상표권 계약위반과 권리소진 -대법원 2020. 1. 30. 선고 2018도14446 판결의 검토

The Supreme Court of the Republic of Korea recently pronounced an important judgment (Supreme Court Decision 2018Do14446 Decided January 30, 2020) regarding the rule of exhaustion of intellectual property rights. The case dealt with the question of whether the exhaustion principle applies when the licensee puts goods bearing a trademark on the market in disregard of a provision of the licence agreement that prohibits sale of the said goods to an online store, and whether the proprietor can oppose further commercialization of the goods. This question is hard to answer and there was insufficient debate in South Korea. In foreign countries, various opinions have been presented, including the United States Supreme Court’s 2008 Quanta case and 2017 Lexmark case and the European Court of Justice (CJEU)’s Dior v. Copad case in 2012. The Lexmark judgment in the United States was widely introduced in South Korea, and it was recognized that the principle of exhaustion of rights can be applied even in the case of breach of contract. However, the Lexmark case is about PSR (post sale restriction) provision and the sale was made not by the licensee but by the proprietor. In addition, CJEU sees that a breach of a so-called “selective distribution” of a luxury brand is not only a breach of contract but also an infringement of a trademark right. However, it could not be generally applied for non-luxury brands. The Supreme Court of Korea ruled that “licensee’s contravention of the licence agreement does not necessarily mean the principle of exhaustion should be excluded when it is related to non-essential conditions. The Court should decide whether the rule of exhaustion is applied by considering all factors, such as the specific content of the contract, the possibility of damage of essential function of the mark to guarantee both the identity of origin and the quality of marked goods and the balance between the reason for the proprietor to oppose further commercialization of the goods and the necessity to protect consumers who have bought marked goods through the market.” In a trademark license agreement, the scope of authorised sale, such as the goods for which the licence is granted, its duration, and the territory in which the trademark may be affixed, is usually granted by the proprietor. Therefore, when the licensee contravenes those provisions it would be beyond the proprietor’s permission and constitute trademark infringement. However, a contravention of non-essential conditions does not directly related to the scope of permission. The exhaustion doctrine is a limit on the scope of the IP right and it cannot be excluded by non-essential provisions of the contract. In this case, there is no evidence of confusion of the origin, nor is there evidence of damage of the quality of goods. All in all, protecting consumers takes precedence over the interest of the rightholder who has been paid for the sale of the marked goods in this case. Article 1 of the Korean Trademark Act says, “the purpose of this Act is to contribute to industrial development and to protect the interests of consumers by ensuring the maintenance of the business reputation of persons using trademarks through the protection of trademarks.” The Supreme Court of Korea comprehensively considered the history of the exhaustion doctrine and clarified that the court should draw a reasonable conclusion in consideration of balancing all the conflicting interests between IP rightholders and consumers. I hope that the above judgment will serve as a catalyst for more cases in the future.