of the other person's mark, but the claim that the use of the mark constitutes an unfair competition act should be asserted and proved separately as to the result or possibility of actually damaging the distinctiveness or reputation of the mark.

Article 2 subparagraph 1 (c) of the Unfair Competition Prevention and Trade Secret Protection Act

Burri Liber (Attorney Cho Tae-tae, Counsel for the plaintiff-appellant)

Defendant (Attorney Yu Byung-jin, Counsel for the defendant-appellant)

December 4, 2009

1. All of the plaintiff's claims are dismissed.

2. The costs of lawsuit shall be borne by the Plaintiff.

1. The defendant shall not use the marks listed in the attached Form 1. On the sing business or advertisement thereof.

2. The defendant shall pay to the plaintiff 20 million won with 20% interest per annum from the day after the delivery date of the copy of the complaint of this case to the day of complete payment.

1. Facts of recognition;

A. Registration and well-knownness of the Plaintiff’s trademark

(1) Since its establishment in the United Kingdom in 1856 under the Thoma Burberry, the Plaintiff is a company that mainly manufactures and sells clothes, bags, and other fashion-related products so far, and is a trademark right holder for the registered trademark indicated in attached Tables 2 through 7 (hereinafter “Plaintiff’s registered trademark”) and is using “BURBERY” or “BUBERY” or “Bru” as its Korean translitor, in relation to its products, business activities, etc.

(2) The Plaintiff has 60 stores in Korea, and the annual sales of the Plaintiff’s domestic subsidiary company, which is the Plaintiff’s domestic subsidiary company that imports and sells the Plaintiff’s product, are KRW 106.5 billion in 205, KRW 117 billion in 2006, KRW 130.9 billion in 2007. The Plaintiff’s registered trademark has been frequently used as a foreign-known trademark that is frequently stolen to “domestic and foreign trademark house which is stolen by liquor” issued by the Korean Intellectual Property Office every year.

(3) In the case of search as of July 31, 2009, 596 items on the website of the Korean Economic Newspapers, 861 items on the website of the Korean Economic Newspapers, 718 items on the central website, and 296 items on the plaintiff-related articles on the website of the Dong Daily Daily.

(4) As such, “BURBE” and “BBERY”, which are the Plaintiff’s registered trademark, were widely known to the general public in Korea as a product label for products manufactured and sold by the Plaintiff.

B. The defendant's business activities such as "brusing"

The Defendant, from November 2003 to April 200, set up an external signboard on which the Defendant used the word “bersing” at four places on the ground (hereinafter omitted) and run the singing room (hereinafter “instant singing room”) with the trade name “bersing” (hereinafter “instant singing room”). (Although the Defendant asserts that the instant singing room was no longer operated directly, it is insufficient to recognize the Defendant’s assertion that the entry of the document No. 3 alone is insufficient, and there is no other evidence to acknowledge it).

[Ground for Recognition: Facts without dispute; Gap evidence 1-1-2, Gap evidence 2-1 through 5, Gap evidence 3-1-6, Gap evidence 4-1 through 4, Gap evidence 5-1, 2, Gap evidence 6-1, 2, Gap evidence 7-1, 2-2, Gap evidence 8-1, 9-1 through 6, Gap evidence 10-1-1 through 11, Gap evidence 12-1-3, and the purport of whole pleadings]

2. The plaintiff's assertion

A. The defendant is running a singing business by using the mark "bering" identical or similar to the plaintiff's registered trademark, which is well known to the plaintiff's well-known goods mark, which constitutes an unfair competition act under Article 2 subparagraph 1 (c) of the Unfair Competition Prevention and Trade Secret Protection Act (hereinafter "Unfair Competition Prevention Act").

B. Therefore, the Defendant is entitled to: (i) the prohibition of use of each mark listed in the separate sheet No. 1 as a claim for prohibition of infringement and prevention; (ii) the claim for damages amounting to KRW 20,000,000 as a claim for damages; and

3. Determination as to the establishment of an unfair competitive act

A. Requirements for establishing unfair competitive acts

Article 2 subparag. 1 (c) of the Unfair Competition Prevention Act provides that "the act of impairing the distinctiveness or reputation of another person's mark by using the same or similar goods as the name, trade name, trademark, goods' container or package, or any other goods widely known in the Republic of Korea without justifiable grounds prescribed by Presidential Decree, such as non-commercial use, or by selling, distributing, importing, and exporting goods using such goods, shall be classified as an act of unfair competition." Thus, an act of impairing the distinctiveness or reputation of another person's mark shall be classified as one type of unfair competition."

