컴퓨터관련발명의 특허법적 보호

鄭相朝 세창출판사 1996 창작과 권리 Vol.- No.5

미국 특허획득시의 발명일 증명에 관한 소고

함윤석 세창출판사 1997 창작과 권리 Vol.- No.6

섭외 OEM생산이 중국에서 상표권 침해에 해당되는지에 대하여

김미화(JIN MEIHUA) 세창출판사 2016 창작과 권리 Vol.- No.85

自2000年左右开始, 中国就有关于涉外定牌加工是否属于商标侵权的议论, 该议论直到2013年发布的新《商标法》明确规定了“商标的使用” 必须是“用于识别商品来源的行为”, 并且, 2014年最高法院公布“PRETUL 再审案件判决”, 才得以终止。关于涉外定牌加工的核心问题也从“混淆 是不是商标侵权的构成要件”渐渐发展为“定牌加工是否属于在中国使用商标”。本文通过主要判例, 介绍该问题在中国形成法理的过程。

인터넷상에서의 상표사용에 따른 법적문제

안효질 세창출판사 1999 창작과 권리 Vol.- No.15

하자 있는 상표등록이 소송제도에 미치는 영향분석 - 대법원 2011후3698·2014다52193 판결을 중심으로 -

이철승(Lee Chel Seung) 세창출판사 2016 창작과 권리 Vol.- No.83

(1) This case is concerning the position mark which consists of a solid line and a broken line. Even when a position mark lacks the distinctiveness in its consistent image or shape, as long as the position mark attachment to a specific location of the designated product was successful in enabling traders and consumers to recognize the product as that of a specific trademark owner, it may be registered as a trademark since distinctiveness was acquired through the aforementioned use of the position mark. Meanwhile, whether the mark has the distinctiveness, in the case of registration invalidation of the relevant trademark, is decided on the basis of the registration decision time. The time when its registration invalidation by irregularity of the distinctiveness in this trademark is decided, would be August 2, 1984, the time of registration decision. (2) The examiner, in the step of application, decided that this mark was non-distinctive since it indicates the shape of the designated goods. However, the appellate tribunal decided that it was not. On this wise, there’s a controversy about whether it has distinctiveness in the step of application. Meanwhile, when looking into other case of the registration which has applied to our country at the point of its registration decision of this mark, it is very difficult to determine if this mark has distinctiveness. Because it is not likely that a footwear-related trade is unique only in our country. Therefore, in this respect, the precedents of other countries should also be considered. We, that is, cannot obviously deny the distinctiveness of this registered trademark. (3) In the past, the Supreme Court had a negative opinion in judging grounds of invalidation in an infringement suit. However, the Supreme Court Decision 2010Da103000 stated that the grounds of invalidation could be decided in an infringement suit. Also in an infringement suit of this case, such as precedent sentenced by Supreme Court on October 18, 2012, it is decided that there is the ground of invalidation to the registered trademark. And in an infringement suit of this case, it is decided that the ground of invalidation is obvious in invalidation trial. Thus, it was decided that holder’s claim for injunction against infringement based on trademark rights is considered as an abuse of rights. (4) Meanwhile, in case that there is an obvious grounds of invalidation in invalidation trial because it lacks distinctiveness in the trademark rights in an appeal for cancellation of the trial decision for declaratory judgement on the scope of a right, it is doubted whether the relevant case can be dismissed. Even if there are proved an obvious ground of invalidation in an appeal for cancellation of the trial decision for declaratory judgement on the scope of a right, the Supreme Court proceeds with the appeal, and then it judges whether it belongs to the scope of a right. Accordingly, it judged that the mark of confirmation subject belongs to the scope of a right of this registered trademark. (5) The trademark infringement suit can draw a valid conclusion by judging the grounds for invalidation. However, since the grounds for invalidation of trademark rights cannot be judged in an appeal for cancellation of confirmation trial for the scope of a right, it may be different from the result of infringement suit. Meanwhile, the user who has not trademark rights can simply escape from responsibility of trademark right infringement, when it is claimed or proved that the effectiveness of the registered trademark is null and void, according to the intent of Article 51, the Trademarks Law. I have analysed the merits and demerits which a current trial for the scope of rights and an infringement suit have.

