[1] Criteria and method for determining similarity of trademarks

[2] In a case where Defendant was prosecuted for violating Party A’s trademark right by selling or displaying for sale goods bearing a pattern similar to the figure trademark, which was applied for trademark registration by the victim Gap, the case holding that the Defendant’s wife’s design registration of the pattern, the circumstance where the Defendant’s wife obtained design registration of the pattern, which is the Defendant’s trademark, constitutes “use of the trademark” and thus does not interfere with the infringement of trademark right

[3] Where a design right is acquired in the form of a design for the purpose of making profits by causing confusion with another person's goods by using a design identical with or similar to a mark indicating another person's goods, whether Article 2 of the Unfair Competition Prevention and Trade Secret Protection Act is excluded pursuant to Article 15 (1) of the same Act (negative)

[4] In a case where Defendant was prosecuted for violating the Unfair Competition Prevention and Trade Secret Protection Act by selling goods bearing a pattern similar to the figure trademark for which victim Gap applied for registration, and thereby causing confusion with Gap's goods or impairing Gap's distinctiveness or reputation of Gap's trademark, the case holding that the circumstance where Defendant and his wife obtained trademark registration of the individual figures constituting the defendant's trademark shall not obstruct the establishment of unfair competition against Gap's trademark due to the use of the entire form of the defendant mark

[1] Whether a trademark is similar or not shall be determined by whether there is a concern for mistake or confusion in trade by observing the compared trademark objectively, comprehensively, and systematically in terms of appearance, name, and concept in terms of appearance. In particular, the appearance of the figure trademarks remains dominant. Thus, if the appearance of the two trademarks are identical or similar and used for the same product as the multiple trademarks, if there is a concern for general consumers to mislead or confuse the origin of the goods, the two trademarks should be deemed similar. In addition, the determination of similarity of trademarks should be made from the perspective of whether there is a concern for misconception or confusion as to the origin of the goods by considering the overall impression, memory, association, etc. inflicted on traders or ordinary consumers by the appearance, name, concept, etc. of the two trademarks, and if there is a concern for misconception or confusion as to the origin of the goods, the two trademarks are similar.

[2] In a case where Defendant was prosecuted on charges of infringing Party A’s trademark right by selling or displaying for sale the bags and land bags attached with Defendant mark of the pattern “,” similar to Party A’s figure trademark “,” which was applied for trademark registration, the case holding that Defendant mark used to take advantage of Party A’s trademark’s customer smoking human resources, etc. was used as trademark to indicate the source of one’s own goods in the real transaction, and barring special circumstances where Party A’s trademark right holder’s permission for the use of the Defendant mark was granted or a trial for granting a non-exclusive license under Article 70 of the Design Protection Act was conducted, the Defendant’s wife may not be deemed as having used the Defendant mark after obtaining the Defendant’s trademark license for the pattern, the Defendant’s wife’s design registration for the Defendant’s shape, which was the Defendant mark, after obtaining the Defendant’s trademark license for the execution of the above design right, does not interfere with the Defendant’s use of the Defendant mark, as it constitutes the use of the trademark as a trademark.

[3] Article 15(1) of the Unfair Competition Prevention and Trade Secret Protection Act (hereinafter “Unfair Competition Prevention Act”) provides that the provisions of other Acts shall not apply to cases where there are provisions different from those of Article 2 of the Unfair Competition Prevention Act, such as the Design Protection Act, but the provisions of other Acts shall apply to the design. However, under the Design Protection Act, a design is an act of unfair competition for the purpose of its registration, and its form, pattern, color, or combination thereof, which causes an aesthetic impression in time (see Article 2 subparag. 1 of the Design Protection Act). The legislative purpose of the Design Protection Act is to promote the creation of a design by promoting the protection and use of such design, thereby contributing to industrial development (see Article 1 of the Design Protection Act). Thus, if a design right is acquired for the purpose of benefit by causing an ordinary consumer to confuse another person's goods with another person's goods using a design identical with or similar to a mark indicating another person's goods widely used in the Republic of Korea, even if it satisfies the right to exercise the right, it cannot be acknowledged as legitimate exercise of the right under Article 15(1) of the Design Protection Act.

