개정 상표법 제34조 제1항 제21호의 적용요건에 관한 고찰

Abstract

Article 34(1)21 of the Trademark Act(wholly amended in 2016; hereinafter referred to as “the subject provision”) states that registration shall not be granted to any trademark for the registration of which any person who has or had a contractual relationship, such as partnership or employment, a business transactional relationship, or any other relationship with a person who holds the right to the trademark registered, which is identical or similar to the trademark registered in a State party to the treaty, applies on goods by designating goods identical or similar to the goods on which the trademark is designated as the designated goods, without the consent of the person who holds the right to the trademark. The intent of the subject provision is to deter the registration of any trademark filed in violation of a continuous contractual relationship or special confidence with the rights-holder to a trademark registered in a State party to the treaty, on par with the provision under Article 34(1)20 of the Trademark Act pertaining to the principle of good faith, thereby contributing to a fair international transactional order. The subject provision expands the scope of applicable human relationship and temporal period compared to the provision under Article 23(1)3 of the former Trademark Act. Rather than adopting the content of Article 6septies of the Paris Convention as it is, on which it is based, the subject provision incorporates as is the scope of human relationship under Article 34(1)20 of the Trademark Act pertaining to the rejection of registration of any trademark contrary to the principle of good faith, reflecting the legislative intent of the Korean Intellectual Property Office (KIPO) to crack down on any unfair trademark registration in Korea. Regarding the requirements for the subject provision’s applicability, legislative resolution of the following issues is essential for preventing any more interpretive confusion over the application of the subject provision: (a) amend such expression as “trademark registered in a State party to the treaty,” by taking account of those States that recognize the right based on the use of a trademark; (b) clarify the scope of a “State party to the treaty” and the “agent or representative” under the former Trademark Act in interpreting contractual relationship, etc.; and (c) articulate a “justifiable reason” as an exception to the “consent” requirement and the point in time for determining the “consent.” In conclusion, given its aspiration to protect trademarks registered in a State party to the treaty, the subject provision calls for a legislative resolution geared toward keeping pace with the international standard by taking account of the Paris Convention as an international standard for trademark law and the legislative state of the Japanese Trademark Act and the Community Trademark Regulation of the European Union, which is structurally similar to the Korean Trademark Act. In addition, it would help facilitate a further sophistication of the Korean trademark examination guidelines to reflect the interpretive theory underpinning the concrete standard of determination under the trademark examination guidelines of the Community Trademark Regulation in European Union.