[1] Criteria for determining whether an act constitutes an act of using a similar trademark, which is an infringement of trademark right

[2] In a case where Gap corporation, which is a holder of trademark right of " "", "", and "", which are registered trademark of golf products, etc. as designated goods, sought injunction against infringement of trademark rights against Eul corporation, etc. that sells golf products, etc. using the trademark " " "," "," "," "," "," and " ", the case holding that the mark used by Eul corporation, etc., in light of all the circumstances, is likely to cause misconception and confusion about the source, since it is used together for designated goods identical or similar to the registered trademark of Gap corporation, etc.

[1] Article 66(1)1 (see current Article 108(1)1) of the former Trademark Act (wholly amended by Act No. 14033, Feb. 29, 2016) / [2] Article 65 (see current Article 107) and Article 66(1)1 (see current Article 108(1)1) of the former Trademark Act (wholly amended by Act No. 1403, Feb. 29, 2016)

[1] Supreme Court Decision 2014Da216522 Decided October 15, 2015 (Gong2015Ha, 1663)

M-sports Co., Ltd. (Bae, Kim & Lee LLC, Attorneys After Dong-dong et al., Counsel for the plaintiff-appellant)

M&C Co., Ltd. and one other (Attorneys Lee Full-time et al., Counsel for the plaintiff-appellant)

Seoul High Court Decision 2013Na33593 decided January 23, 2014

Of the judgment of the court below, the part 1 to 5 indicated in the Defendant mark column of the attached Table 1 shall be reversed, and this part of the case shall be remanded to the Seoul High Court. The remaining appeals shall be dismissed.

The grounds of appeal are examined.

1. As to the part 1 to 5 of the defendant mark column in the annexed Table 1 in the original adjudication

A. An act of using a trademark identical with or similar to another person’s registered trademark on goods identical with or similar to the designated goods constitutes an infringement on trademark rights. Determination as to whether an act of using a similar trademark constitutes an act of using the trademark ought to be made from the perspective of whether general consumers whose place differs from two times and places are likely to mislead or confuse the origin of goods, when comprehensively considering the impression, memory, association, etc. offered to ordinary consumers by means of appearance, name, concept, etc. based on the transaction circumstances of the relevant goods (see Supreme Court Decision 2014Da216522, Oct. 15, 2015).

A person shall be appointed.

B. After finding the facts as stated in its reasoning, the lower court determined that, in comparison with the original adjudication consisting of parts 1 through 5 in the Defendant mark column of the attached Table 1 (hereinafter “Defendant 1 to 5”) and the Plaintiff’s registered trademark in the attached list 1 to the original adjudication (hereinafter “Plaintiff 1, 2 registered trademark”), the parts of Defendant 1 to 4 used trademarks and the “SPPOTRS” among the Plaintiff 1 registered trademarks are deemed to be “mU” and “MU” and the parts of each of the above marks are not distinctive, and that the Defendant 5 used trademarks and the Plaintiff 2 registered trademarks are deemed to be the essential parts of each mark, and that the essential parts of the Defendant 1 through 5 used trademarks are referred to as “MS” or “M”, it is difficult to see that there is no possibility of confusion between the Plaintiff 1 to 2, as the “registered trademark” and the Plaintiff 1’s appearance or 5’s appearance, and thus, they cannot be seen to have been similar to the appearance of the Defendant 1’s text or 1.

C. However, we cannot accept the judgment of the court below for the following reasons.

1) Review of the reasoning of the lower judgment and the reasoning of the first instance judgment reveals the following circumstances.

가) 원고는 원심판시 별지 1 목록 원고 등록상표란 기재 각 등록상표의 상표권자이다. 원고는 1996. 12. 26. 설립된 이래 일본의 의류디자이너 미에꼬 우에사꼬의 ‘MIEKO UESAKO SPORTS' 관련 상표 등을 사용한 골프의류 및 골프용품 관련 사업을 국내에서 단독으로 수행하면서 그중 의류상품은 위 디자이너가 부사장으로 있는 일본의 가부시키가이샤 쭈안도안으로부터 수입하여 국내에서 판매하고, 의류를 제외한 나머지 골프용품은 원고 등록상표를 비롯한 다수의 관련 상표가 부착된 상품을 생산하여 국내에서 판매함과 동시에 가부시키가이샤 쭈안도안을 통해 일본에 수출하였다.

B) Since the establishment of the Plaintiff, the articles that introduce the products, such as golf products, sold by the Plaintiff in golf-specialized magazines or newspapers, etc. have been continuously displayed. In the magazines or newspapers, the Plaintiff’s trade name or the trademark of the products was indicated or expressed “M.U.S.S. Korea, MU.S. Korea, MU. Korea, MU. Korea, MU. Sports Korea, M.U.S.S, MU.S, MU.S, sports, MU. sports, MU.S, MU. sports, MU. US report, M.USTRS, M.U.S, M.U.S, MUPS, MUPOTRTSS, etc.”

C) While selling golf products, the Plaintiff omitted diagrams from “”, which is the Plaintiff’s registered trademark, or changed letters into a unique shape by reducing the size of figures and parts of letters and changing letters into a unique shape, while displaying letters in vertical or street, or using modified marks by changing figures and letters into two lines while displaying letters and changing figures and letters with two lines.

