상표침해소송에서 무효사유에 기한 청구기각의 가부

A Study on the Trademark Misuse Defense focusing on the Korean Supreme Court en banc Decision rendered in 2012

Trademark Law itself has some restrictions based on the public order reasons. Article 51 of Korean Trademark law is one of the legal grounds for that purpose. Even some Trademarks have to be restricted from its exercising the right(s) considering the very nature of Trademark law when the intention of registrating that Trademark was only for the purpose of interfering the usage of the other Trademark holder and meet the requirements of the Article 2 of the Korean Civil Law(Prevention of Misuse of the Right). In some cases Korean Supreme court decided that no intention requirement is necessitated in case of Trademark misuse. This was the legal grounds of number of Korean cases in the trademark infringement case. However, given the bifurcated system of Korea, it is not clear whether the infringement court can decide the validity of the patent or trademark before the validity proceedings is to be done. In early 2012, Korean Supreme Court(en banc) rendered its decision as to the possibility of the ruling on the validity of the patent before the validity proceedings are not completed. The answer to this issue was positive and the patent invalidity defense under the patent infringement proceedings are allowed afterwards. In the same of Korean Supreme Court(en banc) decision on patent invalidity defense, Oct. 2012 another en banc decision by Korean Supreme Court was rendered. That case allowed the court dealing with infringement case to declare the invalidity of the trademark. It's worthwhile to follow up the progress of the this line of Trademark Misuse Defense in Korean court from now on.