2019Heo2868 Confirmation of the scope of rights (or award)

A Stock Company

Attorney Seo-young et al., Counsel for the defendant-appellant

B A.

Law Firm Yang Hun-tae, Counsel for defendant-appellant

Attorney Choi Sung-sung, Counsel for the plaintiff-appellant

Patent Firm Aju

Patent Attorney Lee Chang-hoon

July 18, 2019

October 2, 2019

1. The plaintiff's claim is dismissed.

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

The decision made by the Intellectual Property Tribunal on March 19, 2019 on the case No. 2243 shall be revoked.

1. Basic facts

A. Defendant’s registered trademark of this case (Evidence A No. 1)

(1) The registration number of the filing date: CID/E

2) Gu sex:

3) Designated goods: Montreal (limited to those added by the bee and the bee and the bee and the bee and the bee) processed by the type of goods as classified in the category of goods (limited to those added by the bee and the bee and the bee and the bee) , roas, roas (limited to those added by the bee and the bee and the bee and the bee) cooked, Amond (limited to those added by the bee and the bee and the bee and the bee) preserved and treated, and Amond (limited to those added by the bee and the bee and the bee) preserved and processed

(b) A mark subject to confirmation (Evidence A 2 and 3);

1) Gu sex:

2) Goods using: Montreal, roasd by the alter in category 29 of the goods classification and by which the burner is added, which is processed by adding Amond, bees and butter with the addition of an Amond, bees, beer and air transporters with the addition of an Amond, beer, beer, and an Amond prepared by adding Burter with the addition of an Amond, beer and beer.

3) User: Plaintiff

C. Details of the instant trial decision (Evidence A No. 2)

1) On July 18, 2018, the Plaintiff filed a claim against the Defendant for a trial to confirm the scope of rights by asserting that the challenged mark does not fall under the scope of the right of the instant registered trademark.

2) After examining the above case as 2018da2243, the Korean Intellectual Property Tribunal rendered the instant trial ruling dismissing the Plaintiff’s request on March 19, 2019, on the ground that the dominant impression sleeped in the cap or emblem consisting of the instant registered trademark and its mark is very similar, and thus, there is a concern for ordinary consumers or traders to mislead or confuse the source of goods. The designated goods (used goods) are identical or similar, and thus fall under the scope of the right of the instant registered trademark.

[Ground of recognition] Facts without dispute, entry of Gap evidence 1 to 3, purport of whole pleadings.

2. Whether the trial decision of this case is unlawful

A. Summary of the plaintiff's assertion

For the following reasons, the challenged mark does not fall under the scope of the right of the registered trademark of this case, but the decision of this case was unlawful because it was different from this conclusion.

1) In the instant registered trademark, “Nmond,” “HONEY BUTER ALOND” as raw materials and thus, has no distinctive character. In addition, the figure part of the instant registered trademark is used as a package design of the instant product with the same or similar pattern identical or similar pattern as a package design of the instant products, and the Defendant used the figure part of the instant registered trademark in various ways according to its customer and product capacity, and used a separate product source indication such as “B” or “B” on the front or back side of the packaging part of the product, etc., using separate product source indication such as “B” or “B” on the front or back side of the packaging part of the product, which is not the product source indication, and consumers were not aware of the figure part of the instant registered trademark as the product source indication as a result of the questionnaire survey.

If a part that can be recognized as distinctive character among the registered trademarks of this case is found, it shall be deemed as the level of character that expressed the Montreal as a beeb by altering it, such as “Amond.”

2) In the challenged mark, the part, “Nmond,” “HONEY BUTER ALOND,” has no distinctive character as a raw material, and the part, “the part, the central distinctive character of which is recognized,” among the figure parts, is merely used as a package design, and thus has no distinctive character. If there is hard support to find a part that can be recognized as distinctive character among the remaining figures, it shall be deemed as the degree of a human character design, such as “the other part,” etc.