B. Determination as to the well-knownness of goods marks or business marks

Article 2 subparag. 1 (c) of the Unfair Competition Prevention Act is a provision newly established under the Unfair Competition Prevention Act that was enforced on July 10, 2001. In addition to the act of causing confusion under subparagraph (a) or (b) of the same subparagraph, Article 2 subparag. 1 (c) of the Unfair Competition Prevention Act provides that "the act of using another person's name, trade name, trademark, containers and packages of goods, and other goods identical or similar to the other person's goods or business mark widely known in the Republic of Korea without justifiable grounds prescribed by Presidential Decree, such as non-commercial use, or selling, distributing, importing, or exporting goods using such goods, thereby impairing the distinctiveness or reputation of another person's mark" as an unfair competition act. In light of the legislative intent and its legislative process, it is reasonable to interpret the term "the term "public recognition in the Republic of Korea" used under the above provision to mean "the degree of well-knownness beyond the extent of the principal place" (see Supreme Court Decision 2002Da13782 delivered on May

However, according to the above facts, the plaintiff's registered trademark seems to have reached the degree of well-knownness beyond the degree of well-known recognition.

C. Determination on the same or similar nature of the Plaintiff’s trade name and the Defendant’s registered trademark

(1) As seen earlier, the Plaintiff’s use of the above registered trademark as a trademark right holder of “BURRY” and its Korean language music station for goods manufactured and sold by the Plaintiff as a trademark right holder of the Plaintiff’s trademark right is identical to the Plaintiff’s registered trademark, and the Defendant’s trade name consists of two words “Bruri” and “Bruri” but can not be said to create a new concept due to the combination, and thus, it can be separately observed and observed. Of the composition, “Bruri” portion is merely a type of business of the Defendant, and thus, is not distinctive. Therefore, the remainder “Bruri” portion is deemed as a part of the Defendant’s trade name. Thus, the Plaintiff’s registered trademark and the Defendant’s trade name are identical to the part of the Plaintiff’s registered trademark. In addition, even if the overall observation is made, the Defendant’s trademark and the Defendant’s trade name were added only to only the part “Nruri, name, and concept, and thus, are similar to the Plaintiff’s registered trademark and the Defendant’s trade name.

(2) In regard to this, the Defendant asserts that the Defendant’s trade name, “Burry” refers to a singing room, where persons suffering from mits, mits, and mits, are used as a mits, and the Defendant’s registered trademark and the Defendant’s trade name are not identical or similar to the Plaintiff’s registered trademark, since there is no possibility that the Plaintiff and the Defendant’s business type may cause confusion to consumers because they may cause confusion with each other.

However, Article 2 subparagraph 1 (c) of the Unfair Competition Prevention Act permits the free use of a well-known trademark on non-similar products unless there is a risk of confusion with the well-known trademark so far. Considering that the image and credit of a well-known trademark, customer attraction personnel, etc. could not prevent the spread and weakness of the well-known trademark on various goods, it does not require confusion unlike subparagraph 1 (a) and (b) of the same Article. Since there is no possibility of confusion, the plaintiff's registered trademark and the defendant's argument that the trade name is not identical or similar to the plaintiff's registered trademark are without merit.

Comprehensively taking account of the purport of the entire arguments in the statement in the statement in subparagraph 4-1 through 5 of the evidence Nos. 4-5, “Burri” may be acknowledged as being used as a mitt, mitt, or mitt, in Gangwon-do, Gyeongdo, Jeju-do, and Chungcheongbuk-do. However, the above facts alone are insufficient to recognize that “Burri” used by the Defendant in his trade name is a mitt, different from the Plaintiff’s registered trademark, and there is no other evidence to acknowledge it. The Defendant’s assertion on this part

D. Determination as to damage to distinctiveness or reputation

An act of impairing "identification" under Article 2 subparagraph 1 (c) of the Unfair Competition Prevention Act shall be interpreted to mean that a mark widely known to be used in connection with a specific product is damaged by using it in a product other than the specific product (see Supreme Court Decision 2002Da13782 delivered on May 14, 2004).

However, Article 2 subparagraph 1 (c) of the Unfair Competition Prevention Act regulates the act of "damage" as an act constituting an unfair competition act by using a mark identical or similar to a mark indicating another person's goods or business. Thus, in order to establish an unfair competition act under Article 2 subparagraph 1 (c) of the Unfair Competition Prevention Act, the occurrence of simple abstract risk alone is insufficient, and even if the specific result of damaging distinctiveness or reputation is not objectively exist or is not so high, it should not be done unless it is extremely high. (See Seoul High Court Decision 2002Na73700 delivered on December 17, 2003.) The plaintiff appealed against the above judgment, but the plaintiff appealed against the above judgment, but it should be argued that the result or possibility of damaging other person's mark's distinctiveness or reputation, or that the use of the mark in question constitutes an unfair competition act or its reputation.

As seen earlier, the Defendant used the Plaintiff’s registered trademark as a trade name. However, the above recognition alone is insufficient to recognize the outcome or possibility of impairing the Plaintiff’s distinctiveness or reputation of the Plaintiff’s registered trademark, and there is no other evidence to acknowledge it. The Plaintiff’s assertion that the Defendant’s use of the Plaintiff’s registered trademark as a trade name constitutes an unfair competition act is without merit.

4. Conclusion

Therefore, on the premise that the Defendant’s use of the Plaintiff’s registered trademark as a trade name constitutes an unfair competitive act, the Plaintiff’s claim of this case is without merit, and it is all dismissed. It is so decided as per Disposition

[Attachment 1, 2, 3, 4, 5, 6, 7]

Judges Yoon Jae-sung (Presiding Judge)