전자상거래 업체의 자사 홈페이지 내 상품검색결과 제공행위의 적법성 여부 - 상표법 및 부정경쟁방지법을 중심으로 -

Avoiding going out due to the COVID-19 outbreak accelerates an increase in online shopping, which is preferred to purchases in offline retail stores. In certain cases, e-commerce companies display on their websites not only particular products searched by consumers but also other related products for the purpose of selling products, which can be deemed an act of giving consumers more options. Hereinafter, it will be analyzed whether the exposure of third parties’ registered trademarks or known or famous identification marks by e-commerce companies constitutes a trademark infringement under the Trademark Act or an act of unfair competition under the Unfair Competition Prevention and Trade Secret Protection Act (the “Unfair Competition Prevention Act”) in connection with the e-commerce companies’ act of providing search results for products (the “Provision of Search Results”). Given the legislative intent of the Trademark Act and the Unfair Competition Prevention Act, it would be difficult to deem that the Provision of Search Results constitutes a trademark infringement or an act of unfair competition. (i) First, unless the screen of the search results provided by e-commerce companies directly displays third parties’ registered trademarks or known or famous identification marks and causes misleading and confusion of consumers with respect to sources, it is difficult to determine that the Provision of Search Results qualifies for ‘use’ and ‘likelihood of confusion’ of trademarks and marks under the Trademark Act and the Unfair Competition Prevention Act. (ii) In addition, if a third party’s trademark or mark is famous rather than being just known, the Provision of Search Results may constitute an act of unfair competition in case the Provision of Search Results damages reputation of relevant trademarks or makes such trademarks less distinctive although it is not likely to cause confusion. However, as long as the search results displayed on the screen as a result of a consumer’s search do not relate to socially adverse products or services, it seems also difficult to deem that the Provision of Search Results damages reputation or weakens distinctiveness. (iii) Meanwhile, if an e-commerce company utilizes a third party’s registered trademark or known and famous identification mark without permission to cause its products to be searched, or exploits of trust or attractiveness to customers of trademarks or marks which has been built by the third party with considerable costs and pursues improper profits, the foregoing may constitute an act of illegally using the outcome achieved by others, but it is difficult for a typical provision of search results to constitute the aforementioned exploitation. Whether the Provision of Search Results constitutes a trademark infringement or an act of unfair competition may ultimately be a matter of interest balancing test regarding whether interests of trademark owners and other rights holders who paid a lot of expenses and made efforts to build trust and attractiveness to customers for identification marks should be preferred or customers’ interests should be preferred by guaranteeing various types of business activities utilizing others’ registered trademarks and identification marks and providing customers with more information through free competition. However, weighing the importance of the degree of contribution that the Provision of Search Results makes to enhance customers’ convenience and the degree of limitation that trademark owners and other rights holders are imposed due to the Provision of Search Results, the Provision of Search Results itself should not be deemed as a trademark infringement or an act of unfair competition.