유럽에서의 상표침해 판단―“KENWELL”과 “KENWOOD”는 유사하다

최덕규(Dukkyu Choi) 세창출판사 2020 창작과 권리 Vol.- No.100

In 2014 the applicant, Wonder Line, SL (Spain), filed an application for registration of an EU trade mark for KENWELL. The opposition was based, inter alia, on the EU word mark KENWOOD, which was registered on 18 December 2002. The opponent, De Longhi Benelux SA (Luxembourg), claimed that that mark was well known throughout the European Union for kitchen appliances and mixers. It was in respect of those same goods that the contested mark KENWELL was claimed, inter alia, in Classes 7, 9 and 11 of the Nice Agreement. By decision of 11 February 2019 (‘the contested decision’), the Second Board of Appeal of EUIPO dismissed the appeal. The applicant for the trade mark KENWELL brought an action against that decision before the European Court of First Instance (CFI). The Board of Appeal had found that there was an average degree of similarity both visually and phonetically. And since the signs are not perceived as vocabulary, the conceptual comparison is not possible or not relevant for the assessment of the likelihood of confusion. Moreover, the goods covered by the marks in question are ‘partly identical, partly similar and partly slightly similar’―and that assessment was not challenged by the parties. The applicant argued that the double consonants ‘LL’ in the mark applied for and ‘OO’ in the earlier mark made it impossible to confuse those marks visually, as did the signs -WELL and -Wood, which are understood as words by the English-speaking public in the EU and thus also imply a conceptual difference. The two syllables ‘KEN’ and ‘WOOD’ of the earlier mark and ‘KEN’ and ‘WELL’ of the mark applied for are also pronounced, so that the two marks, taken together, are not phonetically similar. The Court of First Instance examined very carefully the sequence of signs of the two marks, as is usual in such proceedings concerning likelihood of confusion between word marks. Each of these marks contains seven letters, and they also share the same first four letters “K”, “E”, “N” and “W”, which are arranged in the same order, the CFI held. Moreover, the last three letters in both marks are followed by double letters. There is therefore at least a medium degree of visual similarity, the CFI held. The same applies to the phonetic similarity, which also shows at least a medium degree of similarity. “KEN-WOOD” versus “KEN-WELL”: the first syllable is phonetically identical, the second syllable begins with the same consonant “W”, and the two marks also have the same phonetic length. Finally, the Court of First Instance also examined the conceptual similarity. “It is true that ‘WOOD’ and ‘WELL’ are part of the vocabulary of the English language and that the element ‘KEN’, which is common to both marks, could also mean ‘range of knowledge or perception’ according to the Collins dictionary, the Court of First Instance stated. However, the Court found that, for the English-speaking public, the word elements ‘KENWOOD’ and ‘KENWELL’, which are unusual in their structure, are not well-known expressions in English. The Board of Appeal was right to find that the marks at issue had no meaning overall and that no conclusion could be drawn from their conceptual comparison, the CFI held.

중국 반부정당경쟁법 일반조항의 의미 및 사례

전정현(Jung-Hyon (Jamie) Jun) 세창출판사 2015 창작과 권리 Vol.- No.78

In the Chapter Two (titled “Unfair Competition”) of Unfair Competition Act in PRC (hereunder ‘the Act’), there are eleven provisions in that specify the actions that are regarded as unfair competition. At the same time the article 2 in the Chapter One of the Act (General Rules), stipulates the basic principles of fair competition and general meaning of unfair competition, (so-called an umbrella provision). There is an academic controversy with regard to the relationship between the article 2 of the Act (i.e. the general provision) and the eleven specific provisions in the Act. One views that the umbrella provision can be independently applied without applying other specific provisions and therefore any action that violates the umbrella provision can be recognized as an unfair competition, even though it is not specified in the specific provisions in the Act. Some scholars are against such view. However, courts in the PRC have the former view, namely that the general provision can be an independently applied. Such opinion of PRC courts is understandable. As the economy of PRC grows rapidly, new forms of unfair competition actions continue to emerge. Accordingly, PRC courts widely apply the general provision in the Act in order to widen the narrowly defined scope of unfair completion actions in the Chapter Two of the Act. This article aims to help understanding the meaning and court precedents of the general provision of the Act, and comprehend the significance of it. This article first covers the meaning of the general provision of the Act. Second it focuses on the recent court cases in which the general provision was applied with regard to unfair competition actions.

