상표권 라이선스의 공정화를 위한 심사지침의 개정방안 연구

Abstract

Contrast to Patent, Trademark focuses on protecting and maintaining the brand value which is presented in the relevant market rather than the innovative technical power. In general, major firms like multinational companies tend to receive higher brand value; therefore the transaction party, licensee, who is permitted to use the Trademark, is likely to be small and medium-sized companies. Therefore, although there needs to be a specific regulation to prevent unfair trademark rights license agreement for the licensee, as the screening principle and guideline is set based on Patent, it is difficult to apply to problematic situations in relation to Trademark. As such, it is crucial to add a rule reflecting peculiarity of Trademark to the existing screening principle or establish a new one due to the unique structure around trademark rights. In relation to the above, firstly this paper will review the related legal concepts prior to discussing trademark rights license agreement in detail by checking ⅰ) different types of Trademark rights license, ⅱ) the rights and duties around the licensor and the licensee under the Trademark law, and ⅲ) the relationship between the exclusive license and non-exclusive license, as a result that effective of registration of exclusive licenses has been changed. Secondly, this paper will examine the regulations related to Monopoly Regulation and Fair Trade Act applicable to the Trademark rights license agreement. It will specifically look into anti-fraud provisions and abuse of market-dominant position on ‘Monopoly Regulation and Fair Trade Act’, ‘Examination Guidelines on Improper Exercise of Intellectual Property Rights’ and ‘Guideline on fair Patent license agreement’ to observe how each guideline is applicable to Trademark rights license. Thirdly, this paper will propose revision on the current regulation which is the main purpose of this research firstly by providing contents that needs to be added onto ‘Examination Guidelines on Improper Exercise of Intellectual Property Rights’, and set standards on unfairness of refusal to trademark rights license and No-challenge obligation, and restrictions on sub-license. Lastly, this paper will make proposition to enact new guideline on ‘fair trademark rights license agreement’ by anticipating issues that can arise over settlement conditions, planning on standard of quality assurance related to cancellation of agreement, problems over applying the abuse of right on practicing non-use trademark, necessity on the regulation of prescribing the relationship between the abuse of trademark rights and legal notion on Monopoly Regulation and Fair Trade Act, specific regulations focused on the characteristics of the agreement with multinational companies, and the need of a general outline explaining the classification on unfair terms and conditions will be discussed.