On October 18, 2012, the Supreme Court ruled, en banc that even before the invalidity of a trademark is confirmed, where there is a clear case of invalidity, an injunction action or a damages claim based on said trademark will not be permitted as it constitutes a misuse of rights, barring any special circumstances. And where there is a defense of misuse of right, the court seized of the infringement claim may examine and rule on the invalidity thereof as a precondition to examine the existence of any misuse by the trademark holder (Supreme Court Decision en banc, Case No. 2010 Da 103000, October 18, 2012).
Until this recent decision, the Supreme Court was of the view that even where there is a ground for invalidating a trademark, the court seized of an infringement case may not rule on the invalidity until the invalidity decision is confirmed (Supreme Court Decision, Case No. 90 Ma 851, April 30, 1991; Supreme Court Decision, Case No. 94 Do 3052, May 9, 1995; and Supreme Court Decision, Case No. 95 Do 702, July 28, 1995). However, this recent en banc decision changed these previous rulings.