The case holding that “health management business” in the designated service business of the applied service mark “ ,” the designated service business of “ ,00,000” and the prior registered service mark 1 and 2 “ ,” are similar.

The case holding that the designated service business, which is the designated service business of the applied service mark “,” is similar in view of the contents of the service business compared with the “health management business” among the prior registered service mark 1, 2, and the designated service business of “,” and that both designated service businesses are similar inasmuch as the suppliers and consumers of the service business overlap.

Article 7 (1) 7 of the Trademark Act

Supreme Court Decision 2002Hu673 Decided July 26, 2002 (Gong2002Ha, 2096) Supreme Court Decision 2001Hu1037 Decided October 25, 2002 (Gong2002Ha, 2910) Supreme Court Decision 2005Hu1905 Decided June 14, 2007

Plaintiff (Patent Firm Suspension and Patent Attorney Park Jae-hwan et al., Counsel for the plaintiff-appellant)

The Commissioner of the Korean Intellectual Property Office

April 10, 2009

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 December 30, 2008 on the case No. 2008 Won2889 is revoked.

1. Basic facts

[Reasons for Recognition] Facts without dispute, Gap evidence 1, 3, 4, Eul evidence 1 and 2

A. The pending service mark

(1) Date/application number: May 16, 2007/ 2007-13579

(2) Composition:

(3) Designated service business: “Non-Saman Management Business” in Chapter 44 classified into service business categories.

(4) Applicant: The plaintiff

(b) Prior registered service mark 1;

(1) Date of application/registration date/registration number: March 8, 2006/ April 4, 2007/No. 147096

(2) Composition:

(3) Designated service business: “Lice service business, sanitary facility leasing business, health care business, health care business, physical care business, physical care business, and medical assistance business” in Chapter 44 classification of service business.

(4) Person entitled to registration: Kim Jong-nam

(c) Prior registered service mark 2;

(1) Date of application/registration date/registration number: March 8, 2006/ April 23, 2007/ No. 1478311

(2) Composition:

(3) Designated service business: “Lice service business, sanitary facility leasing business, health care business, health care business, physical care business, physical care business, and medical assistance business” in Chapter 44 classification of service business.

(4) Person entitled to registration: Kim Jong-nam

(d) The procedural details;

(1) As to the Plaintiff’s application for the registration of the B/L, the Korean Intellectual Property Office rendered a decision of refusal on March 4, 2008 on the ground that the pending service mark falls under Article 7(1)7 of the Trademark Act because the registered service mark 1 and 2 and its marks and designated services are identical or similar to each other.

(2) The Plaintiff filed a petition for a trial seeking the revocation of the said decision of refusal on the grounds of objection, but the Intellectual Property Trial and Appeal Board deliberated on it as 2008 Won2889, and decided on December 30, 2008 that “health management business” is included in “health management business” among the pre-registered service mark 1 and 2, and rendered the instant trial ruling as stated in the purport of the purport of the claim that the Plaintiff dismissed the petition for a trial on the same ground as the above decision of refusal.

2. Determination as to whether the pending service mark falls under Article 7(1)7 of the Trademark Act

A. Determination as to the similarity of marks

The pending service mark of this case is identical to the prior registered service mark 1, and there is only difference between the appearance and the prior registered service mark 2, and the name is identical with that in Korean and English. As such, the pending service mark of this case and the prior registered service mark 1 and 2 are identical and similar to each other, if used in the same or similar service business, there is sufficient concern for general consumers or traders to mislead or confuse their source.

B. Determination as to the similarity of designated service business

(1) The parties' assertion

The plaintiff asserts that the "Baman Management Business", which is the designated service business of the applied service mark of this case, belongs to beauty art-related business, while the "health management business" among the designated service business of the prior-registered service mark 1 and 2 belongs to the medical aid business, and is not similar because it falls under different kinds of industry and occupation respectively under the Korean Standard Industrial Classification publicly notified by the Statistics Korea and the Korean Standard Occupational Classification. Accordingly, the defendant asserts that the "Baman Management Business" included in the designated service business of this case, the designated service mark of this case, and the "Baman Management Business" included in the prior-registered service mark 1 and 2, belongs to both the name and the "Baman Management Business".

