In a case where Gap corporation filed a claim against Eul corporation for an affirmative confirmation of the scope of rights that belongs to the scope of rights of Eul corporation's registered trademark " "," and the Korean Intellectual Property Trial and Appeal Board cited it, the case holding that the challenged mark is similar to the registered trademark and the goods used are identical to the designated goods of the registered trademark, and thus the challenged mark falls under the scope of rights of

In a case where Gap corporation filed a claim against Eul corporation for an affirmative confirmation of the scope of the right of Eul corporation's registered trademark " "," and the Korean Intellectual Property Trial and Appeal Board accepted it, the case holding that both marks are similar to each other on the grounds that there is a concern for ordinary consumers or traders to mislead or confuse the origin of the goods if they are used together with the same or similar goods due to similar external appearance, and the goods using the challenged mark are identical to the designated goods of the registered trademark, and thus the challenged mark falls under the scope of the right of the registered trademark.

Articles 51(1) and 75 of the Trademark Act

Raba Co., Ltd. (Patent Firm Ayang-Hunting Law Firm, Patent Attorney Yoon-tae, Counsel for defendant-appellant)

Korea Industrial Co., Ltd. (Attorney Lee Sung-ho, Counsel for defendant)

March 28, 2014

1. The plaintiff's claim is dismissed.

2. The costs of lawsuit shall be borne by the Plaintiff.

The Korean Intellectual Property Tribunal's decision on the case No. 2581 dated January 6, 2014 shall be revoked.

1. Basic facts

A. Defendant’s registered trademark

(1) Date of application/registration date/registration number: May 23, 2008/ June 2, 2009/ (Omission)

2) Marks: “ ”

3) Designated goods: A ice cream, ice cream containers, ice cans (ice fices), ice scream mixing, ice ice cream mixing, ice ice cream, ice ice ice scream, ice ice rinks, which are classified into goods of Category 30 (hereinafter the Defendant’s registered trademark is referred to as “instant registered trademark”).

(b) a challenged mark;

1) Marks: “ ”

(ii) products using: ASk-cream;

C. Details of the instant trial decision

1) On September 25, 2013, the Defendant filed a petition against the Plaintiff for an affirmative trial to confirm the scope of rights by asserting that the mark subject to confirmation is identical or similar to the registered trademark of the instant case and is used for the same goods as the ice cream, which is the designated goods, falls under the scope of the right of the instant registered trademark.

2) On January 6, 2014, the Intellectual Property Trial and Appeal Board rendered a trial ruling citing the Defendant’s request on the ground that the instant registered trademark and the challenged mark are identical or similar to the external appearance and the challenged mark falls under the scope of the right of the instant registered trademark.

[Reasons for Recognition] Evidence Nos. 1 and 2, and the purport of the whole pleading

2. Summary of the parties' arguments;

A. Grounds for revocation of the Plaintiff’s instant trial decision

The registered trademark of this case and the challenged mark are similar only to the composition, etc. of a figure in the original form which is a simple and scambling part of the “Seoul Scream,” which is a non-distinctive part, and have different overall appearance. Even if comparing the remaining parts of the challenged mark, excluding the portion of “” which does not have the effect of trademark rights pursuant to Article 51(1)2 and 3 of the Trademark Act, there is no possibility that both marks may confuse the source in terms of their appearance, name, and concept. Accordingly, the challenged mark does not fall under the scope of the right to the registered trademark of this case.

B. Summary of the defendant's assertion

The registered trademark of this case and the mark subject to confirmation are similar to the size, body, location, etc. of the Korean part, and the figure part is similar to image or Motib, the main composition of which is the combination of the source, and its appearance is similar, and its name is the same and it is likely to cause mistake or confusion among general consumers or traders. Thus, the challenged mark falls under the scope of the right of the registered trademark of this case

3. Whether the challenged mark falls under the scope of rights of the registered trademark of this case.

A. Grounds for determination

In a claim to confirm the scope of a trademark right, where the challenged mark, which is the object of a trial, is a combination of two or more characters, diagrams, etc., the trademark right is not effective, even if only the whole mark and only a part of the marks which can be separated therefrom fall under each subparagraph of Article 51(1) of the Trademark Act. As such, if a part which does not have the effect of trademark right is included in the challenged mark, the determination of whether the challenged mark falls under the scope of the right of the registered trademark on the basis of whether there is concern for misconception and confusion as to the origin of goods between the registered trademark and the trademark on the basis of the remaining part excluding the part in the challenged mark (see, e.g., Supreme Court Decision 2013Hu2446, Dec. 12, 2013). However, even if a trademark which combines figures and letters falls under any of the subparagraphs of Article 51(1) of the Trademark Act, and thus, constitutes a separate trademark on the ground that the remaining part, other than the trademark right, the shape or figure of the entire part can be compared with the trademark.

