선출원 등록상표와 동일·유사한 후출원 등록상표의 사용이 선출원 등록상표에 대한 침해를 구성하는지 여부

There has been a dispute over whether the using under a trademark registration consists of trademark infringement against the other prior trademark registration of which is the same or similar with the late filed trademark registration. In the past, the Supreme Court announced that ‘Once a trademark registered it has the right for using the trademark on their designated goods as it is valid until the registration confirmed invalid by judgment, although it there is a reason for invalidation in registration of the trademark.’. However, the Supreme Court change their opinion by the decision of the en banc as ‘In case where a trademark owner filed an application for registration of a trademark similar or identical to a prior applied and registered trademark of another person before the filing date of the said trademark owner’s application for trademark registration, and used the said trademark on goods that are similar or identical to designated goods of the prior registered mark, could consist of trademark infringement of the prior registered trademark regardless of whether the trial ruling invalidation registration or the subsequent registered trademark.’. In other words, the Supreme Court understands the nature of trademark rights as exclusive rights, but may be limited. According to the purpose of Article 92 of Trademark Act and Fist to file policy, the Trademark Act based on the basic principle that if a trademark right conflict with other intellectual property rights, the prior rights has precedence and it applies between trademark rights as well. Therefore, even if the right holder of the later registered trademark uses their own registered trademark, if the use is within the scope of the rights of the prior registered trademark without the consent of the prior registered trademark holder, the effect of the later registered trademark is limited. There is a positive view that the new Supreme Court’s Judgement does not constitute complex logic based on the legal principles of past Supreme Court rulings, violate precedents, or retroactive punishment, conforms to the administration of intellectual property law and international trends, and makes logic consistent and clear. And this view is valid enough point. However, considering the relevant laws and regulations of the Trademark Act and the relationship between the Patent Act and the Trademark Act, the new Supreme Court’s Judgement leaves room for questions. Therefore, through this paper, the gist of the new Supreme Court ruling, related theories, and views of the Supreme Court judge are introduced. In addition, it provides an opportunity for a critical review of the Supreme Court ruling from the opposite standpoint and further discussions on related laws.