Hadd Co., Ltd. (Attorney Lee Jae-soo, Counsel for the plaintiff-appellant)

Had Co., Ltd. (Law Firm Dasan, Attorney Seo-hoon, Counsel for the defendant-appellant)

January 14, 2010

1. The defendant shall not use the marks listed in the attached Form 2. The defendant shall not produce, sell, distribute, export, or import the goods listed in the attached Form 3 using the marks listed in the attached Form 2.

2. The defendant uses each trademark listed in the annexed Form 2, which is kept in the defendant's office, factory, warehouse, place of business and store, or used the above trademark, or goods listed in the annexed Form 3, or similar goods, or packaging and advertising materials thereof, respectively.

3. The defendant shall pay to the plaintiff 88,279,242 won with 5% interest per annum from September 25, 2009 to February 18, 2010, and 20% interest per annum from the next day to the day of complete payment.

4. The plaintiff's remaining claims are dismissed.

5. Of the costs of lawsuit, 2/3 shall be borne by the Plaintiff, and the remainder by the Defendant, respectively.

6. Paragraph 3 can be provisionally executed.

The defendant shall pay to the plaintiff 329,945,689 won and 20% interest per annum from the day following the delivery of the written application for partial correction of the claim as of September 18, 2009 to the day of complete payment.

1. Basic facts

A. The Plaintiff, a corporation established on December 10, 201, has its head office in Yangju-si (hereinafter omitted), and is engaged in crowdfunding production business, etc., and the Defendant is a corporation incorporated on March 12, 2004 with the same trade name as the Plaintiff, which runs plastic manufacturing business, construction materials wholesale and retail business, etc.

B. The Plaintiff completed each trademark registration on May 27, 2008 with respect to the trademarks listed in attached Form 1. 31, 2006 with respect to the trademarks listed in attached Table 1. 31, 2006, 3, and 4 (hereinafter “instant trademark”) with respect to the trademarks listed in attached Table 1. 1. 31, and 2, with respect to the trademarks listed in attached Table 1. 2, the Plaintiff is a trademark right holder who registered each trademark on May 27, 2008.

C. Since the incorporation of the company on March 12, 2004, the Defendant produced and sold the designated goods of this case using each of the marks listed in attached Form 2 (hereinafter “instant cited marks”).

[Reasons for Recognition] Facts without dispute, entry of Gap evidence 1 to 10 (including each number), the purport of the whole pleadings

2. Determination

A. Determination as to whether trademark infringement has been infringed

(1) According to the above facts, the trademark of this case and the cited mark of this case may cause misconceptions or confusions as to the origin of the designated goods in the transaction of this case, when observing the appearance, name, and concept objectively, as a whole, in an objective, overall, and differently.

(2) In addition, according to the above facts, it is reasonable to view that the defendant used the cited mark of this case, which omitted the "stock company" even though its trade name was "Had Co., Ltd.," for its designated goods, its advertisement pictures, etc., which were produced by it, and that it was used as a product display for the classification of the goods of the other goods, not merely indicating its trade name.

(3) Therefore, since the Defendant’s use of the cited mark in the designated goods of this case, which the Defendant produced, constitutes an act of infringing the Plaintiff’s trademark right to the registered trademark of this case, the Defendant is obligated to use the cited mark of this case, or to produce, sell, distribute, export, or import the designated goods of this case or similar goods and their packaging, advertising advertisements using the cited mark of this case, and to compensate the Plaintiff for damages arising from the infringement of each trademark right, and to discard the designated goods using the cited mark of this case which is kept in the Defendant’s office, factory, warehouse, business place, and store, or similar goods and their packaging, advertising advertisements.

B. Judgment on the defendant's assertion

(1) The defendant's assertion

(A) Even in a lawsuit for infringement of trademark rights, the trademark of this case constitutes a trademark consisting solely of a mark indicating in a common way the origin, quality, raw materials, efficacy, use, quantity, shape (including the shapes of packages), price, production method, processing method, use method or time of the goods, or a trademark having a common way indicated in Article 6(1)3 of the Trademark Act, and thus, the trademark of this case constitutes a case where the trademark registration is null and void because it falls under “a trademark likely to mislead the quality of goods” under the former part of Article 7(1)11 of the Trademark Act.

(B) On March 12, 2004, the Defendant established a corporation with the trade name "Had Co., Ltd." and operated the plastic manufacturing business, etc., and each mark listed in attached Form 2 falls under the trade name that generally indicates "Had Co., Ltd., in a common way," and thus, the effect of the Plaintiff's trademark right does not extend in accordance with Article 51 (1) 1 of the Trademark Act.

(C) Prior to the Plaintiff’s registration of the instant trademark, the Defendant: (a) registered the mark indicated in attached Form 4 as a trademark; and (b) used the trademark after being transferred the business and trademark from the Nonparty who used the trademark; and (c) thus, the Defendant has the right to continue to use the trademark as a prior user under Article 57-3(1) of the Trademark Act.

(2) We examine whether a trademark right can be asserted as invalid in a trademark infringement lawsuit.