순수한 인격권으로서의 초상권은 가치인가, 규범인가

박경신 세창출판사 2008 창작과 권리 Vol.- No.51

A portrait right is defined as a right not to have one's portrait to be created or published without consent. Thus defined, the portrait right poses a serious obstacle to the works of authorship on real individuals. Especially, when Korean courts have begun to recognize publicity rights or the property aspect or the commercial aspect of the portrait right (collectively, "publicity rights"), the portrait right and its elements which are redundant to the elements of publicity rights are disturbing the predictability of the law. The portrait right, if carefully distinguished from and defined as not overlapping with publicity rights and privacy, does not exist in the Anglo-American legal systems. It does exist in Germany and France but because it is always disposed of judicially under the broader rubric of personality rights, each instance of the order to prohibit unauthorized publication of portraits is not clear on its legal basis, which often turns out to be that of privacy. Korean courts, only twice, recognized the "pure" right of portrait (i.e., right not to have made or published a portrait) in absence of defamation, breach of oral or implied contract (on the scope of use), infringement of privacy, or infringement of publicity rights. From the perspectives of legal stability and efficiency, it is a time to think about whether we need to mainintain the portrait right as a norm or simply a value like reputation, bodily security, mental peace, etc.

[특별기고] 대한민국 특허제도의 문제점 (Ⅲ) : 잘못된 선원주의에 대하여

최덕규 세창출판사 2011 창작과 권리 Vol.- No.65

Article 36 Section 1 of Korean Patent Law provides the first-to-file system in which a first patent application may be granted as patent in case that there are more than one patent application in which the claimed inventions are identical. In other words, the latter patent application(s) except the first patent application shall not be granted as patent under Article 36 Section 1. The patent examiner may reject a patent application directly under the Article. However, the first-to-file provision is not a patentability such as novelty or non-obviousness but a procedural requirement for defining the scope of prior art for determining novelty. A patent application shall not be rejected directly under the first-to-file provision but may be rejected under the novelty provision over the prior art defined under the first-to-file system. One of important objects of the first-to-file system is to prevent double patenting. However, according to Article 29 Section 3 of Korean Patent Law, double patenting may be allowed to the same applicant. In order to deficiency of Article 29 Section 3, a request for terminal disclaimer shall preferably be studied to adopt. A junior patent application which is filed within the grace period of 6 months from the date of disclosure shall have priority for granted as patent over a senior patent application filed after the date of disclosure and before the filing date of the junior patent application. According to Article 36, for patent applications filed at the same day, only one patent application may be granted as patent through negotiation by the applicants when the claimed inventions are identical. The patent applications filed at the same day shall be consistently treated under the first-to-file.

미국의 상표제도상 상표권과 상표의 사용 간 관련성에 관한 소고

문삼섭(MOON SAM SUP) 세창출판사 2017 창작과 권리 Vol.- No.89

Common law trademark right arise from the actual use of trademark in trade in the United States. The geographical area of that common law trademark right is limited to the region that a trademark owner actually used the trademark but if the trademark owner register the mark as a federal trademark on the principal register of the USPTO, the geographically limited common law trademark right is extended to the all region of the United States. Unlike other countries, the United States adopted the first-to-use system in acquiring trademark right. Fist-to-use system that was stemmed from the traditional ‘in-gross/appurtenant dichotomy rule’ of trademark right has been reflected in the common law and the 1946 Lanham Act in the United States. This thesis focus on the relationship between the trademark right acquisition and federal trademark application, examination, registration and maintenance of trademark right with the trademark use in the United States.