[1] Whether an act of importing a authentic product and selling it constitutes an act of infringing a trademark right of a trademark right holder or an exclusive licensee (negative)

[2] The extent to which a concurrent importer can use the pertinent product manufacturer's business mark

[3] The case holding that where concurrent importers use the mark of a manufacturer of authentic products widely known to the public in the Republic of Korea for internal and external signboards, packaging sites, shopping bags, name cards, etc. of stores where the products are imported and sold, it constitutes an unfair competition act under Article 2 subparagraph 1 (b) of the Unfair Competition Prevention Act

[4] Whether a domestic exclusive import and sales agent may file a claim for prohibition of unfair competition with the court even in cases where there is no trademark right or exclusive license (affirmative)

[1] Today, international trends allow concurrent imports of authentic goods under certain conditions by recognizing the territorial exceptions to trademark rights, and in our country, the Korea Customs Service Notice No. 1995-943 of Nov. 3, 1995 "Regulations on Customs Clearance for the Protection of Intellectual Property Rights" permits concurrent imports of authentic goods in cases where a trademark right holder in Korea and abroad is the same person or the same person can be seen as the same person in relation to his affiliated companies, import agencies, etc., and the notification of the total industry section No. 1996-62 of the Fair Trade Commission and the Fair Trade Commission's notification of the type of unfair export and import in relation to intellectual property rights in relation to the aggregate industry section No. 1996-62 of the Korea Customs Service Notice No. 1996 of Jul. 15, 1997. Thus, it is interpreted that the act of importing and selling authentic goods itself does not infringe trademark rights of a trademark right holder or an exclusive licensee.

[2] When comprehensively taking into account the legislative intent of the Unfair Competition Prevention Act, which aims to prevent unfair competition such as the improper use of domestically well-known trade names and marks, etc., to maintain sound trade order, it shall be deemed that the use of business marks, such as trade names and marks, without restriction on concurrent importers, should be regulated to a certain extent. Ultimately, it is reasonable to view that concurrent importers can use such marks only to the minimum extent, such as "the use by a method that can be the same as the use of business marks of the pertinent product itself" or "the use by a method that can be seen as the same as the use of the pertinent product itself" or "the use by a method that indicates technical and explain the business marks of the relevant product producer"

[3] The case holding that the concurrent importer's use of the mark of a manufacturer of authentic products widely known in the Republic of Korea by importing and selling the product in question constitutes an unfair competition act under Article 2 subparagraph 1 (b) of the Unfair Competition Prevention Act, which is likely to cause misconceptions and confusions with ordinary consumers as an authorized agency of the manufacturer of the product or store closely related thereto

[4] A person who can file a claim for prohibition under the Unfair Competition Prevention Act is "a person whose business interest is or is likely to be infringed by another person's unfair competition." Thus, even if there is no trademark right or exclusive license, a person who can file a claim for prohibition against another person's unfair competition has standing to file a claim for prohibition of such unfair competition in cases where business interest is likely to be infringed due to another person's unfair competition

[1] Article 2 subparagraph 1, / [2] Article 1, Article 2 subparagraph 1, / [3] Article 2 subparagraph 1 (b), / [4] Article 4 (1) of the Unfair Competition Prevention Act

Bberberece et al. (Attorneys Lee Sung-min et al., Counsel for the plaintiff-appellant)

Lee & Lee Co., Ltd. and three others (Attorneys Kim Chang-soo et al., Counsel for the plaintiff-appellant)

1. Defendant M&C, Lee Young-hee, and Kimok-ok,

(a)it shall not be used in advertising advertisements, name cards, packaging sites, shopping bags, or internal and external signboards, each mark marked in the separate sheet;

B. The Defendants’ offices, factories, warehouses, warehouses, places of business, and stores and display advertising advertisements, name cards, packaging sites and shopping bags as described in paragraph 1 of the above Article, and half-finished products and internal and external signboards are destroyed, respectively.

2. The plaintiffs' claim against the defendant Dag-jin is dismissed.

3. Of the costs of lawsuit, the part arising between the plaintiffs and defendant M&C, Lee Young-hee, and Kim Jong-ok shall be borne by the above defendants, and the part arising between the plaintiffs and defendant Oung-jin shall be borne by the plaintiffs.

4. Paragraph 1 can be provisionally executed.

The judgment as referred to in Paragraph (1) and paragraph (1) of the above Article and the defendant 104 shall not be used in advertising advertisements, name cards, packaging sites, shopping bags, or internal or external signboards, etc. The defendant 100 U.S. ruling that the defendant 10 U.S. ruling that the defendant 200 U.S. ruling that the above promotion advertisements, name cards, packaging sites, and shopping bags stored or displayed in his office, factory, warehouse, place of business, store, finished products and semi

1. Determination on this safety defense

As to the lawsuit of this case against the plaintiffs who seek prohibition and prevention of infringement on the ground that the defendants' act of using the mark, etc. of the plaintiff BURBE LIMFD (hereinafter the plaintiff BURBED) widely known in the Republic of Korea constitutes an act of causing mistake or confusion with the general consumers as to the business entity under the Unfair Competition Prevention Act, the defendant Kim Jong-ok's lawsuit of this case is asserted to the purport that the above defendant's claim against the defendant does not have a benefit of lawsuit, since he discontinued his store which he had operated during the lawsuit of this case.

