Applicant (Attorney Choi Young-young et al., Counsel for the plaintiff-appellant)

Respondent 1 and 3 others (Law Firm Sang-chul, Attorneys Kim Jong-ho, Counsel for the defendant-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 applicant and the applicant and the non-applicant 1 filed an application for trademark registration of the goods listed in the separate sheet No. 1 (hereinafter “instant trademark”) as designated goods indicated in the separate sheet No. 1 (hereinafter “instant trademark”) and completed the trademark registration on May 25, 2001 (part of the designated goods are applied for on April 25, 2003 and completed the registration thereof on January 25, 2005), and the non-applicant 1 transferred the right to the instant trademark on July 1, 2003 to the applicant.

B. On January 28, 2004, the claimant and the respondent 1 concluded a contract for the use of the trademark of this case for the mother and child produced by the respondent 1 (hereinafter “instant contract”).

2. Summary of the grounds for application;

The Claimant 1 transferred the above right to use the trademark to non-applicant 2 on December 5, 2003 without the consent of the Respondent 1, 2003, and to non-applicant 3 on January 1, 2004. ② On January 20, 2004, the Respondent 1 allowed non-applicant 4 to use the trademark, which is an item not designated under the contract of this case, and made Eitts 850,00,00 where the trademark was attached by the Respondent 4 on May 7, 2004. The Claimant notified the Respondent 1 of the termination of the contract of this case on the ground of the above violation of the contract of this case, and the contract of this case was lawfully terminated, and the Respondent 1 was no longer able to use the trademark of this case, despite the fact that the Respondent 1 supplied the Respondent 2 with the Respondent and sold it through the Respondent 3 and the Respondent 4.

3. Determination

A. Whether the respondent 1 transferred the trademark of this case without permission

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, it is insufficient to prove that the respondent 1 allowed the use of the trademark of this case to non-applicant 4, and even if the respondent 1 allowed non-applicant 4 to manufacture non-designated goods under the contract of this case, it is insufficient to explain that the trust relationship was destroyed to the extent that the respondent 1's above act cannot maintain the contract of this case. Thus, the above assertion by the applicant 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 “egyeball” (hereinafter “the instant work”) which was created by the designer, 5 (English name 1 omitted) of the U.S. DNA network, and the deceased’s towing name omitted (hereinafter “the instant work”).

(B) After the deceased on September 19, 1992, the above deceased and the non-applicant 6 (English name 2 omitted) and the non-applicant 7 (English name 3 omitted) inherited all the rights to the instant work. The above inheritor entered into a license agreement to use the design created by the above deceased, including the instant work, on October 8, 1996, the contract period from October 8, 1996 to October 7, 2005.

(C) On April 1, 1999, the Dan Sast beauty Inc. transferred the above contractual rights to 8 (English name 4 omitted) non-applicants. On June 8, 2005, the non-applicants acquired all rights to the instant copyrighted works, etc. from the deceased’s inheritors who obtained the consent of the non-applicants No. 8 on June 8, 2005.

(D) Meanwhile, the applicant did not obtain any consent on the use of the instant work from the deceased’s heir or Nonparty 4 at the time of the registration of the instant trademark, even thereafter.

(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 a simple 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 to use the trademark of this case cannot use the trademark of this case to the extent that it conflicts 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

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)