D) On June 18, 2009, the Plaintiff entered into a contract with Defendant MPC Co., Ltd. (hereinafter “Defendant Company”) on the transfer of some of the trademark rights (Class 25 products mainly consisting of golf kinds, etc. as designated goods), exclusive license, department store operating rights, and store equipment, clothing inventory goods.

E) After the Plaintiff entered into a transfer contract with the Defendant Company, the Plaintiff supplied the Defendant Company with golf products, such as carbags. However, in 2010, after a dispute over the supply price of golf products supplied by the Plaintiff between the Defendant Company and the minimum purchase volume, the Plaintiff mainly sells golf products by supplying them to a general golf product store other than the department store.

F) Meanwhile, in around 2011, the Defendant Company supplied golf products with golf products, such as white bags, Bostons, air bags for glargs, and golf straws, manufactured with each of the marks indicated in the “Defendant-Use Mark” in the attached Table 1, from the Defendant’s stable realization, which manufactured and sold golf products with the trade name “S&D sports,” and sold golf products from the Defendant’s stable realization at stores selling golf products with the trademark transferred from the Plaintiff.

2) We examine the aforementioned circumstances in light of the aforementioned legal doctrine.

A) Although Alphababa is a design, it seems that the extent of the design does not reach the degree of offsetting and absorbing the concept of the text drawing the general consumer’s special attention. Moreover, among the marks of Plaintiffs 1 and 2, M and U among the marks of the Plaintiff 1 and 2, are English initials of the U.S. U.S. U.S., a Japanese designer, but it is difficult for ordinary consumers to see that the trademark can be carried directly by reporting it, the Plaintiff 1 and 2 registered trademark itself does not have any special concept, and it merely appears to be a combination of the m, s, and C parts of the marks using the Defendant 1 through 5, and there is no special concept as the combination of the phabababa, the meaning of which cannot be known.

B) Further, the Plaintiff’s 1 and 2 registered trademark appears to have obtained a certain degree of authorization through continuous advertisements, etc. after the Plaintiff was established. In full view of the fact that the portion of “s” in Defendant 1 through 5 used trademarks is relatively small compared to “m” and “u,” such as “m” and “u” are emphasized, and it appears to have been modified similar to Plaintiff 1 and 2 registered trademark, and that the Defendant Company sells the golf products with the Defendant mark attached at the store selling the golf products with the trademark transferred from the Plaintiff. In full view of the fact that the Defendant Company sells the golf products with the Defendant mark at the store selling the golf products with the trademark transferred from the Plaintiff, the detailed part of the trademark is difficult to understand the difference between “M” and “mu,” or “M,U/S” and “mu” as observation order, such as Alphaba, etc.

C) Therefore, Defendant 1 or 5’s mark is likely to cause mistake or confusion as to its source if it is used together on designated goods identical or similar to Plaintiff 1 or 2’s registered trademark, and thus, it should be deemed as a trademark as a whole similar to one another.

D. Nevertheless, the court below erred by misapprehending the legal principles as to the similarity of trademarks with the Plaintiff 1 and 2, thereby adversely affecting the conclusion of the judgment. The ground of appeal assigning this error is with merit.

2. As to the part 8 to 10 of the Defendant mark column in the attached Table 1 of the original adjudication

The lower court determined that Defendant 8 through 10-use marks and Plaintiff 3-registered trademarks do not constitute infringement of the trademark right or unfair competition since they cannot be deemed as similar marks because they were perceived as different trademarks even in cases where they are observed differently from their dominant appearance.

Examining in light of the relevant legal principles, the lower court did not err in its determination by misapprehending the legal doctrine regarding the determination of similarity of trademarks or goods marks, or by exceeding the bounds of the principle of free evaluation of evidence, contrary to what is alleged in the grounds of appeal. In addition, insofar as the lower court did not err by misapprehending the legal doctrine regarding the determination of similarity of goods marks, the legitimacy of the allegation in the grounds of appeal, such as that there was a misapprehension of the legal doctrine regarding the determination of similarity of goods marks, cannot be affected by the conclusion of the judgment. Therefore, the ground of appeal

3. Conclusion

The instant claim is a selective combination of claims under the Trademark Act and claims under the Unfair Competition Prevention and Trade Secret Protection Act by Defendant mark. However, as seen above, the lower court did not err by misapprehending the legal doctrine as to Defendant 8 or 10-use trademarks, but did not constitute trademark infringement because Defendant 1 or 5-use trademarks are not similar to the Plaintiff 1 or 2-registered trademarks. In so determining, the lower court erred by misapprehending the legal doctrine on the trademark infringement.

Therefore, the part of the judgment below dismissing the Plaintiff’s claim against Defendant 1 through 5 is reversed, and that part of the case is remanded to the court below for a new trial and determination. The appeal regarding Defendant 8 through 10-use marks is dismissed. It is so decided as per Disposition by the assent of all participating Justices on the bench.

Justices Park Poe-dae (Presiding Justice)