기업그룹의 분리에 따른 저명한 선사용표장과의 혼동에 관한 문제 - 대법원 2015. 1. 29. 선고 2012후3657 판결을 중심으로

Problems of Confusion with a Famous Mark in Prior Use after the Spin-off of a Business Group - Focusing on Supreme Court Decision 2012Hu3657 Decided January 29, 2015 Jung, Tae-ho Supreme Court of Korea’s recent decision (Supreme Court Decision 2012Hu3657 Decided January 29, 2015, hereinafter referred to as “the subject decision”) concerns legal principles related to problems on confusion with a famous pre-used mark after spin-off of the business group. The question presented in the subject decision was whether the continued application for the “HYUNDAI” trademark by the defendant, an affiliate of a business group, even after the business group spun off, was liable to cause confusion with the “HYUNDAI” mark in prior use by the plaintiffs, the other major affiliates of the same business group, and hence is subject to Article 7(1) item 10 of the Trademark Act. By the way, to constitute “confusion with a famous mark” under Article 7(1) item 10 of the Trademark Act, the trademark at issue is required to cause confusion with the goods or services of another person that are remarkably perceived among consumers nationwide (“the famousness of another person’s mark” and “confusion” requirements). The subject decision held that the defendant’s of application for registration of “HYUNDAI” trademark after the spin-off is feared to cause confusion with the famous mark in prior use among consumers, on the ground that the goodwill embodied in the “HYUNDAI” trademark is associated with those other major affiliates which are recognized among consumers as the subjects of, and successors to, the goodwill embodied in the pre-used mark for their central roles in adopting, registering, and using the pre-used mark of the former HYUNDAI group. The subject decision have faithfully followed the statutory construction of Article 7(1) item 10 of the Trademark Act, that the purpose of prohibiting the registration of trademarks liable to cause confusion with goods or services of another person that are remarkably recognized among consumers is to prevent any confusion among consumers as to the business and the source of a famous product. As such, the defendant cannot be considered as the subject of goodwill of the mark in prior use because it cannot be deemed to have succeeded to the goodwill associated with the “HYUNDAI” mark in prior use, though it was once an affiliate of the former HYUNDAI group. In conclusion, the subject decision appropriately determined that the defendant’s additional registration of “HYUNDAI” trademark after the spin-off was liable to cause confusion with goods or services of another person that are remarkably perceived among consumers. I think that the significance of the subject decision lies in its delineation of concrete standards for deciding matters pertaining to confusion with a famous mark in prior use after the spin-off of a business group.