3) The instant registered trademark does not have any part corresponding to “the part, the central distinctive feature of the challenged mark,” and is not similar because the character of the design of alterbol, which can be seen as a part having the distinctive character of both trademarks, is different from the basic characteristics and expression techniques. Thus, the challenged mark does not fall under the scope of the right of the instant registered trademark.

B. Determination as to the similarity of the registered trademark of this case and the challenged mark

Since there is no dispute between the parties as to the fact that goods using the mark subject to confirmation of the designated goods of the instant registered trademark are identical or similar to the designated goods of the instant registered trademark, it is necessary to examine the similarity of both trademarks.

1) Relevant legal principles

The similarity of trademarks ought to be determined depending on whether there is a concern for misconception or confusion as to the source of goods by observing the compared trademark objectively, comprehensively, and differently from the appearance, name, and concept in terms of trade. In particular, the two trademarks should be deemed similar if the dominant impression of the appearance is identical or similar to the identical or similar product, and if the two trademarks are used together in the same or similar product, there is a concern for misconception or confusion as to the source of goods to ordinary consumers. Furthermore, the determination of similarity of trademarks should be made from the perspective of whether there is a concern for misconception or confusion as to the source of goods by ordinary consumers using the two trademarks differently from the two trademarks themselves, rather than from the two trademarks themselves. In addition, where two trademarks are likely to cause misconception or confusion as to the source of goods by considering the impression, memory, association, etc. that the two trademarks provide to ordinary consumers by means of their appearance, name, and concept, etc., the two trademarks should be deemed similar (see, e.g., Supreme Court Decision 2015Hu13488, Jul. 14, 2016).

2) Determination

A) The distinctiveness of the registered trademark of this case

The part of the text of the registered trademark of this case, "HONEY BUTER ALND" is directly identified as "raw materials, etc. in relation to the processed Amond (limited to the alteration of punishment and the addition of a burner)" as the designated goods, and so, it has no distinctive character because it is directly identified as "raw materials, etc." in relation to the previous Montreal (limited to the alteration of punishment and the addition of a burner).

On the other hand, the shape of the trademark of this case is enclosed with a pattern, such as “the upper end,” which combines a pattern, such as “the shape,” and the lower end forms the same shape as “the bottom,” and is combined with “the shape at the bottom.” However, examining the lower end in detail the shape of the trademark of this case: (a) combination of the constituent parts of the color, which is seen as being melting liquid above the physical surface diagrams of the doterter with the shape of the trademark of this case; (b) it is difficult to see that the entire part of the trademark of this case is melting the source of the trademark of this case, and it is often difficult to see that the whole part of the trademark of this case is melting the source of the trademark of this case, and it is not appropriate to see that the whole part of the trademark of this case is an expression of the designated product of this case as “the shape of the trademark of this case,” or the whole part of the designated product of this case, such as the shape of the trademark of this case.

B) Whether the registered trademark of this case and the challenged mark are similar to the external appearance

For the following reasons, the registered trademark of this case and the marks subject to confirmation are similar to a dominant impression that gives the appearance of the two trademarks when observing the appearance of the two trademarks on a different basis from the ordinary consumers’ direct perceptions.

(1) Both packagings are common in that they combines the upper part of the sign in Korean, which is similar to those of the part of the sign, with the size of 'NEY BUT AOLND', on the basis of yellow color, in which the upper part of the sign is similar to those of the Korean language, and there is a combination of 'HONEY BUTER AOLND' in the lower part of the Korean language, and there is a combination of 'HOEY 2007, in which the change of the area occupied most of the lower part of the text reaches the lower part is in line with a tool similar to those of the burner and the Montreal, the 3-mast, a bed, and a bed.

