Where a person who has been granted a right to use a trademark right uses the registered trademark to a third party who has not used the registered trademark directly, the user or the third party does not assume the responsibility for infringement of the trademark right.

Where a mark identical with or similar to another person's registered trademark is used for goods identical with or similar to the designated goods, the trademark right of another person is infringed, but the person for whom the right to use the trademark has been granted has the right to use the registered trademark as to the designated goods within the extent prescribed by the relevant license agreement, the trademark right holder may not assert that the licensee has the right to use the registered trademark against the licensee within such extent. Meanwhile, when the licensee uses the registered trademark without directly using the registered trademark and a third party who has no right to use the registered trademark, the third party uses the registered trademark under the actual control of the licensee for the user's operating profit, as long as the third party can be deemed to have used the registered trademark under the common sense of the transaction society, as the latter uses the registered trademark.

Articles 57, 66(1)1, and 67 of the Trademark Act

Plaintiff (Law Firm Dao, Attorneys Park Jong-mun et al., Counsel for the plaintiff-appellant)

Co., Ltd. and one other

Seoul High Court Decision 2010Na102542 decided August 17, 2011

The part of the lower judgment against the Defendants is reversed, and that part of the case is remanded to the Seoul High Court.

The grounds of appeal are examined (to the extent of supplement in case of supplemental appellate briefs not timely filed).

1. Regarding ground of appeal No. 1

The court below held that the contract to establish a non-exclusive license agreement was concluded between the plaintiff, non-party 1 and Gwangjin Food Co., Ltd. (the representative at that time was the deceased non-party 2), which is the joint trademark right holder of the registered trademark "(trademark registration number omitted) of this case (trademark registration number omitted), the designated goods of which are "laver, U.S., and protruding," but it cannot be deemed that the non-exclusive license agreement was concluded on August 8, 2005, which was limited by the area of use, etc. on which August 8, 2005, but such circumstance alone was established on April 14, 2004 and that the non-exclusive license was changed to the area of non-exclusive license (the area of use is

In light of the records, the above determination by the court below is just and acceptable. Contrary to the allegations in the grounds of appeal, there were no errors of violating the rules of logic and experience and exceeding the bounds of the principle of free evaluation of evidence, or

2. Regarding ground of appeal No. 2

Where a mark identical with or similar to another person's registered trademark is used for goods identical with or similar to the designated goods, the trademark right of another person is infringed, but the person for whom the right to use the trademark has been granted has the right to use the registered trademark as to the designated goods within the extent prescribed by the relevant license agreement, the trademark right holder may not assert that the licensee has the right to use the registered trademark against the licensee within the extent of that scope. Meanwhile, where the licensee uses the registered trademark without directly using the registered trademark and a third party who has no right to use the registered trademark, the third party has a principal relationship with the licensee and uses the registered trademark under the actual control of the licensee for operating profits of the licensee, only if the third party can be deemed to have used the registered trademark under the common sense of the transaction society,

Nevertheless, without examining the specific use relation of the registered trademark of this case, the lower court determined that Defendant 2 used the Defendants’ mark “” as indicated in the judgment of the lower court by establishing a partnership with Nonparty 3, a non-exclusive licensee of the registered trademark of this case, and that the Defendants’ trademark cannot be deemed as infringing on the trademark right of this case solely on the ground that Defendant C and Defendant B supplied the Defendant’s trademark upon gathering the production of Choun Kim, where the Defendants’ mark was used. In so doing, the lower court erred by misapprehending the legal doctrine on infringement of the trademark right, thereby failing to exhaust all necessary deliberations, thereby adversely affecting the conclusion of the judgment. The allegation contained in the grounds of appeal on this point is with merit.

3. Conclusion

Therefore, without further proceeding to decide on the remaining grounds of appeal, the part against the Plaintiff among the judgment below against the Defendants is reversed, and that part of the case is remanded to the court below for a new trial and determination. It is so decided as per Disposition by the assent of all participating Justices on the bench.

Justices Min Il-young (Presiding Justice)