[2] The case holding that among the applied trademark "SKYPHNE", "SKY" cannot be an essential part because it has no distinctive character, and that the applied trademark and the prior-registered trademark "SKY, Skkkk, Skkk, Skkk and Skk K are not similar

[3] Whether a trademark for which a trial decision on invalidation of trademark registration has become final and conclusive constitutes " another person's registered trademark by an earlier application" under Article 7 (1) 7 of the Trademark Act (negative)

[2] The case holding that since the trademark applied for trademark "SKYONE combines the word "SKY" and the word "PHONE" with the word "SKY", the word "SKY" is generally used for the purpose of expressing the purpose or quality of the product, and it is not widely used for the purpose of "SYCAD", especially as to the products of Class 39 (electric, telecommunication machinery, equipment, electronic application machinery, equipment, and material) separate from the designated goods of the original trademark, it is hard to see that the trademark "SYGGYE", "SYGGGY", "SGGGGGR", "SGYME" and "SK" are registered or announced publicly, so it is hard to see that the above trademark "SYK" has no specific distinctive character from the trademark applied for trademark "SYK" or it is not a general YYK's designated goods. Therefore, it is difficult for consumers to see that the trademark applied for trademark registration and its distinguish from the designated goods.

[3] When a trial decision to invalidate the registration of a trademark becomes final and conclusive, the trademark right is deemed to have never existed at the beginning, unlike when a trial decision to revoke the registration of the trademark becomes final and conclusive or when a trial decision to invalidate the registration of a trademark was cancelled due to other circumstances. Thus, even if a trademark was registered at the time of an application for registration of a trademark, if a trial decision to invalidate the registration becomes final and conclusive later, the registration of the cited trademark shall be deemed not to have existed at the time of the application for registration of the trademark, and the quoted trademark shall not be deemed to have existed at the time of application for registration of the trademark.

1. On the first ground for appeal

According to the reasoning of the decision of the court below, in comparison with the cited trademark (1) (registration No. 145727) and the cited trademark (2) (registration No. 97886), the court below affirmed the decision of the court below that, in comparison with the cited trademark (1) and the cited trademark (registration No. 145727) whose main trademark "SYPNE was applied to the original trademark, the two parts of the trademark "SKY" and "PHNE, which can be separated from appearance, can be seen as a group of 8 English language trademarks, or can be seen as being combined with the above cited trademark, which can be separated from observation according to the order of placement of the English people, and that the original trademark does not have any special meaning due to the combination of these two parts, and thus, the original trademark can be abbreviated by only the part "SYY", which is the essential part of the trademark composition, and that there is a concern for confusion between the above cited trademark and the above cited trademark under Article 7(1)7) of the Trademark Act.

However, in determining the similarity of trademarks, the similarity of trademarks shall be determined by observing the external appearance, name, and concept in general and separately from the perspective of consumers to mislead or confuse the source of goods. Thus, even if one of the external appearance, name, and concept is similar, if a trademark can clearly mislead or confuse the source, it shall not be deemed similar (see, e.g., Supreme Court Decisions 95Hu57, Jun. 30, 1995; 95Hu1494, Mar. 22, 1996; 95Hu2084, Jul. 30, 196).

According to the records, although the original trademark and the cited trademark (1), (2) contain both the word "SKY", the original trademark is composed of the word "SKY" and the word "PHNE", and it seems that the word "SKY" are generally used for the purpose of expressing the purpose or quality of the product, and in particular, it is hard to see that the term "SY" is a combination of the word "SKY" and the word "PHNE", and it is not a combination of "SY" and "SYY" and it is hard to see that it is a combination of "SYY" or "SKK's trademark," and therefore it is not a combination of "SYCAD" with respect to the product of the category of the product to which the original trademark belongs, and therefore, it is hard to see that it is a combination of "SYINE" or "SK's trademark," and thus it is not a combination of designated product or a combination of the above designated product.

If so, when comparing the original trademark and the cited trademark (1), (2) from the perspective of ordinary consumers, both trademarks are different from their appearance due to differences in the number of words constituting the trademark or whether or not Hangul is combined, and even in the name and concept, the original trademark that cannot be called and conceptualized merely differs from the above cited trademark, and both trademarks are not similar. Therefore, even if both trademarks are used together on the same or similar designated goods, they are not likely to cause misconception and confusion among ordinary consumers as to the origin of goods.

Nevertheless, the court below judged that both trademarks are similar, on the premise that the main trademark is called "SKY", in such a case, with the same names and concepts as the above cited trademarks. Accordingly, the court below erred by misapprehending the legal principles on determining the similarity of trademarks, failing to exhaust all necessary deliberations, which affected the conclusion of the decision, and there is a reason to point this out.

2. On the second ground for appeal

When a trial decision to invalidate a trademark becomes final and conclusive, the trademark right shall be deemed to have never existed from the beginning, unlike the time a trial decision to revoke the trademark registration becomes final and conclusive or the trademark registration was cancelled due to other circumstances (see Article 71(3) of the Trademark Act). If a trial decision to invalidate a trademark was final and conclusive after the registration of the cited trademark, the cited trademark shall be deemed not to have existed at the time of the application for the trademark registration, and the quoted trademark shall not be deemed to have existed at the time of the application for the trademark registration. Accordingly, the quoted trademark shall not be deemed to constitute "other person's registered trademark by an earlier application" under Article 7(1)7 of the Trademark Act (see, e.g., Supreme Court Decisions 90Hu281, Mar. 22, 191; 94Hu121, Nov. 22, 1994; 96Hu5666, Oct. 25, 1996).

According to the records, although the cited trademark (3) "SKY" (Registration No. 28045) was registered in an earlier application than the original trademark, the decision of invalidation of the trademark on December 14, 1994, which was prior to the conclusion of the original trial decision, became final and conclusive. Therefore, even if the original trademark is similar to the above cited trademark, the above quoted trademark did not exist at the time of the application of the original trademark, and it does not constitute "other person's trademark by earlier application" in relation to the original trademark, and thus, it shall not be deemed that the registration of the original trademark cannot be refused by applying Article 7 (1) 7 of the Trademark Act, on the ground that it is similar to the above cited trademark.

Therefore, the court below's decision that the trademark cannot be registered under Article 7 (1) 7 of the Trademark Act in relation to the cited trademark (3) is erroneous in the misunderstanding of legal principles as to the validity of the decision of invalidation of trademark registration or the interpretation of Article 7 (1) 7 of the Trademark Act, which affected the conclusion of the decision. Thus, there is a ground to point this out.

3. Therefore, without examining the remaining grounds of appeal, the decision of the court below is reversed, and the case is remanded to the Korean Intellectual Property Office for further proceedings consistent with this Opinion. It is so decided as per Disposition by the assent of all participating Justices.

Justices Kim Jong-sik (Presiding Justice)