전체 표장에 대한 디자인권 및 이를 구성하는 개별 도형들에 대한 상표권과 전체 표장의 사용으로 인한 상표권침해 및 부정경쟁행위 사이의 충돌에 관한 연구 - 대상판결: 대법원 2013. 3. 14. 선고 2010도15512 판결 -

Solving the conflict between two rights in the field of intellectual property rights is very difficult and important problem. Recently, the Supreme Court of Korea treated a significant interesting case about the problem. In that case, defendant was indicted for violating Victim A(LOUIS VUTTON)'s trademark rights by selling or displaying for sale the products attached with a pattern similar to the figurative trademark that A had applied for trademark registration. By the way, there was the fact that defendant's wife acquired design registration for the pattern which is the mark used by defendant (hereinafter "Defendant mark"). Additionally, there was the fact that defendant and his wife acquired trademark registrations for the individual shapes composing Defendant mark too. First of all, the Supreme Court ruled that since especially in the case of figurative trademarks, appearance leaves a dominant impression, if two trademarks appear to be identical/similar, and will likely cause confusion or misunderstanding to average consumers if they are used for a single like product, then the trademarks are deemed as similar. In the second place, the Court held that Defendant mark - which was intentionally used to exploit the customer appeal of A's trademark - was used as an identifier marking product source during actual trade, and even if there is ground to perceive that Defendant used the Defendant mark after acquiring the mark's licensing permission through Defendant's wife's design registration acquisition for the pattern (which is also the Defendant mark), it does not obstruct the fact that in relation to A's trademark - whose registration was applied before Defendant's wife's design registration application - the use of Defendant mark is essentially a use as trademark and thus the act constitutes trademark infringement, unless trademark owner A allowed the use of Defendant mark, or in the existence of a trial for granting non-exclusive license as provided by Article 70 of the Design Protection Act. Moreover, the Court ruled on the case as below. Article 15 (1) of the Unfair Competition Prevention and Trade Secret Protection Act (hereinafter "Unfair Competition Prevention Act") provides that "if any provision of the Design Protection Act, the Trademark Act and etc. is inconsistent with the provisions of Articles 2 and etc. of the Unfair Competition Prevention Act, such provisions of the relevant Acts shall preferentially apply." Yet according to the Design Protection Act, design is the shape, pattern, or color, or a combination of these which produces an aesthetic impression to the eye (see Article 2 subparagraph 1 of the Design Protection Act), and the legislative purpose of the Design Protection Act is to encourage the creation of designs by ensuring their protection and utilization, so as to contribute to the development of industry (see Article 1 of the Design Protection Act). However, when the purpose of design registration is not in protecting one's design producing aesthetic impression on the applied object, but in profiting by using a design that is identical or similar to another person's trademark which is widely recognized and used domestically, thereby making average consumers confuse the design with another person's product, and thus design rights acquisition was a false pretense, the application itself is intended for unfair competition, so it cannot be acknowledged as legitimate exercise of rights in accordance with the Design Protection Act, but rather as an abuse or misuse of the same Act; therefore, it is not a case where Act 2 of the Unfair Competition Prevention Act should not be applied in accordance with Article 15 (1) of the same Act. Last, the court held that although Defendant and his wife own the trademark of a portion of the individual shapes composing Defendant mark by registering the shapes as trademarks, and the remaining portions were used in Defendant mark after acquiring trademark use permission, such circumstances are not obstructive to the establishment of trademark infringement and unfair competition against the trademark of this case, as the trademark use rights based on the trademark of each individual shape composing Defendant mark do not extend to the overall form of Defendant mark. Since the Decision is the first judgment on the Conflict between the Design Right of overall form, the Trademark Rights of separate shapes which compose the overall form and the Trademark Infringement, Acts of Unfair Competition through the use of the overall form, it has highly significant meaning. I gave detailed instructions on the Decision in this Article.