[거절결정(상)] 상고[각공2016상,109]
In a case where an examiner of the Korean Intellectual Property Office rendered a decision of rejection on the ground that “A” corporation’s applied trademark “B,” etc. using “electronic publications,” etc. as designated goods, is similar to the registered trademark “B,” and the mark and designated goods fall under Article 7(1)7 of the Trademark Act, and the Plaintiff filed a petition for an appeal, but the Korean Intellectual Property Tribunal dismissed the petition, the case holding that the applied trademark does not constitute a trademark similar to the registered trademark.
In a case where an examiner of the Korean Intellectual Property Office (hereinafter “Korea Intellectual Property Office”) made a decision of rejection on the ground that “A” corporation’s applied trademark “B” and “B” are similar to “B” and “B” as designated goods and made a decision of rejection on the ground that the trademark constitutes “B” and “B” under Article 7(1)7 of the Trademark Act, but the Korean Intellectual Property Trial and Appeal Board (hereinafter “Korea Intellectual Property Tribunal”), the case held that the applied trademark and the prior registered trademark are different from their appearance, and they are different from “B” and “B” as well as “B”, and that the trademark applied for registration differs from the trademark applied for registration in terms of “B” under the following, and thus, in terms of the meaning of “B” corporation’s site advertising, etc., the trademark applied for registration refers to the trademark that is identical to “A” and “B”, and thus, the prior registered trademark differs from the trademark applied for registration in terms of the nature or characteristics, and thus, it appears that there is no concern that the trademark applied for trademark and the trademark are unlawful.
Article 7 (1) 7 of the Trademark Act
Kakao Co., Ltd. (Patent Attorney Choi Young-young, Counsel for defendant-appellant)
The Commissioner of the Korean Intellectual Property Office
November 27, 2015
1. The decision made by the Intellectual Property Tribunal on July 3, 2015 regarding a case No. 2014 won7583 shall be revoked.
2. The costs of the lawsuit are assessed against the defendant.
The same shall apply to the order.
1. Basic facts
A. The applied trademark of this case
1) Date/application number: December 16, 2013 (application number 1 omitted)
2) Composition:
(iii) Designated goods: electronic publications that can be landed under Chapter 9 of the classification of goods, electronic books that may be landed, e-mailed X-ray films that may be landed.
(b) Preregistered trademark;
1) Date of application/registration date/registration number: June 11, 1999 / September 30, 200 (application number 2 omitted)
2) Composition:
(iii) Designated goods: Packaging paper, Chinese paper, printing activation, book, book, book, periodical, picture, book, brod, brod, photo of the category of goods;
4) Right holder: Dial Culture and Arts Planning Research Council
C. Details of the instant trial decision
1) On November 7, 2014, the examiner of the Korean Intellectual Property Office rendered a decision to reject the Plaintiff’s application for trademark registration on the ground that “the prior registered trademark, the mark, and the designated goods are similar to those of the prior registered trademark, thereby constituting Article 7(1)7 of the Trademark Act.”
2) On December 5, 2014, the Plaintiff filed a petition for a trial against the foregoing decision of refusal (2014 won7583) with the Intellectual Property Tribunal. On July 3, 2015, the Intellectual Property Tribunal dismissed the Plaintiff’s petition for a trial on the ground that “The trademark applied for trademark of this case is identical or similar to the prior registered trademark so as to mislead and confuse general consumers as to be sharing the origin of the goods. Therefore, the trademark is similar, and the designated goods are identical or similar to the designated goods, and thus cannot be registered as it falls under Article 7(1)7 of the Trademark Act.”
[Reasons for Recognition] Unsatisfy, Gap evidence 1 to 4, Gap evidence 7, the purport of the whole pleadings
2. Summary of the parties' arguments;
A. Grounds for revoking the trial decision of the plaintiff's assertion
The mark of the applied trademark of this case is referred to as “the following,” as an image (CI) or rode of the Plaintiff’s well-known and well-known and well-known trademark. The applied trademark of this case differs from the trademark of this case in terms of appearance, name, and concept. Moreover, there is no risk that ordinary consumers in the transaction room may mislead or confuse the source of the applied trademark of this case and the pre-registered trademark. Accordingly, the applied trademark of this case is not similar to the pre-registered trademark, and thus, the decision of this case otherwise determined is unlawful.