If a trademark is registered, the right as a registered trademark shall be held until it becomes final and conclusive after it is declared null and void by a trial, so long as its invalidation is not declared by a trial, the validity of the cited trademark cannot be denied for this reason (see, e.g., Supreme Court Decision 96Hu283, Sept. 10, 1996). Thus, the defendant's above assertion is without merit.

(3) We examine whether the cited mark of this case constitutes a trade name indicating the defendant's trade name in a common way.

In a case where a company, which is a juristic person, omits a part indicating the type of the company in its trade name, the company's trade name cannot be deemed to have been perceived as a trade name, so long as it is not widely known, it cannot be deemed to have been indicated in a common way as a trade name, and it is merely an abbreviation of the trade name, and even if it is not indicated in a special form as long as it is not widely known (see, e.g., Supreme Court Decision 2000Hu3708, Mar. 23, 2001), the trademark right becomes effective (see, e.g., Supreme Court Decision 2000Hu3708, Mar. 23, 2001). Therefore, the use of the cited mark of this case, which omitted

(4) We examine whether the Defendant has the right to continue to use as the pre-user.

The right to continue to use the trademark as the pre-user under Article 57-3 (1) of the Trademark Act, which was established on January 3, 2007, applies from the case where the pre-user satisfies the requirements of the amended provisions for the trademark first registered by another person after July 1, 2007, pursuant to Article 7 of the Addenda to the Trademark Act. The trademark right listed in [Attachment 1] 1. 1 and 2 of the Plaintiff was already registered before July 1, 2007, and there is no evidence to prove that the trademark of this case was recognized as indicating the goods of a specific person among domestic consumers at the time the Plaintiff applied for the registration of the trademark of this case. Thus, the defendant's above assertion is without merit.

C. Scope of damages

(1) The plaintiff's assertion

The defendant records 3,524,845,187 won in 2006, operating income, 95,787,196 won in operating income, 42,817,858 won in operating income, 45,555,861 won in operating income, 208, 117,600,084 won in operating income in 2007, 5491,292,543 won in operating income in 2008, 2008, 169,527,747 won in operating income, 169,527,747 won in operating income in 208. Since Article 67(2) of the Trademark Act assumes the profits of the infringer as losses of the owner of the trademark, the defendant is obligated to pay the plaintiff the net income in 2006, 2086, 2074, 2087, 2087, 2087, 20078.747

(2) Determination

Where a trademark right holder claims compensation from a person who has intentionally or negligently infringed his/her trademark right or exclusive license for damages caused to him/her by such infringement, the profits gained by the infringer as a result of the infringement shall be presumed to be the amount of damages suffered by the trademark right holder. Therefore, the Plaintiff’s amount of damages is equivalent to KRW 7,136,309 for the net income of December 11, 136,309 for the net income of December, 206 (=42,817,858 won x 2/12 months x less than 2/12 months x less than won; hereinafter the same shall apply), for the net income of less than 117,60,084 won for the net income of 207, and for the net income of 169,527,747 won for the net income of 208, except in extenuating circumstances.

However, it is reasonable to view that the pertinent net income had a considerable impact on the quality, credit, sales policies, etc. of the goods supplied by the Defendant. Therefore, it is deemed that the Plaintiff’s contribution to the instant registered trademark to the profits earned by the Defendant was 8,279,242 won (=294,264,140 won x 30/100) assessed about about 30% of the Plaintiff’s contribution to the instant registered trademark to the profits

Therefore, barring special circumstances, the Defendant is obligated to pay to the Plaintiff damages for delay at the rate of 5% per annum under the Civil Act from September 25, 2009, which is the day following the delivery date of the application for partial correction of the claim of this case, to February 18, 2010, which is the date of the decision of this case, and 20% per annum under the Act on Special Cases Concerning Expedition, etc. of Legal Proceedings from the next day to the date of full payment.

(3) Judgment on the defendant's defense of set-off

The defendant received from the non-party on June 30, 2009 the claim for damages arising from the plaintiff's infringement of the non-party's trademark right from October 10, 2001 to April 2, 2004. Since the above claim amount reaches at least 504,438,200 won, the defendant defense that it offsets the plaintiff's claim amount by automatic claim to an amount equal to the plaintiff's claim amount. Thus, the trademark indicated in attached Form 4, which is the non-party's registered trademark, and the plaintiff's registered trademark of this case cannot be deemed as identical or similar to the plaintiff's appearance, name, and concept. Thus, the plaintiff's use of the registered trademark of this case from October 10 to April 2, 2004 cannot be deemed as infringement of the non-party's trademark right, and since there is no evidence to acknowledge that the plaintiff infringed the non-party's trademark right, the defendant's offset is not justified.

3. Conclusion

Therefore, the plaintiff's claim is justified within the above scope of recognition, and the remaining claims are dismissed as it is without merit. It is so decided as per Disposition.

[Attachment]

Judges Kang Jae-chul (Presiding Judge) Lee Jin-chul (Presiding Judge)