207Heo13674 Decision (Trademarks)

Plaintiff:

The Commissioner of the Korean Intellectual Property Office

April 25, 2008

May 16, 2008

1. The decision of the Intellectual Property Tribunal rendered on November 21, 2007 with respect to the case No. 2007 Won1029 shall be revoked.

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

The order is as set forth in the text.

1. Details of the trial decision;

A. The applied trademark of this case

(1) The filing date/ the application number: the composition of March 27, 2006/40 - 2006 - 15925 : “.”

(3) Designated goods: Banbs, children's uniforms, infant uniforms, divings, lockeds, sports strings, Pourts, Trts, caps, swimming-outs, swimming-outs, swimming pantyts, pumps, nibs for physical use, panibs, and pats, by classification of goods.

(b)the earlier application trademark;

(1) Date of application / Date of registration / Number of registration: February 14, 2006 / December 6, 2006 / 688308 / 2 : The composition of designated goods (3).

(4) Persons entitled to registration: Seoyang Water Industry Corporation

C. Circumstances leading up to the instant trial decision

On December 29, 2006, the examiner of the Korean Intellectual Property Office rendered a decision of refusal on the ground that “the trademark of this case constitutes Article 8 of the Trademark Act because the prior registered trademark, designated goods, and marks are similar to the prior registered trademark,” and thus, cannot obtain trademark registration. Accordingly, upon the Plaintiff’s petition for a trial of refusal, the Korean Intellectual Property Trial and Appeal Board deliberated this as KRW 2007 won and 1029, and subsequently dismissed the Plaintiff’s petition for a trial on November 21, 2007 on the ground that the trademark of this case is similar to the prior registered trademark.”

【Ground for Recognition: Nos. 1 and 2, Eul evidence No. 1 and 2, and the purport of the whole pleadings】

2. Determination on the legitimacy of the instant trial decision

A. The issues of the instant case

The key issue of this case is whether the registered trademark of this case is similar to the registered trademark of earlier application and falls under subparagraph 8 of the Trademark Act.

B. In comparison with the applied trademark of this case and the earlier application trademark, the summary of the Defendant’s assertion (1)

The trademark of this case, which combines diagrams and letters, can be observed separately, and the name and concept of the figure part among them can be called and concepted as "written authorization," or "written authorization," and the trademark of earlier application also has the same name as the figure of the applied trademark of this case. Thus, both marks are similar, and both trademarks include "the clothes, shoes, and hats" among the designated goods. (ii) The criteria for judgment are similar to the designated goods.

In order to determine whether two or more trademarks are similar to one another, the appearance, name, and concept of a trademark shall be determined by the overall and separately and by whether it is likely to cause mistake or confusion as to the origin of the goods by observing the appearance, name, and concept of the trademark in an overall and separately, and even if one of the concepts of appearance and name is similar, if the trademark as a whole can cause mistake or confusion as to the origin clearly by consumers, it shall not be deemed similar (Supreme Court Decision 190Do1111, Oct. 1, 1990)

16. See Supreme Court Decision 90Hu588 delivered on April 1, 199

(3) In comparison with the mark (A) the mark of the applied trademark of this case is a combination of figures, and the applied trademark of this case is a trademark composed of diagrams. Thus, if the entire trademark of this case is observed as a whole, both marks are different in appearance, and in terms of name, the applied trademark of this case cannot be deemed similar, as it is referred to as “food” by the text.

( 나 ) 다음으로, 이 사건 출원상표의 표장 중 도형 부분만을 분리하여 선출원상표와 대비하여 보면, 우선 외관에 있어서, 양자는 모두 앞쪽을 바라보고 서 있으며 짧은 꼬리를 치켜 든 개의 형상을 띠고 있다는 점에서 유사하나, 머리 모양에 있어서 이 사건 출원상표는 단순화된 선처리로 뭉툭하게 표현되어 있는데 비하여, 선출원상표는 입부분이 뚜렷하게 튀어나와 보다 세밀하게 표현되어 있는 차이가 있다. 그런데 동물 특히 개는 그 종에 따라 머리, 몸통, 다리, 꼬리, 털 등의 형상이 현저하게 다르고, 갑 제3호증의 기재에 의하면, 이 사건 출원상표의 지정상품과 같은 상품류 구분에 속하는 제25류에 있어서 다양한 형상의 개 도형이 상표로 출원되어 등록되고 있는 사실을 인정할 수 있으며, 이 사건 출원상표가 출원된 2006. 2. 14. 경 개, 고양이, 곰 등 동물의 특징을 단양하게 표현한 캐릭터가 많이 사용되고 있는 점 ( 경험칙 ) 에 비추어 보면, 도형의 유사범위를 좁게 보아야 할 것이므로 위와 같은 양 표장의 외관상 차이가 적다고 볼 수 없다 .

Then, the trademark of this case is separately observed with only 00. 1. 1. 1. 2. 2. 3 . 6 . 3 . 6 . 9 . 1 . 6 . 3 . 9 . 9 . 1 . 6 . 3 . 9 . 9 . 9 . 9 . 1 . 3 . 9 . 9 . 9 . 9 . 9 . 9 . 9 . 9 . 9 . 9 . 9 . 9 . 9 . 9 . 9 . 9 . 1 . 9 . 3 . 9 . . 1 . 3 . 9 . . 1 . . 3 . 9 . . . 3 . 9 . . 9 . . 1 . 3 . . 9 . . 3 . . 9 . . . 3 . . 1 . . . . . 9 . . .

(4) Preparation results

Although the trademark applied in this case and the trademark applied in earlier application are the same and similar in terms of the concept, there are differences in appearance, and even if both trademarks are used on the designated goods of the same kind due to a remarkable change in their names, it is not likely that consumers may mistake and confuse the source of goods. Thus, the similarity of the designated goods of both trademarks is not similar without the need to further determine the similarity of goods of each other.

C. Sub-committee

Although the trademark applied in this case is not similar to the trademark applied in earlier application and does not fall under Article 8 of the Trademark Act, the decision of this case, which dismissed the plaintiff's appeal on different grounds, is unlawful.

3. Conclusion

Thus, the plaintiff's claim seeking the revocation of the trial decision of this case is accepted on the ground of the reasons.

Judges of the presiding judge;

Judges Kang Tae-tae

Judges Kim Tae-tae