[4] In a case where Defendant was prosecuted for violating the Unfair Competition Prevention and Trade Secret Protection Act by selling bags and bags attached with the pattern “,” similar to the figure trademark “,” for which Victim Gap applied for trademark registration, and thereby causing confusion with Party A’s goods or impairing the distinctiveness or reputation of Party A’s trademark, the case holding that, in a case where Defendant’s trademark right based on each of the individual shapes constituting the Defendant mark does not reach the Defendant mark in the entirety form of the Defendant mark, since the above individual diagrams do not reach the Defendant mark in the form of the Defendant mark in which the Defendant and his wife obtained trademark registration on each of the individual shapes constituting the Defendant mark, and the Defendant retains trademark rights on part of the individual shapes constituting the Defendant mark, and the circumstances that Defendant used the Defendant mark with the trademark license for the remaining parts do not obstruct the establishment of an unfair competition act against Party A’s trademark due to the use of the entire form of the Defendant mark

[1] Article 2 (1) 1 of the former Trademark Act (Amended by Act No. 11113, Dec. 2, 201) / [2] Articles 66 (1) 1 and 93 of the Trademark Act; Articles 45 (1) and 70 of the Design Protection Act / [3] Article 2 of the Unfair Competition Prevention and Trade Secret Protection Act; Articles 15 (1) of the former Unfair Competition Prevention and Trade Secret Protection Act (Amended by Act No. 10810, Jun. 30, 201); Articles 1 and 2 subparagraph 1 of the Design Protection Act / [4] Article 2 subparagraph 1 (a) and (c) of the Unfair Competition Prevention and Trade Secret Protection Act; Articles 18 (3) 1 and 18 (1) of the former Unfair Competition Prevention and Trade Secret Protection Act (Amended by Act No. 1081, Jun. 30, 2011)

[1] Supreme Court Decision 98Do2743 delivered on December 26, 2000 (Gong2001Sang, 406) Supreme Court Order 2006Ma805 Delivered on February 26, 2007

Defendant (Defendant prior to the opening of a name)

Defendant

Law Firm Yang Hun-Law, Attorneys Jeong Jong-op et al.

Seoul Western District Court Decision 2010No368 decided November 4, 2010

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

1. Judgment on the first ground for appeal

Whether a trademark is similar or not shall be determined by whether there is a concern for mistake or confusion in trade by observing the trademark compared to the appearance, name, and concept in terms of objective, overall, and different aspects in terms of appearance, name, and concept. In particular, the shape of the figure trademark has a dominant impression. Thus, if the appearance of both trademarks is identical or similar and used for the same kind of product, if there is a concern for general consumers to mislead or confuse the origin of the product, the two trademarks should be deemed similar (see Supreme Court Decision 98Do2743, Dec. 26, 2000, etc.). Further, the determination of similarity of trademarks should be made from the perspective of whether there is a concern for misconception or confusion as to the origin of the product by a trader or general consumers using two trademarks differently from the two trademarks themselves, and if there is concern for misconception or confusion as to the origin of the product as a whole, it should be made from the perspective of whether the two trademarks might cause confusion or confusion as to the origin of the product.

According to the reasoning of the judgment below, the court below determined that the defendant mark and the registered trademark of this case are similar to that of ordinary consumers because each figure constituting the two-dimensional shapes of the defendant's decision [attached Form 2] as "" (hereinafter referred to as "defendant mark") is a brupt, and the diagrams similar to each figure constituting the one pattern pattern trademark (registration No. 1 omitted; hereinafter referred to as "the registered trademark of this case") are similar to the whole composition, arrangement form, and expression method of the figures.

In light of the above legal principles, the above judgment of the court below is just, and there is no error in the misapprehension of legal principles as to the similarity of trademarks as otherwise alleged in the ground of appeal.

In addition, the Supreme Court precedents cited in the grounds of appeal are different from this case, and thus it is inappropriate to invoke this case. This part of the grounds of appeal is without merit.

2. Determination on grounds of appeal Nos. 2, 3, and 4

A. As to the ground of appeal on the relation between the design registration of Defendant mark and the trademark infringement of this case and the violation of the Unfair Competition Prevention and Trade Secret Protection Act (hereinafter “Unfair Competition Prevention Act”).

(1) As to the relation with the violation of the Trademark Act

A design and trademark are not in exclusive or selective relationship, and even if they are shapes or shapes that can be a design, if they can be seen as being used for the purpose of indicating the source of goods of other goods which can be deemed as the essential function of a trademark, the above use shall be deemed as trademark use (see Supreme Court Decision 98Do2743, Dec. 26, 2000, etc.). In order to determine whether they are being used as a trademark, in full view of the relation with the goods, the mode of use of the mark (i.e., the location, size, etc. indicated on the goods, etc.), the well-known and well-knownness of the registered trademark, and the intent and circumstances of use, etc., whether the mark indicated in the actual transaction is being used as a trademark identification mark (see Supreme Court Decision 2002Do3445, Apr. 11, 2003).