B. Defendant’s assertion
The trademark of this case can be referred to as "the following" or "the learning", which is similar to that of the prior registered trademark and that of the general consumers to mislead or confuse the source. Therefore, the trademark of this case is similar to the prior registered trademark and its mark, and the designated goods are also identical or similar to the designated goods, and thus constitutes Article 7 (1) 7 of the Trademark Act.
3. Whether the trademark is similar;
A. Criteria for determination
The similarity of trademarks shall be determined based on whether there is a concern for general consumers or traders to mislead or confuse the source of the designated goods in transactions of the designated goods by objectively, comprehensively, and separately observing the external appearance, name, and concept of the trademark, and whether there is a concern for causing confusion as to the source of the goods. Even if there is a similar part between the compared trademarks, it shall not be deemed similar trademarks if it can avoid confusion as to the source clearly in the overall observation by comprehensively taking into account the general transaction circumstances surrounding the goods concerned, the degree of recognition of the trademark, etc. (see, e.g., Supreme Court Decisions 2010Da20778, Dec. 27, 201; 201Da76778, Jan. 24, 2013).
B. Specific determination
1) The title of the applied trademark of this case
Considering the overall purport of the arguments in Gap evidence Nos. 8 through 11 and Gap evidence Nos. 14 through 19, the plaintiff used "the following" or "Daum as the name of services, such as web mail, search, news, etc., provided by himself/herself, and used it as corporate image (CI). The plaintiff, from May 2013, advertised its portal site (www.d.um.mt) as "Daum-maum-mamt" and it is not accepted as the defendant's trademark "the above 38,00 won mark" (the defendant's trademark "the above 1-C/C image"), since it was established as "the following Daum-Maum Communications," the defendant's trademark prior to the English language, and subsequent Baum-Baum and the above 1-C/C mark "the above 1-C image of the plaintiff's Internet portal site," and the plaintiff's application form of "the above 1-C/C image" and the mark "the above 1-C image" is not accepted.
2) Whether the mark is similar
The trademark of this case(hereinafter “”) and the pre-registered trademark(hereinafter “the pre-registered trademark”) are different from their appearance, and their names are different from the following, and the concept of the trademark of this case differs from the trademark of this case, on the other hand, the meaning of the trademark of this case, “after any time,” “after any time,” or the meaning of the trademark of this case, “after any time,” by advertising the Plaintiff’s portal site, etc., on the other hand, the pre-registered trademark is different from each other, because it amounts to any character or character, such as “influence,” and “influence.” Therefore, the trademark of this case and the pre-registered trademark are different from the trademark of this case.
3) Whether there is a possibility of misconception or confusion as to the origin of the good or not.
In full view of the purport of the argument in Gap evidence No. 32, the plaintiff recognized the fact that the plaintiff provided the "Doum Web Web" service that provides online publications through the portal site as of the date of the trial decision of this case, and its users do not mistake or confuse the registered trademark of this case and the prior registered trademark of this case. In addition to the mark of the plaintiff's business content and size, the trademark used, service mark, and the company image (CI) as seen earlier, the consumer abutting on the applied trademark of this case appears to be aware of the source of the product. The applied trademark of this case and the prior registered trademark of this case are not likely to mislead or confuse the quality or source of the product in the trade society.
4) Therefore, the applied trademark of this case does not constitute a trademark similar to the prior registered trademark under Article 7(1)7 of the Trademark Act, since it is not likely to cause mistake or confusion as to the source of the prior registered trademark and the designated goods.
4. Conclusion
If so, the trial decision of this case is unlawful, and the plaintiff's claim seeking its revocation is reasonable, and it is so decided as per Disposition with the assent of all participating Justices.
Judges Jeong Jong-young (Presiding Judge)