However, as to the closure of the store by Defendant Kim-ok, the testimony of the witness's Park Jong-ok cannot be trusted, and there is no other evidence to acknowledge it otherwise. Even if the above argument is true, it is obvious by the above defendant's argument that the store was closed only after the lawsuit of this case. If the above business activity of Defendant Kim-ok prior to the closure of the store constitutes an unfair competition act, the above defendant still has the duty to dispose of the goods created by the unfair competition act as the plaintiffs sought. In addition, in light of the circumstances where the above defendant continued the store, etc., the plaintiffs might have been sufficiently likely to infringe on the business interest due to the above defendant's unfair competition act. Thus, the lawsuit of this case against the above defendant is legitimate, and therefore, the above argument is groundless.

2. Judgment on the merits

A. The part of the claim against the defendant M&C, Lee Young-hee, and Kimok-ok

(1) Facts of recognition

The following facts do not conflict between the parties, or may be acknowledged by comprehensively considering the whole purport of the pleading in each of the statements and images of Gap evidence 1 through Gap evidence 20-1, 2, Gap evidence 23, and 27, witness Lee Jong-young's testimony (except for the part which is not trusted below among witness Park Jong-soo's testimony), and the witness's testimony is contrary to this, and there is no other counter-proof.

(A) After the Plaintiff’s business was established in 1856 and commenced the business of producing and selling clothing, the Plaintiff’s Benbere has grown into a company that manufactures and sells high-quality clothes, such as statics, Handbags, and leather products. Since the registration of the text trademark “BURBERYS” in the UK in 1920, the Plaintiff had 1154 registered trademarks in approximately 123 countries in the entire world, and each mark indicated in the separate list (hereinafter each of the marks in this case) is a representative mark used by Plaintiff Benbere for its business.

(B) On the other hand, in the case of Korea, Plaintiff Berbelle, on September 28, 197, posted the “BURBERYS” of each of the marks of this case on the top of the designated goods (which added to the designated goods such as tows, shoess, uniforms, uniforms, uniforms, children’s uniforms, strawers, reflectrs, straws, etc. on November 10, 198), and attached the “BURBERYS” in the shape similar to the English characters of each of the marks of this case on the top of the designated goods, with the trademark registration number No. 50439, which combines the shapes in the shape of the article containing the bURBERYS on the top of the article containing the brush and the flag in the lower below, with the trademark registration number No. 50439, Feb. 7, 1980; the trademark registration number No. 2, 605, 2005.

(C) On December 1986, Plaintiff UBV Co., Ltd. (hereinafter “Plaintiff UBV”) concluded an exclusive import/sale agency contract with Plaintiff BBV Lease with the authority to use its trade name, mark, etc., and received goods, and had 35 stores established at nationwide duty-free shops, general department stores, etc., and sold Plaintiff BBV lease products. For this reason, in 196, Plaintiff UBV products were used for large advertising and promotional activities, 330,00,000 advertising expenses were disbursed in 196, and Plaintiff BBB lease’s trademark was used as well-known trademark, and Plaintiff BBB lease’s trademark was used as well-known goods, and Plaintiff BBV’s trademark was used as one of the most frequently sold goods of each of the above nation-wide foreign countries.

(D) Meanwhile, from around 1996, Defendant M&C Co., Ltd. (hereinafter “Defendant M&C”) imported products (real products) produced by Plaintiff BBbee Lease directly from the United Kingdom, etc. with the headquarters of Plaintiff BBbee Lease, and supplied imported products by directly selling them or recruiting agents in Young-dong, Gangnam-gu, Seoul, 52-167, which was located in Samsungdong-gu, Gangnam-gu, Seoul. Defendant Lee Young-gu, and Defendant Kim Young-dong, both in Daegu-dong, Daegu, and in Gangnam-gu, Seoul, respectively, concluded an agency contract with Defendant M&C (hereinafter “Defendant M&C”), and thereafter received and sold the products of Plaintiff Bbee Lease.

(E) However, the above Defendants did not only sell the products of Plaintiff Berbee, but also use the mark identical to the mark Nos. 1 through 6 of this case on the front signboard of the store at the advertising level, and run business with the same mark as the mark of this case attached to the inner wall of the store, or with posters or advertising advertisements affixed with such mark attached, and even with the packaging paper, shopping bags, and even the name of each mark of this case used in the store.

