207Heo12145 Decision (Trademarks)

nan

The Commissioner of the Korean Intellectual Property Office

May 8, 2008

May 29, 2008

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 October 24, 2007 on the case No. 2007 Won365 is revoked.

1. Basic facts

[Ground of Recognition] Unsatisfy, Gap evidence 1, 2, 4, 14, and Eul evidence 1

A. The Plaintiff’s application date/application number of the Plaintiff’s trademark (1): / 40 on January 24, 2006 - 2006 - 3810 (2): (3) the designated goods of category 16: the Plaintiff’s trademark is “the Plaintiff’s trademark of this case” (hereinafter referred to as “the Plaintiff’s trademark of this case” in the following cases: the Plaintiff’s patent of this case’s trademark of category 16 pen, pent, pent, ice, pent, pen, pent (hereinafter referred to as “instant 7 designated goods”)

B. The filing date of the prior registered trademark (1) / the registration date / registration number: October 22, 1997 / 45693 (2) on September 30, 1999: The designated goods of Formula (3) under the Enforcement Rule of the former Trademark Act (amended by the Ordinance of the Ministry of Trade, Industry and Energy No. 83 of February 23, 1998): the year, pents, pents, pents, pents, pents, Northerns, pents, pocketbookss, etc.

C. (1) On December 15, 2006, the Korean Intellectual Property Office rendered a decision rejecting the Plaintiff’s request for a trial on the refusal of the application for the trademark of this case on the grounds that the trademark of this case is similar to the prior registered trademark, etc. and the mark and the designated goods, and thus cannot be registered under Article 7(1)7 of the Trademark Act. Accordingly, on January 12, 2007, the Plaintiff filed a petition for a trial on the aforementioned decision of refusal with the Korean Intellectual Property Tribunal (2007 Won365) on October 24, 2007, the Korean Intellectual Property Tribunal rendered a decision dismissing the Plaintiff’s request for a trial on the ground that the trademark of this case is similar to the prior registered trademark, etc., and the trademark of this case is similar to the prior registered trademark and the designated goods cannot be registered.

2. Summary of the parties' arguments and the issues of the instant case

A. Summary of the plaintiff's assertion

Since the pending trademark and the pre-registered trademark are not similar to all of their external appearance, names, and concepts, the decision that the Korean Intellectual Property Office rejected the registration pursuant to Article 7(1)7 of the Trademark Act is unlawful.

B. Summary of the defendant's assertion

The trademark of this case and the pre-registered trademark of this case can be called and conceptualized only with the part "FAOULA", which is a common component of both separate observation and common components, and their designated goods are similar to each other. As such, the decision of the Korean Intellectual Property Office refusing the registration pursuant to Article 7 (1) 7 of the Trademark Act is lawful.

C. Key issue of the instant case

The key issue of the instant case is whether the registered trademark and the mark are similar to the registered trademark of this case (the Plaintiff does not dispute whether the designated goods of the applied trademark of this case are identical or similar to the registered trademark of this case) should be rejected.

3. Determination

A. Whether registration should be refused under Article 7(1)7 of the Trademark Act with respect to the seven designated goods of this case (1) criteria for determining the similarity of marks (A)

The similarity of trademarks shall be determined by whether there is a possibility of mistake or confusion as to the origin of the goods by observing the appearance, name, and concept of two trademarks in an objective, overall, and separately, and on the basis of a direct perception that ordinary consumers or traders feel with respect to the trademark. The combined trademark consisting of each constituent element of letters, letters, or figures shall not necessarily be the name and concept of the entire constituent part, but shall not be an integral combination with each constituent part to the extent that it is deemed natural if it is observed separately from each constituent part, unless it is an integral combination to the extent that it is not natural in the trade. In addition, where it is possible to think of two or more names or concepts from one trademark, if it is deemed that one of them is identical or similar to another's trademark, the two trademarks are similar (see Supreme Court Decision 2003Hu1871, Oct. 15, 2004).

The pending trademark of this case is a combination mark of figures and letters, which is drawn up in color on a white basis, in the shape that seems to have modified the yellow part of the solar pattern, according to the color of the figure “FRULA5” on the upper side, and on the center part, “F5” is a combination mark of figures and letters, which is drawn up in color on a white basis. The registered trademark of this case is “F1” as well as the words “F1” written below, and “F1” written above is “from the end of the left part of the F1, and is a combination mark of letters, letters, and letters written “1” in the “F1” written above. Accordingly, the trademark of this case and the registered trademark of this case are different in appearance from the trademark of this case.

