상표의 상표로서의 사용과 의장으로서의 사용

• 영문명: Use of a trademark as a trademark and as a design
• 발행기관: 세창출판사
• 저자명: 남호현(Ho-hyun Nahm)
• 간행물 정보: 『창작과 권리』2005년 봄호 (제38호), 59~85쪽, 전체 26쪽
• 주제분류: 법학 > 법학
• 파일형태: PDF
• 발행일자: 2005.03.01

영문 초록

This study presents a discussion on legal effects in the circumstances that a trademark especially a two-dimensional trademark is used in the manner incorporating decorative function and elements rather than as a pure trademark in the jurisdictions of Korea and Japan. Traditionally the use of a two-dimensional trademark as a design was not considered as constituting the use as a trademark so as to endow legal effects of a trademark in determining the infringement on a trademark right or a proper use of a registered trademark in a non-use cancellation action. However, recent higher court decisions in Korea and Japan have begun to recognize the use of a trademark even in the manner incorporating decorative function and elements as constituting the use of a trademark, and as a logical consequence thereof, to recognize the trademark infringement and the proper use of a registered trademark in a non-use cancellation action. The first Supreme Court case in Korea(98 do 2743, December 26, 2000; Adidas case) recognizing the use of a trademark in the manner incorporating decorative function and elements as the use of a trademark set out the reasoning of and a criteria on how to determine the use as a trademark and the use as a design. The subject matter of the case was whether or not another person's use of a person's registered two-dimensional trademark on shoes would constitute a trademark infringement. The Supreme Court recognized the trademark infringement by reasoning that as the trademark and the design is neither exclusive to nor selective of each other, even a shape or an appearance of an article representing a design can be considered as the use of a trademark as long as it is considered as distinguishing the source of the goods concerned. There are more court cases in Korea in line with this Supreme Court decision above, i.e., 「Seoul Appellate Court 2003 na 57101, May 12, 2004 in respect of Louis Vuitton's bag design」, 「Patent Court 2000 Huh 7403, July 12, 2001 in respect of Cartier logo」, and 「Patent Court 99 HUH 9526, May 12, 2000 in respect of 'dish cloth'」. On the other hand, there are some Supreme Court cases as well which did not recognize the use as a trademark in Korea such as 「Supreme Court 2003 hu 2027, October 28, 2004 in respect of the goods 'bed'」, and 「Supreme Court 2002 hu 1324, February 14, 2003」, 「Supreme Court 96 do 1424, February 14, 1997」. There in Japan is a recent higher court case(Tokyo Appellate Court 2002-500, March 26, 2003) recognizing the use in the manner of decorative function and design elements as the use of a trademark in a non-use cancellation action. A broad recognition of the use in the manner incorporating decorative function as the use of a trademark is likely to restrict the public's free utilization of the designs devoid of novelty and/or creativeness and thus belonging to the public domain. As such, we will have to seek a harmonization of the rationales of both trademark laws and design laws. In light of a harmonious resolution, we will have to consider various factors such as the relevancy of the subject matter to the goods, the degree of the notoriety of the mark concerned, the intention of the user, the likelihood of the use of the subject matter being considered as the indication of the source, concrete circumstances in trade, etc. in determining whether a subject matter is used to distinguish the source of the goods or not.

목차

Ⅰ. 서

Ⅱ. 상표법상 상표의 사용

Ⅲ. 상표적 사용과 의장적 사용의 구별 기준

Ⅳ. 상표적 사용과 의장적 사용의 법적 효과

Ⅴ. 상표 등록을 통한 의장적 요소 또는 캐릭터의 보호 가능성

Ⅵ. 맺으면서

Abstract

키워드

상표의 사용 상표적 사용 의장적 사용 상표의 의장적 사용 상표의 의장으로서의 사용 상표의 정당 사용 use of trademark use of trademark as a design