미국 상표법상 상표양도 법리의 전개양상과 우리 상표법과의 비교법적 검토

Historically, the legal principle of trademark assignment under the U.S. trademark law are based on the rule on trademark assignment with goodwill. This principle is based on a legal thinking that when trademark holders assign a trademark, goodwill in the trademark is also transferred. In the early days of the U.S. Trademark law, the U.S. courts had required that trademark owner’s business be transferred together to ensure the transfer of goodwill if the trademark is assigned. However, the U.S. Courts had relaxed the requirements for trademark assignment, taking the attitude that trademark assignment is valid if the continuity between assigners’ goods and assignees’s goods is recognized without the transfer of the business. On the basis of this attitude, the U.S. Courts had adopted a legal principle that trademark assignment is valid if assignees uses the same product as assigners’ product, furthermore if uses a product with substantial similarity or sufficient similarity, or even if uses a product that is not entirely different. Since then, the U.S. courts has taken the position that trademark assignment is valid if the use of a trademark by assignees is unlikely to cause consumers confusion about the origin and quality of the product. Such a relaxed U.S. court's stance on assignment requirements is seen as meeting international standards for trademark assignment under the TRIPS Agreement, the NAFTA Agreement and the Trademark Law Treaty. Thus, there is a view in the U.S. that trademark assignment statute under Article 10 of the Lanham Act should be amended to recognize the free trademark assignment by trademark holders, but the trademark assignment should be invalidated if the use of a trademark by assignees may cause consumers confusion about the origin and quality of the product. Under the trademark law in South Korea, the statute of trademark assignment would guarantee the free trademark assignment by trademark holders, but allow legal sanctions on the trademark assignment if it could cause consumers confusion or misleading of the origin and quality of the product. Therefore the South Korea trademark law would hold a relaxed attitude on trademark assignment rather than the U.S. trademark law. Under South Korea trademark law, assignment requirements meet international standards for trademark assignment, and effect economically in favor of assigners, assignees and consumers. After all, South Korea trademark law is thought to adopt a proper and flexible policy on trademark assignment.