[1] In a case where there is a similar part between the compared trademarks, if there is little possibility of being separated or discounted only by the said part, taking into account the general transaction situation, etc., or where it is possible to avoid confusion of the source clearly when the overall observation is made, whether a request for prohibition of use of a trademark may be made (negative), and whether the same legal principle applies to service marks, goods marks, and business marks as provided by Article 2 subparagraph 1 (a) and (b) of the Unfair Competition Prevention and Trade Secret Protection Act (affirmative)

[2] In a case where Company A sought a prohibition against infringement of trademark rights against Company B, the case holding that “B,” which is the trademark and service mark of Company B, is not similar to “B,” “Dong Branch,” and “Dong Branch,” which is the trademark and service mark of Company A, and “Dong Branch,” which is the trademark and service mark of Company B

[1] The similarity of a trademark shall be determined based on whether there is a concern for general consumers or traders to mislead or confuse the source of goods in the designated goods transaction based on the direct perception that ordinary consumers or traders feel about the trademark by observing the external appearance, name, and concept objectively, comprehensively, as a whole. Even if there is a similar part between the compared trademarks, the similarity of trademarks shall not be deemed a similar trademark, and thus, a claim for prohibition of the use of such trademark may not be filed in cases where there is little possibility of being separated solely on the part, considering the general transaction situation surrounding the goods in question, i.e., the characteristics of the market, the degree or knowledge of consumers, the degree of attention, whether there is an expert, the age, the nature of the goods in question, the transaction method, the place of transaction, the post management, the extent of well-known and use of the trademark in question, the relationship with the goods in question, and the ordinary language life of the consumers. Such a legal doctrine also applies to the goods as prescribed in Article 2 subparagraph 1(a) and (b) of the Service Marks and Trade Secret Protection Act.

[2] In a case where Company A sought a prohibition against infringement of trademark rights against Company B, the case holding that it is unlikely to separate the part of “A”, “B”, “B”, which is common to the trademark and service mark of Company A, from among ordinary consumers or traders and traders and general consumers or traders who use Party B’s mark, considering the general transaction situation surrounding the construction and sale of apartment buildings using Party B’s mark, and the use situation of Party B’s mark, etc. comprehensively and comprehensively, the case holding that the same applies to the case where Company B’s trademark and service mark “B”, “B”, “B” which is a trademark and service mark of Company B, is not likely to be separated from the part of “B”, “B” or “B” which is a trademark mark, and it is highly likely to be called and conceptualized as “B” or “B’s product and service mark, etc., which is a larger portion of the entire mark “B’s product and service mark” or “B’s product and service mark,” which is a trademark mark.

[1] Articles 2(3), 65, and 66(1)1 of the Trademark Act, Article 2 subparag. 1(a), (b), and Article 4 of the Unfair Competition Prevention and Trade Secret Protection Act / [2] Articles 2(3), 65, and 66(1)1 of the Trademark Act, Article 2 subparag. 1(a) and (b), and Article 4 of the Unfair Competition Prevention and Trade Secret Protection Act

[1] Supreme Court Decision 95Hu1821 Decided July 30, 1996 (Gong1996Ha, 2670) Supreme Court Decision 2008Hu4783 Decided April 9, 2009 (Gong2009Sang, 675)

Dongbu Construction Co., Ltd. (Attorney Kang Dong-gu et al., Counsel for the defendant-appellant)

Dong Housing Construction Corporation

Seoul High Court Decision 2008Na95382 decided January 20, 2010

The appeal is dismissed. The costs of appeal are assessed against the plaintiff.

The grounds of appeal are examined.

1. Regarding ground of appeal No. 1

In light of the records, the defendant can only know that he constructed or sold an apartment using the sign "Blue House" or "Blue House Blue House" from 2001, and there is no evidence to prove that the defendant used the sign "Blue House" or "Dong House" independently as an identification mark for other goods, services, business, etc. in relation to the construction, sale, etc. of the apartment. Meanwhile, in determining the similarity of signs used by the defendant in the transaction society, the part "Dong House Blue House Blue" among the signs "Dong House Blue House" used by the defendant in the transaction society cannot be viewed as an independent sign that is separate from the part "Blue House Blue House" to general consumers.