(F) The above Defendants imitate the method used in consultation with the Plaintiff Berbee Lease to find out the atmosphere similar to their authorized agency by copying the method, such as the interior decoration of the store operated by them or the method of displaying products.

(G) Meanwhile, on October 1, 1997, Defendant M&C was placed in a magazine by using an advertisement photograph in which Plaintiff Benbelle is copyright without permission, and was subject to a provisional disposition (97Kahap2513) prohibiting the use of the above photographic work from the Seoul District Court on the application of Plaintiff Benbee Lease.

(2) The parties' assertion

The plaintiffs asserted that the defendants' act of using the mark of this case, which is the business mark widely known to Plaintiff Berbee Lease, in the concurrent import and sale of the plaintiff Berbee's authentic goods, constitutes an act of causing misconceptions and confusions with the business entity under the Unfair Competition Prevention Act by giving the general consumers an impression that the above defendants' store is an authorized agency of Plaintiff Berbee Lease or an agency related to Plaintiff Berbee Lease in any way, such as licensing agreement, etc., and thus, it constitutes an act of causing misconceptions and confusions with the business entity under the Unfair Competition Prevention Act.

The above defendants' use of the mark should be allowed in terms of publicity and advertisement of concurrent imports as long as the concurrent imports of authentic products are limited today, so it is not reasonable to regulate them as acts causing misconceptions and confusions as to the business entity under the Unfair Competition Prevention Act. Further, each of the marks of this case claimed as "business mark of plaintiff Berbee Lease" is merely a trademark indicating the source of the product, not a trademark having the distinctive character under the Unfair Competition Prevention Act, but it is not "main nature". The above defendants' stores claim that the signboards or internal decorations completely differ from those of plaintiff Berbee and do not cause misconceptions and confusion as to the business entity.

(3) The issues of the instant case

Today, international trends allow concurrent imports of authentic goods under certain conditions by recognizing the territorial exceptions to trademark rights. In our country, through the "Regulations on Customs Clearance for the Protection of Intellectual Property Rights" No. 1995-943 of the Korea Customs Service notification on Nov. 3, 1995, where a trademark right holder at home or abroad is the same person or its affiliated companies, import agencies, etc., the parallel imports of authentic goods are allowed. The "Types of Unfair Export and Import Acts Related to Intellectual Property Rights" No. 1996-62 of the Notice of the Aggregate Industry Department notification and the "Notice of the Fair Trade Commission on the Types of Unfair Trade Acts related to Intellectual Property Rights" of July 15, 1997. Accordingly, the act of importing authentic goods and selling them is interpreted and operated as not infringing trademark rights of a trademark right holder or an exclusive licensee.

However, the key issue of this case is whether the parallel importer's concurrent import and sale of the authentic product and further "advertisement or publicity activities using business marks such as the trade name or mark of the manufacturer of the product" should be permitted without any restriction, or it can be interpreted as causing mistake or confusion with the main body of the business under the Unfair Competition Prevention Act or the infringement of trademark rights.

(4) The limit by which parallel importers may use the product manufacturer’s business marks.

Unless there exist special circumstances, such as the fact that the parallel importer has been granted the right to use business marks, such as the trade name and marks, by the parallel importer, etc., to allow concurrent importers to use business marks without any restriction. This is more the same when a product manufacturer or an importing or selling agency permitted to use business marks, etc. from him/her is likely to damage the business reputation formed through large investment and management during the period. On the other hand, the parallel importer shall make the parallel importer take unfair profits by taking advantage of the business reputation of the product production company. Furthermore, from the perspective of ordinary consumers, it is possible for the parallel importer to purchase goods at the product manufacturer or its authorized agency, etc., but there is no relation to the purchase of goods at the product manufacturer or its authorized agency, etc., and it is more true when the trademark or business marks of the product concerned are widely known.

Therefore, in light of the above circumstances and the legislative intent of the Unfair Competition Prevention Act, which aims to prevent unfair competition such as the improper use of domestically well-known trade names and marks, etc., and maintain a sound trade order, it is judged that the use of business marks such as parallel importers' trade names and marks should be regulated to a certain extent. In the end, considering all the above circumstances, it is reasonable to view that concurrent importers can use them only within the minimum extent, such as "the use by a method that can be seen as the same as the use of business marks by parallel importers' own products" or "the use by a method that can be seen as the same as the use of business marks by parallel importers' own products" or "the use by which products' business marks are displayed in advertisements of bottled imports."