On the other hand, since the trademark of this case is separated from the figure and the figure parts in appearance, and it is not necessary to form a new concept through the combination thereof, it is not possible to separate and observe the figure and the figure parts from the word parts to the extent that they are natural in the trade, so it can be separated and observed only by the word parts. Furthermore, the word part "F5" and "F5" are located at a different column, and are not different from each other, and it cannot be seen as an integral combination to the extent that it is deemed natural in the trade. Thus, the registered trademark "it is difficult to separate and observe only the above parts" and "FOMULA5" can be seen as being separated from the word part "FOMAA" and "It is difficult to see that it is natural to separate and observe the above parts "FOMA" from the word part "F1" to the word part "non-permanent and non-permanently different from each other."

As seen above, as a result of separate observation, the pending trademark and the prior registered trademark of this case are deemed to fall under a similar mark as provided by Article 7(1)7 of the Trademark Act, since the trademark of this case and the prior registered trademark of this case are deemed to have common characters of “FORULA” or “FORUA”, and where these marks are abbreviationd only by these essential parts, their names and concepts are the same.

(C) Judgment on the Plaintiff’s assertion

1) The Plaintiff asserts that the English language “FRMUA”, a common component of the applied trademark of this case and the prior registered trademark, constitutes “FRMUA” in relation to the designated goods (“FRUA”) and “FRUA”, and thus, constitutes either a technical mark of the nature, simple or ordinary mark, or a mark indicating goods related to a person’s business, and thus, cannot be deemed an essential part of each mark as there is no distinctiveness. However, the English language “FRUA” has the purport of “official, method, manufacturing method, and official specification,” and thus, the English language constitutes a mark that has no meaning related to the nature of the trademark of this case and the prior registered trademark, or is extremely weakly weak in relation to each designated goods of the pending trademark of this case. Accordingly, the Plaintiff’s assertion cannot be accepted.

2) In addition, the Plaintiff asserts that the above part of “FORA” is not an essential part of each mark because it is registered on goods identical with or similar to the designated goods of the applied trademark in this case and the prior registered trademark, and thus it is not possible to become an essential part of each mark because it has already lost its distinctiveness. However, the entries of evidence Nos. 3 and 5 through 12 in each of the above evidence are insufficient to deem that the mark “FORA” is widely registered as a trademark on goods identical with or similar to the designated goods of each of these marks to the extent that it cannot be an essential part of the applied trademark in this case and prior registered trademark because its distinctiveness is weak, and there is no other evidence to acknowledge this. Therefore, the Plaintiff’s above assertion cannot be accepted

3) Lastly, the Plaintiff asserts that “The Form 1” portion of the applied trademark of this case is not similar to each other. According to the evidence No. 13, it can be recognized that there is a unique meaning of the Plaintiff’s designated goods used in the Form 1, “The Form 1” portion of the applied trademark of this case, “the number of the designated goods of this case is the same as that of the designated goods of the Republic of Korea, so it is difficult to recognize that there is no possibility of confusion between the Plaintiff and the designated goods of this case as a whole, and there is no other evidence to acknowledge that there is no possibility of confusion between the Plaintiff and the designated goods of this case, “the number of the registered trademark of this case” or “the number of the designated goods of this case,” and “the portion of the registered trademark of this case cannot be seen as one of the designated goods of the Republic of Korea as the whole, so it is difficult to recognize that there is no possibility of confusion between the Plaintiff and the designated goods of this case.”

Ultimately, the applied trademark of this case is similar to the prior registered trademark, and the trademark of this case is identical to the seven designated goods of this case among the designated goods. Thus, the trademark of this case relating to the seven designated goods of this case should be rejected in accordance with Article 7(1)7 of the Trademark Act.

B. Whether the decision of refusal against the applied trademark of this case is legitimate

As seen above, the applied trademark of this case cannot be registered in relation to the seven designated goods of this case among the designated goods, and even if there exist grounds for rejection of registration only for one of the designated goods, such as the applied trademark of this case, if there are many designated goods, the registration of the application of this case shall be rejected entirely (see Supreme Court Decision 2004Hu2109, Mar. 10, 2006). Thus, the application of this case should be rejected entirely without examining whether the registration of the trademark of this case should be rejected under Article 7 (1) 7 of the Trademark Act in relation to the remaining designated goods. Accordingly, the decision of the Korean Intellectual Property Office rejecting the application of this case is lawful.

4. Conclusion

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

Judge Lee Jong-soo

Judges Kim Kim-soo

Judges Yedon Line