“하이우드”사건에 상표권 효력제한 규정의 적용 가능성 검토

The Korean Supreme Court in a unanimous en banc decision 2010 da 103000 rendered on October 18, 2012 held that the courts could dismiss a trademark injunction or damages claim on the ground that they are “trademark abuse” when it is obvious that once the trademark is examined by the Intellectual Property Tribunal (IPT) of the Korean Intellectual Property Office (KIPO), it will be invalidated due to lack of discrimination even before it is conclusively invalidated by IPT of the KIPO. It is obvious that the unanimous en banc decision declared that the court would examine discrimination of a trademark at issue in order to decide whether defendant’s argument of “trademark abuse” was right. It appears that the Supreme Court emphasizes more truth and fact rather than keeping formal restrictions such as “distribution of powers”. Traditionally, when a defendant raises a trademark invalidity defense, the Supreme Court has generally decided that allegedly infringing trademark (or service mark) does not constitute infringement when the trademark lacks discrimination or when allegedly infringing trademark belongs to the public domain. Because the defendant did not argue that his mark did not constitute infringement since it belonged to the marks designated in Korea Trademark Act (KTA) article 51, the Korean Supreme Court employed the legal notion of “trademark abuse” into a trademark infringement case 2010 da 103000. This raised the following issues:1. Trademark holder would be difficult to accept the holding that his enforcement of his trademark right is “trademark abuse” because he has received his trademark right with substantial cost legitimately. 2. Considering the cases that Korean Supreme Court in 2010 da 103000 changed, the legal notion of “trademark abuse” is not essential in solving cases like 2010 da 103000. 3. The degree of obviousness is not clear when the trademark will become invalid ‘obviously’ when it is examined by the IPT. For these reasons, it is inappropriate to use the notion of “trademark abuse” in trademark infringement lawsuits. Against this backdrop, with the assumption that the defendant argued “fair use” on the basis of KTA Article 51, this article examines applicability of Article 51 to the 2010da103000 case and enlightens the differences between the method of applying Article 51 and the 2010 da 103000 decision. The method of applying Article 51 does not have to adopt “right abuse” theory and decide whether a registered trademark is invalid outside the “invalidation trial.” In addition, the method can solve a trademark case by the regulation of the KTA without applying civil law. However, the en banc decision has significant meaning in that it has officially declared that the court can decide whether a registered trademark is invalid in accordance with Article 7 as well as Article 6(1) in an infringement case to decide whether defendant’s argument of “trademark abuse” is right, especially, including Article 7 as well as Article 6(1).