(2) In particular, the shapes of both marks are expressed by ① a stimulation character rather than a stimulation of stimulation of stimulation, ② a stimulation sculpture that flows down in the upper end of the stimulation part, and the largest stimulation character that alters the stimulation of the upper end of the stimulation part into the lower part, and a complex is located at the lower end, and the second large stimulation character, the lower part of the stimulation character, and the lower part of the stimulation of the shape of the stimulation, and the lower part, where the stimulation flows into the upper part, and where the stimulation flow into the upper part, the stimulation of the stimulation of the small stimulation character as a whole, and the stimulation of the stimulation of the upper part.

(3) According to the result of the consumer awareness survey conducted by F (Evidence No. 7), “A” was shown against 300 men and women aged between 20-49 and 300 across the country, and 99% of the respondent’s response to questions asked whether the two products might be confused with the manufacturing company if they come to contact with different places and hours. For that reason, the overall color used in the packaging, tonnage (92.3%), blick, blick, and the posting thereof (85.9%) were included.

(4) However, there are differences in both packages, such as the detailed shape of the altered punishment, the shape of the altered complex, the shape of the upper part, the shape of the shape, whether there is a color satis, and the existence of the indication. However, in light of the result of the consumer recognition investigation conducted by the above F, it is merely a difference in the degree that it is difficult to easily understand as the observation method.

C) Judgment on the Plaintiff’s assertion

(1) The plaintiff asserts that the figure and composition of the registered trademark of this case are identical and similar figures are used as packaging designs for the same kind of product, and thus, they have no or weak distinctiveness of the registered trademark of this case.

However, examining the following packing designs (No. 6 No. 1-10) asserted by the Plaintiff as similar to the composition and Matib, it is difficult to see that the registered trademark of this case and the figure’s appearance are similar to those of the registered trademark of this case, except the packaging of G products. Thus, it cannot be readily concluded that the Plaintiff lost or weak distinctiveness of the figure of the registered trademark of this case. Accordingly, the above assertion by the Plaintiff is without merit.

A person shall be appointed.

(2) In addition, the Plaintiff asserted that the Defendant has no or weak distinctiveness of the instant registered trademark in light of the fact that the Defendant used the figure of the instant registered trademark in various ways according to its customer and product capacity, and used the trademark on the front or back of the packaging of the product, such as using the trademark “(main) B” or “B,” but the trademark right holder does not deny the function of indicating the source of the instant trademark solely on the ground that the trademark right holder uses a different trademark with respect to the same product group by strategic division of multiple trademarks, and it is possible to display two or more trademarks on one product (see, e.g., Supreme Court Decision 2011Do13441, Feb. 14, 2013). Thus, even if the trademark is indicated in the product, the instant registered trademark can function as a product identification mark, so the Plaintiff’s assertion is without merit.

(3) The Plaintiff asserts that the instant registered trademark has no distinctiveness since the Defendant used the instant registered trademark as a package design.

However, even if a design and trademark are not in exclusive selective relationship, if it is deemed to be used for the purpose of indicating the source of another product that can be deemed as the essential function of a trademark, such use shall be deemed to be a trademark (see, e.g., Supreme Court Decisions 2009Hu665, May 14, 2009). Whether it is being used as a trademark should be determined by whether the mark indicated in the actual transactional system is being used as a trademark by taking into account the relation with the product, the mode of the use of the mark, the well-known and well-knownness of the registered trademark, and the intent and use of the user’s intent (see, e.g., Supreme Court Decisions 2010Da58261, Mar. 28, 2013; 2010Da200444, Mar. 29, 2012).

그런데 ① 피고는 이 사건 등록상표를 상표로 사용할 의사를 가지고 상표등록 출원을 하였고 실제로 허니버터아몬드 제품의 포장지 전면에 이 사건 등록상표를 표시하는 방식으로 사용하여 온 점, ② 이 사건 등록상표 중 '허니버터아몬드' 문자 부분은 식별력이 없고, 도형 부분만이 지정상품과 관련하여 식별력이 있는 점, ③ 다양한 연령층의 소비자들이 저렴한 가격 등의 이유로 높지 않은 주의력으로 제품을 고르는 과자, 스낵 등의 상품에는, 새로운 제품을 쉽게 이해할 수 있도록 초코파이, 새우깡, 허니버터아몬드 등의 식별력 없는 문자상표를 제품의 상표로 흔히 사용하고 있어, 포장 전면에 표시된 도형상표가 상품의 식별표지로서 주로 사용되고 있는 점, ④ 수요자들 역시 과자, 스낵 등의 상품의 경우 포장 전면에 표시된 도형으로 제품의 출처를 식별하는 것이 일반적인 점 등을 고려할 때, 이 사건 등록상표 중 도형 부분은 상표로서의 출처표시기능이 인정된다고 보아야 한다.

