Defendant 1 and one other

Prosecutor

Kim Chang-Dil (Court) and Yang Jong-chul (Court of Justice)

Seoul Central District Court Decision 2017 High Court Decision 2756 Decided May 9, 2018

The judgment of the court below is reversed.

Defendants shall be punished by a fine of three million won.

When Defendant 1 fails to pay the above fine, the above defendant shall be confined in a workhouse for the period calculated by converting KRW 100,000 into one day.

To order the Defendants to pay an amount equivalent to the above fines.

1. Facts charged;

Defendant 1 is the representative director of Defendant 2. The victim Nonindicted Co., Ltd. (hereinafter “victim Co., Ltd.”) is a corporation established for the purpose of manufacturing and selling medical devices.

A. Defendant 1

No one shall use any trademark identical or similar to another person's registered trademark on goods identical or similar to the designated goods.

Nevertheless, from June 2016 to July 31, 2017, the Defendant, at the office of Defendant 2 located in Gangnam-gu, Seoul (location omitted), infringed the victim’s trademark right by attaching “”, “trademark” (registration number 1 omitted, registration number 2 omitted, hereinafter “registered trademark”) similar to the instant trademark Nos. 1 and 2 omitted, and “each infringed trademark” in the order of the victim’s trademark registered with the Korean Intellectual Property Office on September 25, 2013 at the office of Defendant 2, which is located in Gangnam-gu, Seoul (location omitted) and selling “the trademark of this case” in the instant case, at the Co., Ltd., the goods identical to the designated goods, thereby infringing the victim’s trademark right.

B. Defendant 2

Defendant 1’s representative director of Defendant 2 (hereinafter “Defendant Company”) infringed on the trademark rights of the victim company in violation of the above Acts and subordinate statutes regarding the business of the victim company at the time set forth in the preceding paragraph.

2. The judgment of the court below

The lower court acquitted each of the Defendants on the ground that it is difficult to conclude that the evidence presented by the prosecutor alone is a trademark right protected under the Trademark Act and that each of the instant trademarks is invalid by the invalidation trial, or that Defendant 1 had an intention to infringe on the trademark right of the victim, on the grounds that it was not clear that each of the instant trademarks is a trademark protected under the Trademark Act, or that there was an intentional infringement on the trademark right of the victim, on January 24, 2018.

3. Summary of the grounds for appeal;

In addition, each of the trademarks of this case is protected under the Trademark Act, and it does not constitute a case where it is evident that the trademark registration will be invalidated by an invalidation trial, and there was an intention of infringement on the trademark right to Defendant 1.

4. Judgment of the court below

Comprehensively taking account of the evidence duly adopted and examined by the lower court and the trial court, ① Defendant Company requested a trial on invalidation of the trademark registration of the first instance on June 8, 2017 (see, e.g., Supreme Court Decision 2017Da1741), and the Intellectual Property Tribunal rendered a trial decision that the trademark registration of the first instance of the victim Company should be invalidated on January 24, 2018, and the reason for such decision is as follows: (a) the first registered trademark of this case constitutes “trademark consisting solely of the mark indicated in terms of quality, efficacy, and usage of the designated goods” under Article 6(1)3 of the former Trademark Act (wholly amended by Act No. 1403, Feb. 29, 2016; hereinafter the same shall apply) and thus, it cannot be deemed that the Defendants were aware that the designated goods of this case were identical to the designated goods of the Intellectual Property Tribunal under Article 6(2)1 of the former Trademark Act at the time of the trial decision of the Intellectual Property Tribunal.

According to the above facts, it is not clear that each of the trademarks of this case is invalid by the invalidation trial, as it is protected by the Trademark Act at the time when the trademark right of the victim was infringed by Defendant 1 by attaching each of the trademark of this case to the co-site and selling it in the Internet shopping mall, etc.

Furthermore, it can be recognized by the evidence duly adopted and examined by the lower court and the trial court, namely, Defendant 1’s establishment of the Defendant Company around March 2015 and started to produce and sell the cococococopy with the trademark of this case, while the victim company, from April 2006 to April 2006, comprehensively taking into account the fact that the trademark of this case was used for the first registered trademark of this case, the infringement of Defendant 1’s trademark right can be sufficiently recognized.

Therefore, the judgment of the court below which acquitted the charged facts of this case is erroneous in misconception of facts. The prosecutor's assertion is justified.

5. Conclusion

Therefore, since the prosecutor's appeal is well-grounded, the judgment of the court below is reversed in accordance with Article 364 (6) of the Criminal Procedure Act, and it is again decided as follows.

Punishment of the crime

The provisions of paragraph (1) shall apply.

Summary of Evidence

1. Each legal statement made by the defendant in the original judgment and the trial court;

1. Statement on Nonindicted 2’s statement

1. Written complaint, each original trademark register (No. 5 and 6 of the evidence list), content certification (no. 11 of the evidence list), written judgments (No. 24 of the evidence list);

Application of Statutes

1. Article relevant to the facts constituting an offense and the selection of punishment;

Defendant 1: Article 230 of the Trademark Act; Selection of fines

Defendant Company: Articles 230 and 235 subparag. 1 of the Trademark Act

1. Detention in a workhouse;

Defendant 1: Articles 70(1) and 69(2) of the Criminal Act

1. Order of provisional payment;

Defendants: Article 334(1) of the Criminal Procedure Act

Judges Lee Dong-soo (Presiding Judge)