[1] Standard and method of determining whether a designated service business is similar

[2] In a case where Company A, a holder of prior registered service mark 1 “,” prior registered service mark 2 “, and prior registered service mark 3 “,” filed a petition for a trial to invalidate the registration of a service mark against Company B on the grounds that the registered service mark is identical or similar to the registered service mark, and the designated service is identical or similar to that of the registered service mark, the case holding that the lower court erred by misapprehending the legal doctrine and failing to exhaust all necessary deliberations, on the contrary, inasmuch as the use of the same or similar service mark on both services is likely to be mistaken for that of the same or similar service provided by the same business entity in light of general transaction norms

[1] Whether a designated service business is similar shall be determined on the basis of whether it is likely to be mistaken for a service provided by the same business entity when using the same or similar service mark. However, the determination shall be based on the general transaction norms, comprehensively taking into account the circumstances of the transaction, such as the nature or content of the service provided, the method and place of provision, the scope of the service provider, the user, and whether the goods related to the provision

[2] In a case where: (a) the holder of a pre-registered service mark “ ” under the pre-registered service mark 1 “,” “,” “re-registered service mark 2 “,” “,” “re-registered service mark 2 “,” “,” “re-registered service mark 3 “ ,” which does not sell, intermediate, or wholesale and retail goods; (b) the holder of the pre-registered service mark “ ,” which does not fall under the category of the pre-registered service mark “ .....” The case held that the lower court erred by misapprehending the legal doctrine regarding the pre-registered service mark “ ......” the registered service mark owner’s pre-registered service mark “ ......,” which does not fall under the category of the pre-registered service mark “ .....,” which is identical to the pre-registered service mark “ ....” in light of the fact that the pre-registered service mark is not likely to be sold or rendered to consumers for the same reason that the pre-registered service mark is identical with the registered service mark.

[1] Article 7(1)7 (see current Article 34(1)7) of the former Trademark Act (wholly amended by Act No. 14033, Feb. 29, 2016) / [2] Article 7(1)7 (see current Article 34(1)7) of the former Trademark Act (wholly amended by Act No. 14033, Feb. 29, 2016)

[1] Supreme Court Decision 2003Hu1192 Decided May 12, 2005 (Gong2005Sang, 984) Supreme Court Decision 2006Hu3298 Decided June 14, 2007

EMM Korea Co., Ltd. (Law Firm Squa et al., Counsel for the defendant-appellant)

B&C Co., Ltd. (Patent Attorney Lee Jae-chul et al., Counsel for the defendant-appellant)

Patent Court Decision 2015Heo6749 Decided June 16, 2016

The judgment below is reversed, and the case is remanded to the Patent Court.

The grounds of appeal are examined (to the extent of supplement in case of supplemental appellate briefs not timely filed).

1. As to the ground of appeal on similarity of designated service business

A. Whether a designated service business is similar or similar should be determined on the basis of whether the same business entity is likely to be mistaken for a service provided when using the same or similar service mark. However, the determination should be based on the general transaction norms, comprehensively taking into account the circumstances of the transaction, such as the nature or content of the service provided, the method and place of provision, the provider of the service, the scope of consumers, and whether the goods related to the provision of the service coincide (see Supreme Court Decision 2003Hu1192, May 12, 2005, etc.).

B. We examine the above legal principles and the evidence duly adopted by the court below.

1) The Defendant’s registered service mark of this case (hereinafter “instant registered service mark”) refers to the designated service business as “ department store business, large-scale discount business, Smarket business, and convenience store business.” This is to provide the Plaintiff’s prior registered service mark 1 (hereinafter “”) and prior registered service mark 2 (hereinafter “instant”) with the services of selling, acting as an agent, or mediating sale of, or arranging for, clothing, milk, shoes, caps, carvings, and cosmetics, and the prior registered service mark 3 (hereinafter “instant registered service mark”) provides the services of selling, acting as an agent, or selling, goods related to fashion, such as clothes, shoes, horses, horses, and bags.

2) Among the designated service business of the instant registered service mark and the designated service business of pre-registered service mark 1 and 2, sales agency business and retail business among the designated service business of the instant registered service mark 3, the sales agency business and the pre-registered service mark 3 provide consumers with the services of selling clothes, fashion, etc. directly, the nature, contents and methods of providing are similar, and goods and consumers related to the provision of the service are common.

3) The designated service business of the instant registered service mark is different from the designated service business of the prior registered service mark in that it sells various products at a certain place. However, in light of the following circumstances, if a service mark identical or similar to the two service businesses is used, it is likely to be mistaken as a service provided by the same business entity in light of the general trade norms.

A) In light of the actual circumstances of the instant registered service mark at the time of determining the registration of the instant registered service mark, the Plaintiff displayed and sold such fashions as fryings, such as clothes, etc., at one store, building, or neighboring place, or the same business entity, along with department stores and large-scale discount business, has a tendency to engage in Schlage and convenience store business.

B) In particular, considering the actual circumstances of the transaction that clothing, fashion, etc. is high in the department stores, the products handled by department store business and the designated service business of pre-registered service marks are considerably overlapped.

C) At the time of filing an application for prior-registered service marks, the Plaintiff could not designate the “general name” of department store business, large-scale discount business, and supermarket business as the service business name. Therefore, in the event that the Plaintiff intended to engage in the designated service business of such comprehensive name, the Plaintiff had no choice but to designate it as a service business by listing one of the sales agency and wholesale and retail service businesses for the products to be handled.

D) A department store or a large-scale discount shop inside a department store is supplied with goods from a manufacturer and sells them directly to consumers, and most of them are to pay rent or fees to a department store or a large-scale discount shop, and its operating method is similar to general clothing and miscellaneous retail store.

E) Similar goods of the Korean Intellectual Property Office applied at the time of the examination of the instant registered service mark, and the criteria for the examination of service business are similar to the name of the instant registered service business, which is the designated service business of the instant registered service mark, including cosmetics, bags, shoes, online sales agency, brokerage business, etc.

4) Nevertheless, the lower court determined that the instant registered service mark does not fall under Article 7(1)7 of the former Trademark Act (amended by Act No. 14033, Feb. 29, 2016) on the grounds that the instant registered service mark and the prior registered service mark are not similar to the instant registered service mark and the prior registered service mark.

In so determining, the lower court erred by misapprehending the legal doctrine on the similarity of service business, thereby adversely affecting the conclusion of the judgment.

2. Conclusion

Therefore, without further proceeding to decide on the remaining grounds of appeal, the judgment of the court below is reversed, and the case is remanded to the court below for a new trial and determination. It is so decided as per Disposition by the assent of all participating Justices

Justices Lee Ki-taik (Presiding Justice)