무효인 영업양도계약에 따른 도메인이름 및 상호의 사용에 대한 구제수단에 관한 소고 – 대법원 2021. 7. 15. 선고 2016다25393 판결을 중심으로 -

Abstract

Supreme Court Decision 2016Da25393 delivered on July 15, 2021, deals with various legal issues as to the claim for prohibition of use of domain name and trade name. The case in question is the first case where the relevant business transfer contract was found invalid after the domain name and trade name had been transferred as a whole of business, and the domain name and trade name were used continuously thereafter. The issue was whether a claim for prohibition of use may be sought pursuant to Article 12 of the Internet Address Resources Act (hereinafter the ʻʻTIARAʼʼ) and Article 23 of the Commercial Act, etc.. The Supreme Court accepted the claim by determining the existence of ʻʻunlawful purposesʼʼ in line with the interpretive theory of Article 12 of the TIARA, and this judgment is expected to serve as an important guideline for similar cases in the future. However, it should be noted that, as to the two elements of Article 12 of the TIARA, i.e. ʻʻlegitimate source of authorityʼʼ and ʻʻunlawful purposeʼʼ, it is difficult to provide a clear standard of interpretation and thus, measures need to be taken to supplement the case law. Further, from a legislative perspective, it is necessary to consider adding ʻʻtransferʼʼ into Article 12 of the TIARA, as a type of prohibited act. Furthermore, the judgment in question is important because it provides a new legal principle that a person or a company who holds a legitimate source of authority to the domain name may request prohibition or prevention of an act of a person or a company who is infringing on the right upon the domain name or who is likely to infringe on such right by registering, possessing, or using the domain name. However, this legal principle has a limitation that it does not clearly state the legal basis on which such principle is recognized. Moreover, it is necessary to set the scope of acts to be prohibited or prevented so as to protect the right holder who has a legitimate source of authority to the domain name. In addition, the judgment reaffirms the established legal doctrine regarding the use of trade names and is deemed to be in line with the interpretation of Article 23 of the Commercial Act. If a trade name is transferred as a whole with other property under the business transfer contract and the relevant contract is found invalid, it is true that the trade name has been continued to belong to the original trade name holder from the outset. Thus, it is reasonable to acknowledge ʻʻunlawful purposeʼʼ under Article 23 of the Commercial Act to a person who continued to use the same trade name after the underlying contract was found invalid.