하자 있는 상표등록이 소송제도에 미치는 영향분석 - 대법원 2011후3698·2014다52193 판결을 중심으로 -

An Analysis of Effects which trademark registration with irregularity has on a litigation system - Focused on the Supreme Court Decision 2011Hu3698, 2014Da52193 -

(1) This case is concerning the position mark which consists of a solid line and a broken line. Even when a position mark lacks the distinctiveness in its consistent image or shape, as long as the position mark attachment to a specific location of the designated product was successful in enabling traders and consumers to recognize the product as that of a specific trademark owner, it may be registered as a trademark since distinctiveness was acquired through the aforementioned use of the position mark. Meanwhile, whether the mark has the distinctiveness, in the case of registration invalidation of the relevant trademark, is decided on the basis of the registration decision time. The time when its registration invalidation by irregularity of the distinctiveness in this trademark is decided, would be August 2, 1984, the time of registration decision. (2) The examiner, in the step of application, decided that this mark was non-distinctive since it indicates the shape of the designated goods. However, the appellate tribunal decided that it was not. On this wise, there’s a controversy about whether it has distinctiveness in the step of application. Meanwhile, when looking into other case of the registration which has applied to our country at the point of its registration decision of this mark, it is very difficult to determine if this mark has distinctiveness. Because it is not likely that a footwear-related trade is unique only in our country. Therefore, in this respect, the precedents of other countries should also be considered. We, that is, cannot obviously deny the distinctiveness of this registered trademark. (3) In the past, the Supreme Court had a negative opinion in judging grounds of invalidation in an infringement suit. However, the Supreme Court Decision 2010Da103000 stated that the grounds of invalidation could be decided in an infringement suit. Also in an infringement suit of this case, such as precedent sentenced by Supreme Court on October 18, 2012, it is decided that there is the ground of invalidation to the registered trademark. And in an infringement suit of this case, it is decided that the ground of invalidation is obvious in invalidation trial. Thus, it was decided that holder’s claim for injunction against infringement based on trademark rights is considered as an abuse of rights. (4) Meanwhile, in case that there is an obvious grounds of invalidation in invalidation trial because it lacks distinctiveness in the trademark rights in an appeal for cancellation of the trial decision for declaratory judgement on the scope of a right, it is doubted whether the relevant case can be dismissed. Even if there are proved an obvious ground of invalidation in an appeal for cancellation of the trial decision for declaratory judgement on the scope of a right, the Supreme Court proceeds with the appeal, and then it judges whether it belongs to the scope of a right. Accordingly, it judged that the mark of confirmation subject belongs to the scope of a right of this registered trademark. (5) The trademark infringement suit can draw a valid conclusion by judging the grounds for invalidation. However, since the grounds for invalidation of trademark rights cannot be judged in an appeal for cancellation of confirmation trial for the scope of a right, it may be different from the result of infringement suit. Meanwhile, the user who has not trademark rights can simply escape from responsibility of trademark right infringement, when it is claimed or proved that the effectiveness of the registered trademark is null and void, according to the intent of Article 51, the Trademarks Law. I have analysed the merits and demerits which a current trial for the scope of rights and an infringement suit have.