(2) Determination:

Article 7(1)7 of the Trademark Act provides that trademarks identical or similar to the registered trademark of another person on an earlier application and used on goods identical or similar to the designated goods shall not be registered. In general, the similarity of services shall be determined on the basis of whether the use of a service mark identical or similar to the designated goods is likely to be mistaken for the services provided by the same enterprise in the event of the use of the similar or similar service mark compared to the compared service. The determination shall be made in accordance with the general transaction norms in consideration of the circumstances of the transaction, such as the nature and contents of the service provided, the means and place of provision, the provider of the service, and the scope of the user, etc. (see, e.g., Supreme Court Decisions 2002Hu673, Jul. 26, 2002; 201Hu1037, Oct. 25, 2002). In interpreting the designated service, the interpretation of the designated service should not be limited to the interpretation of the Korea Standard Industrial Classification Notice, etc., which is an administrative Act, and shall be comprehensively considered not only after the prior concept of the service, purpose, specific nature and circumstances.

In full view of the purport of the arguments and arguments as to this case, the prior meaning of “health management” can be summarized as an active effort of each individual to maintain his/her own body and mental health condition. In recent years, research on the aspect of prescribing that the health is not undermined and that the application in actual life is important so as not to harm the health rather than dependent on medical treatment, and the application in actual life is made more effort to maintain and promote health, centering on the Health Promotion Center, the Public Health Center, and the Board of Education of each region. In the modern society where materials are scalized, problems such as excessive food consumption are being raised. In general, rain is considered as health risk factors, and the awareness that the health has become healthy, and thus prevention and elimination of rain by workers in the medical industry and the beauty art auxiliary industry, that is, non-management is becoming an important part of health management, and consumers are also aware that only those women want to be aware of health care for the purpose of health care and improvement of the health care industry.

According to the above facts, the "BS management business", which is the designated service business of the applied service mark of this case, is very similar to the "health management business" among the designated service business of prior-registered service mark 1 and 2, and the supplier and consumers of the service business are also overlapping. Thus, the designated service business of this case and the designated service business of prior-registered service mark 1 and 2 are similar.

C. Judgment on the plaintiff's other assertion

Meanwhile, the purport of Article 7(1)7 of the Trademark Act is to avoid misconceptions and confusions as to the source of ordinary consumers. At the time of the filing of the application, the instant pending service mark was widely known to ordinary consumers as the Plaintiff’s mark in relation to “non-tention management business.” The right holder of the registered service mark 1 and 2 applied for the addition of “non-tention management business” as the designated service mark 1 and 2 as the basic application, but the decision of refusal was made as a result of the Plaintiff’s objection. Thus, even if the pending service mark is registered, it does not cause misconceptions and confusion as to source between the pending service mark and the registered service mark 1 and 2, and thus, Article 7(1)7 of the Trademark Act should not be applied on the grounds of the prior registered service mark 1 and 2.

However, if the later-application service mark is similar to another person's registered service mark by earlier application and used for a service business similar to the designated service business of another person, it cannot be registered even if the later-application service mark is a well-known service mark widely known at home and abroad (see Supreme Court Decision 90Hu2034 delivered on June 11, 191, etc.). Thus, we cannot accept the Plaintiff's above assertion based on a different view.

3. Conclusion

Therefore, the registration of the pending service mark falls under Article 7 (1) 7 of the Trademark Act and its registration should be rejected. Since the decision of this case is legitimate as the conclusion is consistent with this, the plaintiff's claim seeking its revocation is dismissed.

Judges Kim Yong- Dis (Presiding Judge)