However, according to the reasoning of the judgment below and the evidence duly admitted by the court below, ① general consumers can easily see parts of the trademark in appearance, and the location and size of the trademark are determined so that the trademark can be combined with its appearance, taking into account practices identifying the source of the product, and the defendant indicated the trademark on the product. However, the defendant, using the Defendant mark in the form of the Defendant mark combined with the entire composition, arrangement method, and expression method of the trademark of this case, and ② the defendant and his wife used other marks similar to the trademark of this case as the Defendant mark on the 20th day prior to the date of the application of this case, which were widely known to the Defendant 1, 208, 300, 100, 2000, 2000, 1000, 2000, 300,000,000,000,0000,000,000,000,000).

Examining this in light of the aforementioned legal principles, the Defendant appears to have used the Defendant mark with the intent to take advantage of the customer smoking manpower, etc. of the instant registered trademark, and the said mark used by the Defendant is deemed to have been used to indicate the source of goods from the real transactional world, and thus, the Defendant mark was used as trademark. In addition, Article 45(1) of the Design Protection Act provides that “Where the registered design is either used another person’s registered trademark applied prior to the filing date of the application for design registration or the design right conflicts with the other person’s trademark right applied prior to the filing date of the application for design registration, the owner of the design right, exclusive or non-exclusive licensee may not work his registered design as a business without the permission of the owner of the trademark right or without the non-exclusive license granted under Article 70, unless there is any circumstance to deem that the use of the Defendant mark was permitted by the victim who is the trademark right holder of the instant registered trademark, or that the non-exclusive license granted under Article 70 of the Design Protection Act was used in relation to the use of the Defendant mark prior to the application date.

(2) Regarding relation to the violation of the Unfair Competition Prevention Act

Article 15(1) of the Unfair Competition Prevention Act provides that the provisions of other Acts shall not apply to cases where there are provisions different from those of Article 2 of the Unfair Competition Prevention Act, such as the Design Protection Act. However, the design under the Design Protection Act is a form, pattern, color or combination thereof, which causes aesthetic sense through visual view (see Article 2 subparag. 1 of the Design Protection Act). The legislative purpose of the Design Protection Act is to promote the creation of a design and contribute to industrial development by promoting the protection and use of such design (see Article 1 of the Design Protection Act). Thus, it is not for the protection of one’s design which causes aesthetic impression in the design registration of a design. If a design right is acquired in the form of a design for the purpose of causing confusion with another’s goods using a design that is widely recognized in the Republic of Korea, which is identical or similar to a design indicating another’s goods, and if it is intended to use it as an unfair competition act, even if it is satisfied with the exercise of a right to exercise domestic affairs, it cannot be recognized as legitimate exercise of the right under the Design Protection Act.

However, as seen earlier, the Defendant mark was used as a trademark, and in full view of the similarity between the Defendant mark and the instant registered trademark, well-known and well-knownness of the instant registered trademark, and the circumstances in which Nonindicted Party 1 obtained design registration of the pattern that is the Defendant mark, Nonindicted Party 1’s design registration for the pattern, which is the Defendant mark, constitutes a case where the design registration for the pattern, which is the Defendant mark, was acquired by ordinary consumers for the purpose of causing confusion with the goods using the above pattern, rather than for the protection of one’s design, and thus, it is reasonable to deem that the design registration application itself was for the purpose of unfair competition.

Therefore, even if there is room to view that the defendant used the defendant mark with the permission to use the above design right, it would be abuse or abuse the Design Protection Act, and it would not be recognized as a legitimate exercise of the right under the Design Protection Act. Such circumstance does not obstruct the establishment of unfair competition acts under the Unfair Competition Prevention Act due to the use of the defendant mark.

B. As to the grounds of appeal on the trademark registration of the individual diagrams constituting the Defendant mark and the relation between the trademark infringement of this case and the Unfair Competition Prevention Act

Examining the record, the Defendant and Nonindicted Party 1, prior to the instant criminal facts, obtained trademark registration by dividing the individual diagrams consisting of the Defendant mark “” with handbags, etc. as designated goods, and the individual diagrams somewhat modified therefrom into “” (registration No. 3 omitted), “” (registration No. 4 omitted), “” (registration No. 5 omitted), “” (registration No. 6 omitted), and “” (registration No. 7 omitted), respectively. The Defendant mark was made by combining the aforementioned individual diagrams with the trademark arranged on a regular basis at regular intervals.