The judgment of the court below to the same purport is correct, and there is no violation of a misapprehension of legal principles as to the specification of the object of preparation.

2. Regarding ground of appeal No. 2

The similarity of a trademark shall be determined based on whether there is a concern for general consumers or traders to mislead or confuse the origin of the designated goods in the transaction of the designated goods by observing the external appearance, name, and concept objectively, comprehensively, as a whole, and on the basis of a direct perception that ordinary consumers or traders feel about the trademark. Even if there is a similar part between the compared trademarks, it shall be determined based on the general transaction situation surrounding the goods, i.e., whether there is a consumer's re- or knowledge, degree of caution, degree of gender, whether there is an expert, gender, characteristics and transaction methods of the goods in question, place of transaction, post-management, degree of awareness and use of the trademark, relationship with the goods in question, consumer's daily language, etc. (see, e.g., Supreme Court Decisions 95Hu1281, Jul. 30, 1996; 2009Hu28148, Apr. 28, 2009).

In light of the above legal principles and the records, among the Defendant’s use marks, the “Dong House Blue” and “Blue House Blue” cannot be deemed to be an integral combination to the extent that is naturally indivisible if observed separately from each other. Therefore, there is no room for the Defendant’s use marks to be called and conceptualized solely with the “Dong” or “Dong House”, which is part of the constituent parts.

However, according to the records, the defendant completed the registration of incorporation on March 14, 1984 as Dongbu Housing Construction Co., Ltd. (Dongbu Housing Construction Co., Ltd.) and applied for a service mark on May 7, 2002 as a building sale business, etc. which consists of “BLIMFE” and “BLIPE” and obtained each service mark registration number No. 92829 and No. 92830 on November 6, 2003. At the time of the closing of argument in the court below, it was practical to use each service mark registration number with the name or its abbreviation and its outer wall of apartment sale or apartment, etc., and, at the same time, it appears that the defendant's use of the "Dongbu Housing Co., Ltd. (Dongbu Housing Construction Co., Ltd.)" and the "Dongbu Housing Co., Ltd. (hereinafter referred to as "Dong Housing Co., Ltd., Ltd. (hereinafter referred to as "Dong Housing Construction Co., Ltd."), the defendant's general apartment Housing Construction Co. (hereinafter referred to the "Dong Housing Co.").

Therefore, the Plaintiff’s trademark, service mark, product mark, business mark, and appearance as well as the name and concept of the Plaintiff’s trademark of this case, which is the Defendant’s use sign, is not likely to cause mistake or confusion as to the goods or services or the source of business. This also applies to the Plaintiff’s product mark and business mark in the case of “Dong Dongbub Loans”.

Therefore, the judgment below to the same purport is just, and contrary to the allegations in the grounds of appeal, there were no errors in the misapprehension of legal principles regarding similarity of marks.

3. As to the third ground for appeal

In order to constitute an unfair competition act under Article 2 subparagraph 1 (c) of the Unfair Competition Prevention Act, the act of damaging the distinctiveness or reputation of another person's mark by using the name, trade name, trademark, or container or package of goods, or other goods identical or similar to the other person's goods or business, or by selling, distributing, importing, or exporting goods using such goods, which are widely recognized in the Republic of Korea. As seen above, the judgment of the court below that the mark used by the defendant is not identical or similar to the plaintiff's goods mark, business mark, "Dongbu" or "Dongbuggggg," is justifiable. However, as at the time of the closing of argument of the court below, the court below's additional decision that the plaintiff's above goods mark or business mark is insufficient to be deemed to have reached a degree of well-known beyond the degree of well-knownness in relation to the apartment construction or sale business is not affected by the conclusion of the judgment.

4. Conclusion

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.

Justices Shin Young-chul (Presiding Justice)