(A) TRADEMARK LAW CASE (INCLUDING COPYRIGHT LAW AND UNFAIR COMPETITION PREVENTION LAW)
(Korean Supreme Court rendered December 10, 2015; Case No. 2015 DO 11550)
For a period of approximately three months in 2013, a Korean company imported and sold 14,900 rabbit dolls bearing the trademark shown below (the "Used Trademark").
The Used Trademark was similar to the following trademark, which was previously registered by a Japanese company (the "Registered Trademark").
The Korean company was prosecuted under the Trademark Law, the Unfair Competition Prevention Law and the Copyright Law for violating the Registered Trademark held by the Japanese company.
(1) ISSUE ONE: Whether the Used Trademark infringed the Registered Trademark held by the Japanese company.
A trademark is deemed to infringe another trademark when the marks are so similar that consumers and traders could be confused as to the source of the products when encountering the trademarks at different times and/or places. It is important to view the circumstances comprehensively, taking into account the impression, memory and association that a mark’s appearance, pronunciation and meaning trigger in the consumer and trader.
The Court held that the Used Trademark was similar to the Registered Trademark. It was determined that consumer and traders may be confused as to the origins of the goods as they give a similar impression, memory and association.
ISSUE TWO: Whether the Used Trademark infringed the copyright of the Japanese company.
(a) Originality under the Copyright Law means that the work contains an expression of the author’s ideas and feelings and has the unique characteristic of the author’s mental efforts. It is not an imitation of someone else’s work and it is distinguishable from existing works of others.
(b) A work will not receive protection under the Copyright Act if it is common and lacks novelty.
The Court held that the rabbit dolls which the Korean company imported and sold without authorization were an imitation of the work created by the Japanese company. Therefore, the Korean company infringed the copyright of the Japanese company.
ISSUE THREE: Whether the accused violated the Unfair Competition Prevention Law.
The Court determined that the Korean Company violated the Unfair Competition Prevention Act by selling rabbit dolls that were similar to the goods sold by the Japanese company already widely known in Korea.
(Korean Supreme Court rendered November 13, 2014; Case No. 2012 DA 42666, 42673)
ISSUE ONE: Whether the royalties that the Patentee received from the Licensee are considered unfair profits when the licensed patent is subsequently found to be invalid.
(a) In case that a patented invention which operates properly and is the subject of a license agreement is later invalidated by the Courts, it is only upon the rendering of a final invalidation decision that the license agreement is no longer valid and enforceable by the parties.
(b) Although the patent contained in a license agreement was subsequently invalidated, the Patentee has no duty to return the royalties that he received from the Licensee when the agreement was effective.
In this case, the royalty paid by the Licensee to the Patentee was received by the latter when the license agreement between the parties was effective. Therefore, the Patentee has no duty to return the royalty to the Licensee and it is not considered unfair profit.
ISSUE TWO: Whether a Licensee can cancel the license agreement on the grounds that the license agreement was defective or contained a mistake.
Although the patent that is the subject of a license agreement is subsequently invalidated by the Courts, the Licensee cannot cancel the license agreement on the grounds that the agreement was defective or contained a mistake.
In this case, despite the fact that the patent contained in the license agreement was invalidated after the parties entered into the license agreement, and the patent is deemed by the Court to be invalidated retroactively to the time of the patent registration, the Licensee cannot void the license agreement on the grounds that the agreement was defective or contained a mistake.