등록상표의 불사용(不使用)에 근거한사용료 상당액의 손해배상책임 및 법정손해배상책임의 부정에 관한 고찰 - 대법원 2016. 9. 30. 선고 2014다59712, 59729 판결을 중심으로 -

Abstract

A trademark right holder may claim damages he has incurred against a person who has wilfully or negligently infringed his trademark rights in Trademark Act. Where a trademark right holder claims the above damages, he may claims damages by estimating an amount equivalent to that he may normally receive from the use of the registered trademark as the amount of damages he has incurred. The above claims of damages are called claims of reasonable royalty. On the other hand, A trademark right holder may claim compensation for a reasonable amount to the extent not exceeding 50 million won, in lieu of claiming reasonable royalty as damages against a person who has wilfully or negligently infringed his trademark right by using a trademark identical or equivalent to the registered trademark he uses on goods identical or equivalent to the designated goods in Trademark Act. In such cases, the court may recognize a reasonable amount of damages in consideration of the meaning of all pleadings and the result of the examination of evidence. The above claims of damages are called claims of statutory damages. In this regard, Supreme Court Decision 2014Da59712, 59729 Decided September 30, 2016(hereinafter referred to as “the subject decision”) denied liability for damages of reasonable royalty and statutory damages based on non-use of a registered mark. The subject decision has stipulated that a trademark right holder must be on the use of the registered mark to be entitled for damages of reasonable royalty and statutory damages. The subject decision has followed existing precedents and a majority opinion in theories as it is. On the other hand, we need to refer to recently emerged opinions that should recognize minimum damages of reasonable royalty, along with the case of patent rights by considering the recognition of creative value for trademarks based on the recent expansion of the definition of a trademark and potential customer attraction of a trademark right under principle of registration. In this regard, we need to study up on emerged opinions in Japanese theories and interpretations of decisions of lower instance in Japan. And we also need to refer to a legislative solution in China.