중고명품 리폼과 상표권 침해에 관한 고찰 -특허법원 2024. 10. 28. 선고 2023나11283 판결을 중심으로-

In a case where a bag owner entrusted a repair specialist with a bag for modification, the Korean Patent Court ruled that the defendant had infringed upon the plaintiff’s trademark rights. The court reasoned that the modified bag constituted “goods” under the Trademark Act, as it had independent economic value and functioned as an object of commercial transaction. Furthermore, the court found that the defendant’s act of returning the modified bag—with the original trademark still visible—to the bag owner constituted “use of a trademark” under the Act. It emphasized that it was unclear whether the bags had been legitimately distributed with the consent of the trademark holder, and even if they had, the extent of the modifications could be considered substantial enough to impair the identity of the original goods, thereby negating the application of trademark exhaustion. In light of the Korean Supreme Court’s position, the concept of “goods” under the Trademark Act should not be determined based on the inferred potential for circulation from the item’s objective characteristics, but rather on the actual circumstances of commercial transactions and the likelihood of future distribution. From this perspective, the modified product at issue was not manufactured for distribution in the general market, but was merely customized for the personal use of the bag owner and returned to them. Given that the product was never distributed in the general market, it is reasonable to conclude that it does not constitute “goods” within the meaning of the Trademark Act. Additionally, relevant U.S. case law suggests that customization or repair services performed at the request of a lawful product owner do not necessarily amount to trademark infringement. These precedents indicate that not all personalized modifications constitute unauthorized “use” of a trademark. The Patent Court’s reliance on potential post-sale confusion by third parties to establish infringement overlooks the fact that such confusion-based harm to the trademark owner arises only under limited circumstances and is difficult to substantiate. Therefore, imposing a blanket prohibition on modification services for personal use, absent actual market distribution, risks distorting the core rationale of trademark protection—namely, the prevention of consumer confusion regarding product origin. Finally, even if the defendant’s modification services could be characterized as de facto production activities due to significant alterations in quality or appearance, the fact that the final products were returned to the original owners suggests that the defendant’s actions fall within the scope of the owner's legitimate exercise of property rights. Accordingly, the principle of trademark exhaustion should apply, and the defendant's conduct should not be deemed to constitute infringement. Even if the doctrine of trademark exhaustion is deemed inapplicable, the defendant’s act of reforming the bag, insofar as it was ultimately intended for the personal use of the original bag owner, should be reconsidered in terms of unlawfulness. Such conduct may be regarded as not contrary to social norms, thereby warranting a reassessment of its legal wrongfulness.