Whether a trademark is similar or not shall be determined by whether there is a concern for mistake or confusion in trade by observing objectively, comprehensively, and differently from the three aspects of the appearance, name, and concept of the trademark compared to the trademark. In particular, the shape of the figure trademark has a dominant increase. Thus, if the appearance of both trademarks is identical or similar, and if there is a concern for general consumers to mislead or confuse the origin of the like product if both trademarks are used for the same kind of product, the two trademarks are similar (see Supreme Court Decisions 93Hu1605, Mar. 22, 1994; 98Do2743, Dec. 26, 2000, etc.).

(b) Preparation for marks;

1) Whether the part of the challenged mark constitutes “” under Article 51(1)2 and 3 of the Trademark Act

Of the characters of the challenged mark, “Seoul” constitutes a conspicuous geographical name under Article 51(1)3 of the Trademark Act, and “ASck” constitutes a trademark whose ordinary name of goods identical to AScream, which is goods using the challenged mark under Article 51(1)2 of the Trademark Act, is indicated in a common way, and thus, in light of the above legal principles, the part of “the” of the challenged mark is deemed to have no effect on the instant registered trademark, and thus, it is likely to mislead or confuse the instant registered trademark by the remaining parts.

2) Whether the remainder of the challenged mark, excluding “”, is similar to the registered trademark of this case

A) Composition of the mark

The registered trademark " " " of this case is placed at the large level of the above boundaries, such as " "," with a small number of members who are placed in Myanmar as " "," and in the inside of a small level of members, the shapes consisting of the following parts of the alpha S, like ", in English," and the challenged mark " " " is placed at the large level of members, such as "," with a small size of members to contact the above boundaries, but a belt shape is formed from a small size of members, and both marks consisting of two above parts of the small size of members and two above parts of the small size of members, such as "".

B) Preparation for the name and concept

In the case of the instant registered trademark, “Seoul” constitutes a conspicuous geographical name (Article 6(1)4 of the Trademark Act), and “Ascream” constitutes a trademark indicating, in a common way, the ordinary name of the goods identical to the Ascream, the designated goods of which are the designated goods, and thus, has no distinctiveness, and there is room to recognize “Ascream” as an English alpha S, but it cannot be said that the trademark itself has no or weak distinctiveness as a simple and ordinary mark, and that there is no special name or concept in relation to the designated goods. Thus, the challenged mark consisting of two members cannot be deemed to have caused a special name or concept in relation to the goods using the trademark. Thus, both marks cannot be compared with the name and concept.

C) Preparation of appearance

In comparison with the external appearance of both marks, it is identical in that the form of a mark, which is smaller than a smaller source of the larger source, is the basic gymb, and the size of a small source and the boundary in comparison with the smaller source, is also the same. In addition, even though "" is located within a small source of the trademark of this case, it is difficult to see that the part alone is simple and ordinary, and it is difficult to see that the mark itself is separated and recognized as a simple and ordinary mark, and there is a boundary between the large source of the trademark on the basis of the same color as "", and it is similar to "" of the challenged mark, which is composed of figures or customers on the basis of the body color. In the case of the text portion, as seen earlier, there is no effect of trademark right or there is no distinctiveness, and thus, it is not the same as "in the case of the part of the mark, the overall size and shape of the mark can be seen as the same as "in the case of the shape and size of the mark," and it can be seen as "in the shape of the mark."

D) Result of preparation

As seen above, both marks cannot be compared with the name and concept, but if they are used together with the same or similar goods due to similar external appearance, they are similar to each other because there is a concern for ordinary consumers or traders to mislead or confuse the origin of goods.

(c) Preparation for designated goods;

Of the designated goods of the instant registered trademark, the term “Ascream” is the same as an Ascream, which is the goods using the challenged mark.

D. Sub-committee

Therefore, the challenged mark is similar to the registered trademark of this case and its marks, and its products are identical to the designated goods of the registered trademark of this case, and thus, they belong to the scope of rights of the registered trademark

4. Conclusion

Therefore, the trial decision of this case is legitimate in its conclusion, and the plaintiff's claim seeking its revocation is dismissed as it is without merit. It is so decided as per Disposition.

Judges Jeong Young-young (Presiding Judge)