Therefore, the plaintiff's above assertion is without merit.

(4) The plaintiff asserts that according to the result of the consumer survey (Evidence A No. 13), the figure part of the registered trademark of this case can be seen as not being recognized as a product display.

However, according to the evidence evidence No. 13, as follows, 30% of the questionnaire, which asked the respondent whether the image of five products can be distinguished from what company products can be presented to the respondent, and 52.8% of the mark cannot be separated. The distinctiveness of the mark is not required to be specifically recognizable, but can be recognized as a product mark of any specific company, and it seems sufficient to recognize that the mark is a product mark of any specific company, and it appears to be due to the similarity between the trademark of this case (A) and the trademark subject to confirmation (D). Further, in addition, 30% of the figure of the package, it appears that the registered trademark of this case and the trademark subject to confirmation can be separated as a product of any company only with the figure of the package. Thus, it cannot be concluded that the part of the registered trademark of this case cannot be concluded as a product figure solely on the ground that 52.8% of the above questionnaire was not separated as a product of any company.

A person shall be appointed.

(5) The Plaintiff asserts that both marks are not similar because there is no part corresponding to “the part in which the challenged mark is recognized as the central distinctive character of the challenged mark” in the instant registered trademark.

However, even if ordinary consumers recognize "the part" as a separate mark, it is difficult for ordinary consumers to recognize the challenged mark as a separate source, in light of the shape similar to the figure of the trademark of this case, general consumers may confuse that the trademark of this case is used in addition to "the trademark of this case". In other words, the trademark of this case and the challenged mark are similar to the dominant impression and concept that the appearance of the trademark of this case is similar, although the trademark of this case and the challenged mark are different from some elements of the figure, it is difficult for ordinary consumers to recognize the challenged mark as a separate source, and thus, it cannot be seen that the similarity of the appearance of the trademark of this case has reached the degree to deny it. Accordingly, the trademark of this case and the challenged mark of this case can not be seen as being confused with the trademark of this case with the trademark of this case.

(6) The Plaintiff asserts that the design of the altered blick character, which can be deemed as a supplementary part of the instant registered trademark and the challenged mark, is different from the face shape, body form, expression techniques indicating the number of days, and design, which are all different from the basic features of the design, and thus, the mark cannot be deemed similar.

However, the figure portion of the registered trademark of this case is, however, the method of expression of burners, Montreals, and bees and the overall mechanism is an organic expression, and the detailed form of individual alteration can not be deemed as having distinctiveness only by separating only the detailed form of the shape. Furthermore, as seen below, as seen in the comparison table, the modified character of both marks is similar in the number, work, expression, shape, etc. of bees, and the partial difference claimed by the Plaintiff is merely a detailed difference that is difficult for ordinary consumers to easily understand when observing in the whole and in separation. Accordingly, the Plaintiff’s above assertion is without merit.

A person shall be appointed.

D) Comprehensive determination

As such, two marks are similar to the dominant increase in their appearance, and if they are used for the same or similar goods, they are likely to cause mistake or confusion as to their source to ordinary consumers. Thus, they are similar.

C. Sub-committee

Therefore, the decision of this case which judged that the challenged invention falls under the scope of the right of the registered trademark of this case is legitimate.

3. Conclusion

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

The proposal of a judge by the presiding judge

Judges Kim Jong-soo

Judge Lee Dong-young