[2] Method of determining whether there is no or weak distinctiveness that can function as an essential part of a combination trademark

[3] In a case where Gap, the right holder and user of the prior-use trademark " " " "" and the prior-use trademark " " " "," have been applied for and registered for unjust purposes by imitateing the prior-use trademark and the prior-use trademark, and thus they correspond to Article 7 (1) 7, 11, and 12 of the former Trademark Act, the case affirming the judgment below that the trademark and prior-use trademark " and the prior-use trademark " "" cannot be deemed as an essential part of performing the function of indicating the origin of goods independently, and the trademark and prior-use trademark, prior-use trademark and the prior-use trademark are not similar because their overall observation differs from their appearance, name, and concept

[2] In determining whether or not a part of a combined trademark has no or weak distinctiveness that can function as an essential part, the circumstances in which many trademarks including the relevant part are registered or applied for registration are publicly announced with respect to goods identical or similar to the designated goods can also be considered. Thus, the determination should be made by comprehensively taking into account the number of trademarks registered or publicly announced, the number of applicants or trademark right holders, the degree of intrinsic distinctiveness of the relevant part, the relationship with the designated goods, and the existence of circumstances in which it is deemed inappropriate to grant a specific person exclusive right

[3] In a case where Gap, the right holder and user of the prior-use trademark " " "" and the prior-use trademark " " "," filed a petition for a registration invalidation trial on the grounds that the trademark is a trademark which imitates the prior-use trademark and the prior-use trademark for unjust purposes, and thus constitutes Article 7 (1) 7, 11, and 12 of the former Trademark Act (wholly amended by Act No. 1403, Feb. 29, 2016), the case affirming the judgment below holding that the trademark and the prior-use trademark all contain the part "monter" or "MONTSER" as to goods identical or similar to the designated goods prior to the filing date of the registered trademark, it is difficult to recognize distinguish between the registered trademark and the prior-use trademark, the trademark, the prior-use trademark, and the prior-use trademark, and the prior-use trademark cannot be seen as constituting an independent trademark, and thus, cannot be seen as performing the function of indicating the origin and similarity of the goods, as a whole, and thus, it cannot be viewed as its function.

1. In principle, the similarity of combined trademarks consisting of two or more letters or diagrams shall be determined based on the overall appearance, name, and concept of their constituent parts. However, if there is an essential part, in order to induce an appropriate conclusion of the overall observation, it is necessary to compare and determine the similarity of trademarks with the essential part in order to induce an appropriate conclusion of the overall observation (see, e.g., Supreme Court Decisions 2015Hu1690, Feb. 9, 201). In addition, regardless of other constituent parts, the essential part of a trademark becomes the subject of comparison when determining similarity with another trademark because of its independent distinctive character that is perceived as being placed on ordinary consumers, regardless of other constituent parts, the part that has no or weak distinctiveness among the constituent parts of the trademark cannot be deemed as an essential part (see, e.g., Supreme Court Decisions 2001Hu1808, Dec. 14, 201; 2005Hu52064, May 29, 2005).

Meanwhile, in determining whether a trademark contains no or weak distinctiveness that can function as an essential part of the combined trademark, the circumstance in which many trademarks, including the relevant component, are registered or applied for and publicly announced on goods identical or similar to the designated goods, may also be considered. Thus, the determination should be made by comprehensively taking into account the number of trademarks registered or publicly announced, the number of applicants or trademark right holders, the degree of inherent distinctiveness of the relevant component, the relationship with the designated goods, the existence of circumstances in which it seems inappropriate to allow a specific person to monopoly the relevant component

A person shall be appointed.

2. According to the reasoning of the judgment below, the court below held that the pre-use trademarks in the judgment of the court below, which consist of “○○○○, △△△△△△,” etc. as designated goods and goods using prior-use trademarks and “propact drinks, energy, and sports drinks” as indicated in the judgment of the court below, which are composed of the registered trademark of this case (registration number omitted) or “YNTS,” etc. as identical to the right as designated goods, include all of the goods using the registered trademark of this case, and although the pre-use trademarks in the judgment of the court below consisting of “mon posters” or “MONTSER” as to goods identical or similar to the designated goods prior to the filing date of the trademark of this case, it is difficult to recognize the distinctiveness thereof, or it is not appropriate to allow a specific person to monopoly it for public interest, and thus, it cannot be deemed that the trademark of this case constitutes an essential part performing the function of indicating the origin of goods independently from the trademark of this case and the pre-use trademark registration and its appearance and concept are not different.

In light of the aforementioned legal principles and records, the above determination by the court below is just, and contrary to the allegations in the grounds of appeal, there were no errors by misapprehending the legal principles on determining the similarity of trademarks and failing to exhaust all necessary deliberations

3. Therefore, the appeal is dismissed, and the costs of appeal are assessed against the losing party. It is so decided as per Disposition by the assent of all participating Justices on the bench.

Justices Kim Yong-deok (Presiding Justice)