Disputed device marks (new mark above, already-registered mark below) in this week's trademark case.
Disputed device marks (new mark above, already-registered mark below) in this week’s trademark case, 2015hu1348.

(An experimental feature of this blog: still working on formatting &c.)

The Supreme Court of Korea (대법원) issued fourteen “major” decisions on July 14, 2016. Among these were cases dealing with a number of issues dear to this IP translator’s heart, including trademark registration criteria, restitutionary damages for copyright, petitions for change of immigration status, and various issues of contract law.

  1. Trademark registration
    • Korean caption of case: 상표등록 거절결정에 관한 심결취소를 구하는 사건
    • Translation: Case in which cancellation was sought of decision denying trademark registration
    • Case number: 2015hu1348
    • Topic: Trademark law – criteria for similarity of device marks
    • Appeal from: Patent Court
    • Result: Vacated & remanded

    Summary: Appellant Samsung C&T had filed for a trademark for a device mark for a “bag” that was very similar to an already-registered device mark for a “briefcase” (서류가방). The Korean Intellectual Property Office denied registration of the new device mark because it was confusingly similar to the existing mark. The Supreme Court upheld the rejection, and clarified that the proper standpoint for evaluating similarity is not that of a consumer comparing the two marks side by side. Rather, the question is whether there is a risk that a consumer encountering the two marks at different times and places would be confused as to their source.

  2. Immigration
    • Korean caption of case: 체류자격 변경불허가처분의 재량권 일탈·남용이 문제된 사건
    • Translation: Case of alleged abuse of discretion in denying change of immigration status
    • Case number: 2015du48846
    • Topic: Immigration law – change of status
    • Appeal from: Seoul High Court
    • Applicable statute: Immigration Control Act (출입국관리법) Articles 10, 24
    • Result: Vacated & remanded

    Summary: The plaintiff appealed from a denial of a change in immigration status. The Korea Immigration Service has discretion to deny petitions for change of status even where all technical prerequisites are met. Accordingly, such decisions are reviewable only for abuse of discretion, and specifically for serious errors of fact and violations of the principles of proportionality and equailty (비례․평등의 원칙).

    In this case, a Pakistani laborer with a C-3 short term visa was injured on the job and his wife traveled to Korea to care for him. The Incheon immigration office refused to grant the wife a change of status to a cohabiting spousal visa (F-1). In view of the disproportionality between the great personal harm caused by denying a change of status and the minimal public benefit, the Supreme Court held that this denial was an abuse of discretion by the Immigration Service.

  3. Construction law
    • Korean caption of case: 시정명령의 이행 기회가 제공되지 아니한 과거의 기간에 대한 이행강제금 부과의 효력이 문제된 사건
    • Translation: Case of disputed validity of imposition of charge for compelling performance for period during which no opportunity was provided to comply with a correction order
    • Case number: 2015du46598
    • Topic: Construction law – penalties
    • Appeal from: Seoul High Court
    • Applicable statute: Building Act (건축법) Articles 79, 80 (prior to May 2014 amendments)
    • Result: Lower court decision upheld: Dongjak-gu district government’s post-hoc imposition of a charge for compelling performance was plainly invalid as applied to time periods before the district government had given the building owner an opportunity to comply.
  4. The Best-laid Plans
    • Korean caption of case: 구 국토계획법에 의한 기반시설부담계획 및 부담금 부과처분에 대하여 부담액 산정의 기초요소의 적정성 등을 다투는 사건
    • Translation: Case of dispute over appropriateness of basic elements of calculation of allotted expenses for shared basic facilities under former National Land Planning Act
    • Case number: 2015du4167
    • Appeal from: Seoul High Court
    • Result: Vacated & remanded
    • Applicable statute: Former National Land Planning Act (prior to amendments of January 11, 2006)
  5. Workers’ Comp
    • Korean caption of case: 산재보험 사업주 변경신청에 대한 거부행위의 취소를 구한 사건
    • Translation: Case seeking cancellation of denial of petition of change of business owner for workers’ compensation purposes
    • Topic: Administrative law – judicial review
    • Questions presented: Whether decision by Korea Workers’ Compensation and Welfare Service to deny petition to change business owner on workers’ compensation policy from the plaintiff to a subcontractor was judicially reviewable (No)
    • Case number: 2014du47426
    • Applicable statutes: Industrial Accident Compensation Insurance Act (산업재해보상보험법), Workers’ Compensation Insurance Premium Collection Act (고용산재보험료징수법)
  6. Tax law
    • Korean caption of case: 원천납세의무자의 경정청구권의 범위 관련 사건
    • Translation: Case relating to scope of original taxpayer’s right to demand reassessment
    • Case number: 2014du45246
    • Appeal from: Seoul High Court
    • Applicable statute: Income Tax Act Enforcement Decree (소득세법 시행령)
    • Questions presented: Whether, if person with original tax liability is recognized to have right to demand reassessment, that person can also demand reassessment for a portion of the liability that the person with the original tax liability did not pay? (Yes)
  7. Gift Tax
    • Korean caption of case: 증여세 납부능력이 없음으로 인한 면제사유 등을 들어 증여세부과처분을 다투는 사건
    • Loose translation: Case of dispute over imposition of gift tax in view of grounds for exemption such an inability to pay the gift tax
    • Topic: Tax law – gifts
    • Questions presented:
    • Case number: 2014du43516
    • Appeal from: Seoul High Court
    • Result: Vacated & remanded
    • Applicable statute: Inheritance Tax and Gift Tax Act (상증세법) (prior to December 2011 amendment)

    Summary: The Inheritance Tax and Gift Tax Act provides that “when a donee is deemed incapable of paying gift tax . . . the donee shall be exempted from paying all or part of gift tax equivalent thereto. ” [KLRI trans.] In this case, the lower court had granted the plaintiff an exemption because the plaintiff was unable to pay the tax at the time it was levied. The Supreme Court vacated and remanded, because the appropriate time for determining ability to pay was not the time at which the tax was imposed, but the time immediately before the gift was made (증여가 이루어지기 직전).

