상표권의 이전과 사용권자의 부정사용에 의한 상표등록취소제도에 대한 고찰

Article 119(1)2 of the Trademark Act aims to protect the commercial credit and rights of those who use trademarks as well as the interests of traders and consumers by preventing licensees from illegally using them beyond the scope of their rights to use the trademark, thereby ensuring the safety of transactions and preventing them from jumping on the credit or reputation of other trademarks. In determining the reasons for cancellation of such use for unlawful purpose, there is a special reason for cancellation or invalidation of other trademarks in that the actually used mark should be determined whether it is likely to cause confusion with products related to other people’s business by preparing not only the registered trademark but also another person’s mark. In the event of a trademark right transfer, it is difficult to avoid confusion with the goods related to the work simply by using the same trademark or applying a slight modification to it. This problem occurs not only when trademark right is transferred under a legitimate contract, but also when it is transferred through an auction against the will of the trademark holder. In order to ensure freedom of trademark transfer and to make a proper valuation of the trademark right, the effects and rights of the use of the trademark before it is transferred should all be attributed to the trademark, such as its reputation, credit, customer suction, before it is transferred, and it is only natural that it becomes difficult for the former trademark holder to use the transferred trademark. It also relates to the classic theme of distinguishing between the right to use a trademark and the right to request prohibition of the use of a trademark. In this respect, the Supreme Court Decision 2017Hu2178 has huge implication in that it determined that the previous trademark holder or licensee permitted to use the trademark was included in the “other person” set forth in Article 119(1)2 of the Trademark Act upon transfer of a trademark right, presented the judgement criteria for unlawful use of the trademark transfer, and sought a harmonious and reasonable resolution in cases on the merits regarding prohibition of infringement between the parties concerned, cases involving preliminary injunction, and non-use cancellation cases. The subject case is expected to have significant impact on resolving disputes concerning whether a licensee illegal used a trademark in the case of the transfer of a trademark right.