(5) Determination

According to the above facts as to this case, each of the marks in this case is widely known in Korea as the business marks of Plaintiff Benbee Lease. The defendants' use of each of the marks in this case beyond the above use limit is likely to cause misconceptions and confusions as to Plaintiff Benbee's official approval agency or store closely related to Plaintiff Benbee Lease's use of the marks in this case, and it constitutes an unfair competition act under Article 2 subparagraph 1 (b) of the Unfair Competition Prevention Act (the defendants of this case asserted that each of the marks in this case is a trademark, but it is not a trademark, but a "business mark" as well as a "trademark" cannot be seen as a "business mark. Therefore, the above assertion is without merit).

Therefore, the above defendants shall not use each of the marks of this case for advertising advertisements, name cards, packaging paper, shopping bags, or internal and external signboards, and they are obligated to discard the above promotional advertisements, name cards, packaging paper and shopping bags stored or displayed in the office, factory, warehouse, place of business, store, etc. of the defendants, and half-finished products and internal and external signboards (the above defendants are not the owner of the trademark right or exclusive licensee for the trademark of the plaintiff Libere Lease, and therefore the above plaintiff's claim of this case is groundless. However, although the defendants are not the owner of the trademark right or the exclusive licensee for the trademark of the plaintiff Libere Lease, the person entitled to request the prohibition of unfair competition under the Unfair Competition Prevention Act is "the person whose business interest is deemed to be infringed or likely to be infringed." Thus, as seen above, since the plaintiff Libere's trade is in a position to import and sell the goods of the plaintiff Bbee Lease exclusively in the Republic of Korea and to use the marks by concluding an agency contract with the plaintiff Ber Lease Lease.

(6) Determination as to the above defendants' other arguments

(A) The above defendants use the mark "Hous England" on advertisements or signboards, etc. from around 1997, because ordinary consumers are likely to mislead or confuse the store of the plaintiff UBP and the store of the above defendants, and recently in advertisements paid by the defendant M&C is the concurrent importer, and the defendant M&C uses the advertisement and publicity photograph directly produced by the defendant M&C without using the photograph, etc. in the advertisement, and affix the name "the store in which the products directly imported from the territory are sold" to the store, so there is no concern for ordinary consumers to mislead or confuse the business entity.

In full view of the whole purport of the pleading in the testimony of evidence No. 3-1, No. 2, No. 4, No. 5-1, No. 2, No. 9-1, No. 5-2, and No. 9-1, No. 9-2, and No. 9-1 through No. 11, No. 11, and No. 11 of No. 9-2, the above Defendants may recognize the fact that the defendants have used the words to indicate that the goods dealt with by using the mark of "No. Hamland" in the advertisement or signboard, etc., are the goods imported by Defendant No. YC, but there is no counter-proof, such circumstance alone does not lead to misconception or confusion about the business entity. Rather, according to the above evidence, the above Defendants still use the mark of Plaintiff Bere's lease in addition to the mark of "No. 1, 2, and No. 9-2.

(B) The above Defendants also mean that concurrent importers are permitted to use a trademark within the necessary scope for the sale of authentic goods. Furthermore, a trademark right holder has a duty to faithfully consult with each other in the event that a negotiation proposal is made with respect to the scope and conditions of trademark use. The Plaintiffs filed the instant lawsuit in order to prevent concurrent import by disregarding the aforementioned Defendants’ reasonable proposals and efforts with respect to the use of each of the marks in this case, and by blocking the advertisement and publicity of the parallel import of each of the marks in this case. This assertion constitutes abuse of rights.

However, there is no ground to view that the plaintiffs Babee had a duty as alleged above, and there is no evidence to deem that the plaintiffs' exercise of their right of this case is to cause damage to the above defendants only, and it is against good customs and other social order. Therefore, the above defendants' assertion is without merit.

B. The part of the claim against the defendant Obane

The plaintiffs asserts that the use of each of the marks of this case, which is the business mark widely known to Plaintiff BB lessee, by concluding an agency contract with Defendant M&C, constitutes an act causing mistake or confusion with the general consumers as to the business entity under the Unfair Competition Prevention Act, and thus, the prohibition or prevention of infringement is sought.

However, there is no evidence to acknowledge that Defendant 1 was selling the authentic goods of Plaintiff Berbee, which was imported concurrently by Defendant 1, and rather, according to the witness testimony of the E-mail, Nonparty 1, who is the wife of Defendant 1, is running the above business. Thus, the above assertion by the Plaintiffs is without merit without further review.

3. Conclusion

Thus, Defendant M&C, Lee Young-hee, and Kim Jong-ok shall not use each of the marks in the advertisement, name, packaging, shopping bags, shopping bags, or internal and external signboards. The Defendants’ office, factory, warehouse, place of business, store, or store have the duty to discard the above promotional advertisements, name cards, packaging paper, and shopping bags stored or displayed in the store, and half-finished products and internal and external signboards. Thus, the Plaintiffs’ claim against the above Defendants is justified, and their claim against Defendant Y-hee is dismissed as it is without merit. It is so decided as per Disposition.

Judges Lee Lee-young (Presiding Judge)