희석행위금지와 상표의 ‘설명적 사용’－포장ㆍ용기의 변경을 중심으로－

초록

The topic of this article is the referential use of a trademark by defendants who repackaged or rebottled plaintiffs’ genuine products. The issue is whether such a use constitutes trademark infringement, specially under the anti-dilution provisions. To find the answer to the issue, Part II of this article examines ‘Prestonettes case,’ which shows clear contrast between the two theories of trademark protection; tort-based one for consumer protection and property-based one for the protection of trademark holder. In Part III, it is discussed whether a referential use of a trademark can survive the anti-dilution protection in Korea. And this article concludes the followings: First, according to tort-based theory for the trademark protection, a referential use is not even within the exclusivity of a trademark right. On the other hand, according to property-based theory, a referential use comes within the exclusivity of the right and it can be allowed only if there is no likelihood of harm to consumers. Second, under the U.S. protection of a famous trademark against dilution, a referential use is not an infringement of a trademark right, not because it is a non-commercial use, but because of a policy reason that balances the protection of property right and free speech interests. Third, Korea Supreme Court also sees a referential use as lying outside of the right of a registered trademark. It held that a referential use is not a ‘trademark use’ under the Trademark Act. Fourth, a referential use should be interpreted as surviving the anti-dilution provision of Korea Unfair Competition Prevention Act because it is a nontrademark use. And the exemption is based on the ‘fair business practices,’ not on its non-commercial nature.

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