등록상표권의 행사와 권리남용-대법원 2012. 10. 18. 선고 2010다103000 전원합의체 판결을 중심으로-

The Supreme Court Decision 2010Da103000 presented on 18 Oct. 2012 by the Supreme Court stated, “If it is obvious for the trademark registration to become null by invalidation trial, even though a trial decision on trademark registration is yet to be set, a claim for injunction and damages based on trademark rights is considered as an abuse of rights unless there is a certain reason and thus it is not allowed. The Court in charge of the trademark infringement suit can review and judge whether the trademark registration should be null as a premise to confirm the validity of the protest that the trademark rights holder’s claim should be considered as an abuse of rights.”This decision is significant in the sense that it explicitly applied a principle of abuse of rights, which court has allowed on infringement actions in the 2010Da95390 patent case to decide whether a trademark should be null by reason of the lack of an inventive step, to the trademark case. According to the Supreme Court Decision, a defendant can exercise the right to defend an infringement in court to prove that there is a certain reason for trademark nullity. It is possible to appeal some cases of rights abuse, with lower court decisions increasingly using the principle of abuse of rights like patent cases. So far, the Supreme Court has made a decision on trademark infringement suits based on Trademark Law Article 51 when it is not under the effect of trademark rights. With the advent of this Supreme Court Decision, now it is possible to interpret the coexistence of Trademark Law Article 51 and the principle of abuse of rights as a ground of infringement to disapprove of a defendant’s protest in a trademark infringement suit. It is required to newly establish a regulation to restrict the exercise of rights of an exclusive user or trademark rights holder, on the basis of legislation case examples of Japanese Trademark Law Article 39.