However, as seen earlier, considering the practice of distinguishing the source of the goods by ordinary consumers from the door or on the wall, the Defendant indicated the above individual diagrams on the outside of the Defendant mark using the Defendant mark at regular and repeated intervals or on the outside of the wall products in the form of the Defendant mark which arranged the trademark regularly and repeatedly. In such a case, the entire form of the Defendant mark in which the above individual diagrams are combined shall be deemed to have a separate distinctive character indicating the source of the other goods. In addition, in this case, the Defendant is liable for trademark infringement and unfair competition against the use of the Defendant mark in the whole form of the Defendant mark in which the above individual diagrams are combined, not the use of the Defendant mark, but the use of the trademark in the form of the Defendant mark in which the above individual diagrams are combined, and thus, the right to use the trademark based on the above individual figure does not extend to the Defendant mark in the above whole form. Thus, although the Defendant and Nonindicted Party 1 obtained trademark registration on the individual shapes constituting the Defendant mark by dividing them as above, and even if the use of the trademark in this case constitutes an infringement of the trademark rights.

Although the reasoning of the lower court on this part is somewhat inappropriate, it is justifiable in its conclusion that the existence of separate trademark rights on the above individual diagrams does not obstruct the establishment of trademark infringement and unfair competitive acts against the trademark of this case.

C. As to the ground of appeal on the perception of intention and illegality

First, as seen earlier, in light of the fact that Nonindicted 1 appears to have used the shape of the Defendant mark for which the design registration was granted by Nonindicted 1 was intended to take advantage of the customer attraction of the instant registered trademark, and that the Defendant combines Nonindicted 1’s registered trademarks with the Defendant mark in the form of the Defendant mark and uses them as a separate distinctive mark, the circumstance that Nonindicted 1 obtained design registration for the pattern, which is the Defendant mark, and that the Defendant and Nonindicted 1 obtained trademark registration for the individual figures constituting the Defendant mark by dividing the individual figures constituting the Defendant mark, respectively, does not constitute a violation of the Trademark Act or the Unfair Competition Prevention Act, or there is no justifiable reason to deem that the Defendant did not intend to commit a violation of the Trademark Act or the Unfair Competition Prevention Act, or that the Defendant believed

In addition, as alleged by the defendant, even though the defendant affixed the trademark that is not similar to the trademark of this case to the product in which the defendant used the defendant mark in addition to the use of the defendant mark, in light of the fact that the defendant mark similar to the trademark of this case was indicated on the outside of the product where the defendant mark was used, the circumstance of the defendant's assertion that the defendant attached the trademark in the form of the trademark of this case together with another trademark is not sufficient grounds to deem that the defendant did not have any intention to violate the Trademark Act or the Unfair Competition Prevention Act, or that the defendant believed that his act does not constitute a violation of the Trademark Act or the Unfair

In addition, according to the records, the non-indicteds who supplied bags from the defendant and sold them are aware of the fact that the prosecutor's disposition was issued to the effect that there is insufficient evidence to acknowledge their intention as to the non-indicteds' violation of the Trademark Act and the Unfair Competition Prevention Act, but such circumstance also does not constitute a justifiable reason to believe that the defendant did not intend to violate the Trademark Act or the Unfair Competition Prevention Act, or that the defendant's act does not constitute a violation of the Trademark Act or the Unfair Competition Prevention Act.

D. Sub-committee

Ultimately, the lower court did not err by misapprehending the legal principles as to design registration and trademark registration and trademark infringement and the violation of the Trademark Act and the Unfair Competition Prevention Act, and intentional and unlawful recognition, as otherwise alleged in the ground of appeal. The ground of appeal

3. Determination ex officio

The court below found all of the charges of violating the Trademark Act and the Unfair Competition Prevention Act as guilty, and found that each of these crimes is concurrent crimes under the former part of Article 37 of the Criminal Act.

However, each of the above facts constituting a violation of the Trademark Act that "the defendant sold bags and bags with the Defendant mark attached with the Defendant mark similar to the trademark of the victim from early May 2009 to October 23, 2009, and infringed the victim's trademark right by displaying them for sale", and a violation of the Unfair Competition Prevention Act that "the defendant sold bags and bags to cause confusion with the products of the victim or damaged the distinguishingness or reputation of the trademark of this case by selling them as above," there is room to regard the violation of the Unfair Competition Prevention Act as a selective indictment as "an act causing confusion with the products of the victim" or "an act damaging the distinguishness or reputation of the trademark of this case". Thus, even if each of the above crimes is established, it is reasonable to view that one of the above crimes constitutes a commercial concurrence relationship under Article 40 of the Criminal Act, which constitutes several crimes, and therefore, the court below did not err in interpreting and applying any Act or subordinate statute otherwise.

4. Therefore, the lower judgment is reversed, and the case is remanded to the lower court for further proceedings consistent with this Opinion. It is so decided as per Disposition by the assent of all participating Justices on the bench.

Justices Kim Shin (Presiding Justice)