상표침해소송과 상표권남용항변

Due to its own nature, trademark rights are easy to front 'Abuse of Right' defense in litigation procedure. And alleged infringers tend to ride on such 'Abuse of Right' defense against trade mark enforcement which inevitably conflicts with existing credit accumulated by a third party. To endow predictability to trademark rights enforcement, it is critical to establish objective and systematic standard of trademark abuse determination. This article proposes to classify trademark rights abuse into two categories: 'Trademark law type' and 'Civil law type'. First, a typical case of the legal principle of trademark abuse based on trademark law itself is as follows; On October 18, 2012, the Korean Supreme Court("KSC") rendered an en banc decision which held that, even before the invalidity of a trademark is confirmed, where there is a clear case of invalidity, an injunction action or a damages claim based on said trademark will not be permitted as it constitutes a misuse of right, barring any special circumstances. And where there is a defence of misuse of right, the court seized of the infringement claim may examine and rule on the invalidity thereof as a precondition to examine the existence of any misuse by the trademark holder (Korean Supreme Court Decision en banc, Case No. 2010 Da 103000, October 18, 2012). Second, the conventional civil law type abuse defense is still available as long as it meets the strict case law standards. Judges ought to declare abuse of right denying enforceability of trademark rights when the exercise of trademark rights is against principle of good faith and public order in Korean courts. In sum, this article will highlight the pressing need for the adoption of the trademark misuse defense. In a case such as above, Judges ought to declare abuse of right denying enforceability of trademark rights when the law programmed to limit the right for its inherent legal goal. And then we look to the public policies underlying trademark protection, and design a multi-factor test that strives to achieve a balance between flexibility and predictability.