  8. Forgery
    • Korean caption of case: 경유증표를 컬러복사기로 복사한 것이 위조행위에 해당하는지가 문제되는 사건
    • Translation: Case disputing whether making color copies of a power of attorney constitutes forgery
    • Case number: 2016do2081
    • Appeal from: Uijeongbu District Court
    • Result: Upheld
    • Questions presented: Whether the copying of a genuine certificate of passage through local bar association using a color copier for submission in different court cases constitutes forgery for purposes of the crime of private document forgery (Yes); whether such a duplicate attached to a power of attorney could reasonably lead a member of the public to incorrectly beileve that the document was properly authorized (Yes)
  9. Chinese Ginger
    • Korean caption of case: 수입신고의 항목인 ‘가격’이 과세가격을 의미한다는 이유로 운임 및 이를 포함한 과세가격을 허위로 신고한 피고인이 관세법위반죄로 기소된 사건
    • Loose translation: Case of suit for Customs Act violation by defendant who falsely declared shipping costs and taxable price including the same due to belief that “price” field in import declaration referred to taxable price
    • Topic: Customs law
    • Appeal from: Jeonju District Court
    • Case number: 2013do8382
    • Applicable statute: Customs Act (관세법) Article 241 Paragraph 1, Article 270 Paragraph 1
    • Result: Vacated & remanded

    Summary: Defendants were involved in importing ginger from China to South Korea via the port of Gunsan, and overstated their freight costs in order to avoid customs scrutiny. The trial court incorrectly convicted them of violating Article 270 of the Customs Act, which prohibits the misstatement of the customer price which is used as the basis for assessing duties – not the misstatement of ancillary matters such as freight costs.

  10. Construction law
    • Korean caption of case: 건설공제조합을 상대로 한 하도급대금에 관한 보증채무의 이행 청구 사건
    • Loose translation: Case of demand against Construction Guarantee Cooperative for performance of surety obligation in relation to subcontract payment
    • Case number: 2015da217713
    • Appeal from: Daegu High Court
    • Result: Vacated in part & remanded

    Summary: Construction Guarantee Cooperative was not exempted under clause of its standard policy agreement exempting it from “increased obligations” due to policyholder’s failure to promptly notify it of a claim, when the amount of the claim was not increased by the delay.

  11. Right of secured creditor
    • Korean caption of case: 채권담보권자가 제3채무자로부터 변제를 받은 채권양수인에 대하여 부당이득반환을 구하는 사건
    • Translation: Case in which restitution was sought by purchaser of obligation where secured creditor obtained satisfaction from garnishee
    • Topic: Secured transactions
    • Case number: 2015da71856
    • Appeal from: Seoul High Court
    • Result: Vacated & remanded
    • Applicable statute: Act on Security Over Movable Property, Claims, Etc. (동산·채권 등의 담보에 관한 법률); Civil Act Article 472
    • Questions presented: When a lienholder has properly perfected its security interest and the relevant debt has then been sold, and notice of the sale reached the garnishee, whether the garnishee who has received notice of the lien can raise satisfaction of the debt as to the buyer of the debt as a defense against the lienholder (Generally no); Whether in such such a case, the secured creditor could ratify satisfaction of the debt purchaser and then demand restitution from the debt purchaser (Yes)
  12. Restitution damages in copyright
    • Korean caption of case: 저작물 무단이용 부당이득반환 사건
    • Translation: Case of restitution for unauthorized use of creative work
    • Case number: 2014da82385
    • Topic: Copyright and unjust enrichment
    • Appeal from: Seoul High Court
    • Result: UpheldSummary: Defendant LG exceeded the negotiated scope of a license to use plaintiff TBCL’s 3D video footage to promote its 3D TV products, and TBCL sued for restitution. The Korean Supreme Court upheld the trial court’s calculation of restitutionary damages by calculating reasonable rates for each distinct type of use of the copyrighted work.
  13. Case of interpretation of special conditions in standard contract for manufacture/purchase of goods applicable to contracts for defense material
    • Korean caption of case: 방산물자 계약에 적용되는 물품제조ㆍ구매 표준계약 특수조건의 해석 사건
    • Loose translation: Case of interpretation of special conditions in standard government contract for manufacture/purchase of goods applicable to contracts for defense materials
    • Topic: Contractual penalties
    • Appeal from: Seoul High Court
    • Result: Vacated & remanded
    • Case number: 2013da82944
  14. Liquidated damages and contract penalties
    • Korean caption of case: 이행보증금 반환 청구 사건
    • Translation: Case in which refund of performance bond was demanded
    • Case number: 2012da65973
    • Topic: Contractual penalties
    • Appeal from: Seoul High Court
    • Result: Vacated & remanded
    • Applicable statute: Civil Act (민법) Article 398 Paragraph 4