[1] In a case where there is an essential part of a trademark, whether it is necessary to compare and determine the similarity of the trademark with an essential part (affirmative), and whether the part constituting the trademark with no or weak distinctiveness can be an essential part (negative)

[2] Method of determining whether a part of a combined trademark has distinctiveness that can function as an essential part, and method of determining the similarity of a trademark where the whole composition part of a trademark has no distinctiveness

[3] In a case where foreign company Gap, the right holder and user of the prior-registered trademark " " " "" and " " " "," are a service mark which has been filed and registered for unlawful purposes by imitateing prior-registered (used) trademarks, and thus, they correspond to Article 7 (1) 7, 11, and 12 of the former Trademark Act, the case holding that the registered service mark and the prior-registered (Use) trademarks cannot be deemed as an essential part showing independent distinctiveness, and the registered service mark and the prior-registered trademark are not similar in all respects, such as external appearance, name, and concept

[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) / [3] Article 7(1)7 (see current Article 34(1)7) and 11 (see current Article 34(1)11) and 12 (see current Article 34(1)12) of the former Trademark Act (wholly amended by Act No. 14033, Feb. 29, 2016)

[1] [2] [3] Supreme Court Decision 2015Hu932 Decided March 9, 2017 (Gong2017Sang, 662) / [1] Supreme Court Decision 2001Hu1808 Decided December 14, 2001 (Gong2002Sang, 321) Supreme Court Decision 2004Hu912 Decided May 25, 2006 (Gong2006Ha, 1187), Supreme Court Decision 2015Hu1690 Decided February 9, 2017 (Gong2017Sang, 591) / [2] Supreme Court Decision 95Hu1494 Decided March 22, 196 (Gong196Sang, 1404) and Supreme Court Decision 2009Hu14979 Decided April 27, 2015 (Gong209Hu14097 decided March 27, 2009)

Montreal Energycomer (Patent Attorney Kim Tae-tae et al., Counsel for the defendant-appellant)

Defendant (Patent Attorney Jeong-young et al., Counsel for the defendant-appellant)

Patent Court Decision 2016Heo4108 Decided October 20, 2016

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

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

1. In principle, the similarity of combined trademarks consisting of two or more letters or diagrams shall be determined based on the overall appearance, name, and concept of their constituent parts. However, if there is an essential part, in order to induce an appropriate conclusion of the overall observation, it is necessary to compare and determine the similarity of trademarks with the essential part in order to induce an appropriate conclusion of the overall observation (see, e.g., Supreme Court Decisions 2015Hu1690, Feb. 9, 201). In addition, regardless of other constituent parts, the essential part of a trademark becomes the subject of comparison when determining similarity with another trademark because of its independent distinctive character that is perceived as being placed on ordinary consumers, regardless of other constituent parts, the part that has no or weak distinctiveness among the constituent parts of the trademark cannot be deemed as an essential part (see, e.g., Supreme Court Decisions 2001Hu1808, Dec. 14, 201; 2005Hu52064, May 29, 2005).

Meanwhile, when determining whether a part of a combined trademark has distinctiveness that can function as an essential part, the circumstance in which many persons have registered or applied for registration with respect to goods identical or similar to the designated goods can also be considered (see, e.g., Supreme Court Decisions 95Hu1494, Mar. 22, 1996; 2008Hu5151, Apr. 23, 2009). This should be determined by comprehensively taking into account the number of trademarks registered or notified publicly, the number of applicants or trademark right holders, the degree of inherent distinctiveness of the relevant part, the relationship between the designated goods and the designated goods, and the existence of circumstances in which it is deemed inappropriate to enable a specific person to monopoly the designated goods for public interest.

If the entire composition of a trademark has no distinctiveness, only a part of the trademark cannot be deemed an essential part, and thus, the similarity should be determined on the basis of the entire trademark (see Supreme Court Decisions 2000Hu2453, Apr. 27, 2001; 99Hu1843, Jun. 29, 2001, etc.).

2. In light of the above legal principles and records, the similarity between the registered service mark (service mark registration number omitted) of this case that the Defendant organized as the right side and registered the designated service as the “cellf service restaurant business, carpet business, etc.” and the Plaintiff’s registered service mark (service mark registration number omitted) and the designated goods as “non-toxic beverage for nutrition supplement” or “energy-related beverage with enhanced non-energy/hon acids” as indicated in the judgment of the court below, and used the designated goods as “energy-related” and “energy-related” shall be determined.

A person shall be appointed.

The registered service mark of this case and the prior-use trademark (use) trademarks include “MONTS” which are recorded as “mon posters” or “mon posters.” However, according to the records, multiple service marks, including the same and similar services as the designated service prior to October 16, 2013, which are the filing date of the instant registered service mark, are registered or published differently by the holder of the instant registered service mark or applicant, or by using the same or similar service mark as “ICEMNTS,” “MOB MUNSS PZER,” “MONTS PZE,” “MONSS Pzym,” “monterzym,” “BE”, and “broster” or “marter” as the filing date of the instant registered service mark or the application date of the trademark registration of the same or similar service mark as the applicant of the instant registered service mark, and thus, can be seen as being similar to the registered or similar service mark’s designated goods prior to the filing date of the registration or the application date of the trademark registration of the Plaintiff.

In full view of the aforementioned circumstances and the detailed transactional situation surrounding a number of trademarks, including Montreal masters or MONSTS in the record of the lower court, the part regarding “Moloster” or “MONTS”, which are common to the instant registered service mark and the instant registered trademark (use) trademarks, is deemed to have weak distinctiveness in relation to their designated service business, designated goods, or used goods, and not only is it inappropriate to place such distinctive feature on a specific person. Accordingly, the part regarding “Moloster” or “MONTS” in the instant registered service mark and prior-registered trademark (use) trademarks, cannot be deemed as an essential part that expresses independent distinctiveness.

Meanwhile, in the registered service mark of this case, the term “net” in the registered service mark of this case is either distinctive or weak as it displays the raw materials, etc. of beverages or ice pictures provided for the designated service business. The part “ENERGY” in “MONTS ENERGY”, which is a common part of the registered trademark (use) trademark, is also considered as having the efficacy of designated goods or used goods, and thus has no or weak distinctiveness. Therefore, as the registered service mark of this case and the registered trademark of this case (use) are considered to have no or weak distinctiveness, the similarity should be determined on the basis of the trademark as a whole, given that both the registered service mark and the registered trademark of this case have no or weak distinctiveness.

Accordingly, compared to this, the registered service mark of this case and the prior-registered (use) trademark of this case are different not only from their English and from their external appearance, and the registered service mark of this case is referred to as “netmon posters,” while compared to the registered service mark of this case, the prior-registered trademark of this case is not similar in terms of “mon masters energy”, and compared to the fact that the registered service mark of this case has the meaning of “nets” as “nets energy,” the prior-registered trademark of this case has the meaning of “nets energy,” and there is a difference in its concept. Ultimately, the registered service mark of this case and the prior-registered trademark of this case are not similar in all respects, including external appearance, name, and concept.

Although the reasoning of the lower court is somewhat inappropriate, it is justifiable to conclude that the registered service mark of this case and the prior-registered trademark (use) are not similar. In so doing, contrary to what is alleged in the grounds of appeal, the lower court did not err by misapprehending the legal doctrine on determining similarity of trademarks, failing to exhaust all necessary deliberations,

3. 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 on the bench.

Justices Kwon Soon-il (Presiding Justice)