[1] Criteria for determining similarity of combined trademarks

[2] The case holding that registration shall be refused pursuant to Article 7 (1) 7 of the Trademark Act, on the grounds that the marks are similar to the applied trademark "" and the registered trademark " "" are identical to both designated goods of the two marks, such as "documents bags, Schlage cases, intersections for travel, handbags, etc., and the applied trademark related to the designated goods shall be rejected pursuant to Article 7 (1) 7 of the Trademark Act

[3] In a case where there are grounds for refusal of registration only for one of the multiple designated goods of the applied trademark (affirmative), whether the registration of the applied trademark ought to be entirely rejected (affirmative)

[1] Whether a trademark is similar to a trademark should be determined by whether there is a concern for mistake or confusion as to the origin of the goods by observing the appearance, name, and concept of two trademarks objectively, comprehensively, and systematically, and on the basis of a direct perception that ordinary consumers or traders feel the trademark with respect to the trademark. The combined trademark combining each constituent element of letters, letters, or figures is not necessarily called and conceptualized by the entire constituent part, but can be called and conceptualized simply by only a part of its constituent part unless it is an indivisible combination to such a degree that it is deemed natural if the parts of each constituent part are separately observed and observed, and if it is possible to think of two or more names or concepts from one trademark, if it is recognized that one of them is identical or similar to another's trademark, one of them is similar.

[2] The case holding that in the case where the trademark " "" and the registered trademark " " " have common parts of the word "Nicle" or "Nicle" as the essential part and both marks are the same as " Nicle", and where both marks are abbreviated only by their essential parts, their names and concepts are similar to " Nicle", and since the two designated goods of both marks are the same as "documents bags, Schlage cases, travel ties, handbags" among the designated goods, registration of the applied trademark related to the designated goods should be refused under Article 7 (1) 7 of the Trademark Act

[3] If there are many designated goods of the applied trademark, the registration of the application shall be rejected in whole, even if there are grounds for rejection of registration only one of the designated goods.

[1] Article 7 (1) 7 of the Trademark Act / [2] Article 7 (1) 7 of the Trademark Act / [3] Article 7 (1) 7 of the Trademark Act

[1] Supreme Court Decision 2003Hu1871 Decided October 15, 2004 (Gong2004Ha, 1879) Supreme Court Decision 2004Da60584 Decided May 27, 2005 (Gong2005Ha, 1035) Supreme Court Decision 2005Hu1134 Decided November 9, 2006 (Gong2006Ha, 2103)/ [3] Supreme Court Decision 96Hu78 Decided September 24, 1996 (Gong196Ha, 3198) (Gong204Hu2109 Decided March 10, 2006)

Plaintiff Co., Ltd. (Korean Patent & US Patent Attorney Kim Sung-hwan, Counsel for plaintiff-appellant)

The Commissioner of the Korean Intellectual Property Office

May 15, 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 January 23, 2009 on the case No. 2008 Won4175 shall be revoked.

1. Basic facts

[Reasons for Recognition] Unsatisfy, Gap evidence 1-1, 2, 3, Gap evidence 2, and Gap evidence 3-2

A. The plaintiff's applied trademark

(1) Date/ Number of the application: May 21, 2007 / No. 40-207-27369

(2) Composition:

(3) Designated goods: Documents bags, Schlages, pridges for travel, handbags and 69 kinds of goods classified by category 18 (hereinafter “instant applied trademark”). The Plaintiff’s applied trademark is referred to as “instant applied trademark”).

(b) Preregistered trademark;

(1) Date of application / Date of registration / Number of registrations: January 13, 1999 / September 22, 2004/ No. 593893 of September 22, 2004

(2) Composition:

(c) Designated goods: Documents bags, Schlage cases, strings for travel, handbags and 5 kinds of goods, classified as category 18;

C. Details of the instant trial decision

(1) On April 4, 2008, the Korean Intellectual Property Office rendered a decision to refuse the registration of the applied 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 May 7, 2008, the Plaintiff filed an appeal against the said decision of refusal with the Intellectual Property Tribunal No. 2008 Won4175.

(2) On January 23, 2009, the Korean Intellectual Property Tribunal dismissed the Plaintiff’s request for adjudication on the grounds that the trademark of this case is similar to the prior registered trademark, and the mark is similar to the prior registered trademark and the designated goods cannot be registered because the designated goods are similar.

2. Whether the trademark of this case constitutes Article 7(1)7 of the Trademark Act

A. Whether the mark is similar

(1) Criteria for determination

The similarity of trademarks shall be determined by whether there is a concern for mistake or confusion as to the origin of the goods by observing the appearance, name, and concept of two trademarks objectively, comprehensively, and separately, and on the basis of a direct perception that ordinary consumers or traders feel with respect to the trademark. The similarity of trademarks shall be determined by whether there is a concern for mistake or confusion as to the origin of the goods. The combined trademark consisting of each constituent part of letters, letters, or figures and diagrams, not necessarily a combination of the constituent parts with the entire constituent part, but a combination of each constituent part to the extent that it is deemed natural if it is not natural if it is separately observed, and as long as it is not indivisible to the extent that each constituent part is deemed natural. In addition, if two or more names or concepts are considered from one trademark, the two trademarks are similar (see Supreme Court Decision 2003Hu1871, Oct. 15, 2004).

(2) Specific determination

(A) The applied trademark of this case is a character trademark which mainly consists of a woman’s name and is written horizontally with the English sign of “Nicle” (No. 4-1, No. 5, and No. 6) indicated on the top of the 68th order of population compared in the United States, and the English sign of “E” in Korea or with the English language of “E” (Evidence No. 8) as one of the names or characteristics of English countries. The registered trademark of this case is a trademark in the form of a white alpha on the top of the vertical angle of the black color. Under the foregoing, the registered trademark of this case is a trademark in the form of a white alpha, the trademark of this case mainly consists of the English sign of “Nicle” used in the name of a woman, and the trademark of this case consisting of “St” (Evidence No. 17-1) and “Y 17, 27, 27, 37, 37,” and the trademark of this case in the name of the United States.

(B) However, in the case of the applied trademark in this case, the English and the word "lee" respectively indicating the name and sex as seen earlier are being used. The Korean language customs name and sex are not always disadvantageous, but they are abbreviationd only by name. On the other hand, in this case, the entire name of " Niclee" has been the name of the plaintiff's representative's father (Evidence No. 19). However, there is insufficient evidence to view that the trademark in this case refers to a specific person such as the plaintiff's representative's father, etc., or that the trademark in this case is recognized as indicating the entire specific person's product as a whole, and in light of the fact that the English language " Nicle" is written in front of "Oe" and that the word "Oicle" is not an integral part of the above part of the name "Olee" to be separated from the above part of the name "Olee" to the general consumers of the Republic of Korea," the above part of the name "Olee" can be seen as an indivisible part of the above.

(C) As seen earlier, the registered trademark, which is a combination of letters and diagrams, is distinguishable from the part of the text and figure in appearance, and is not connected with each other, and does not form a new concept by combining them. As such, separate observation of the text and figure parts cannot be deemed as being indivisible to the extent that they are natural shotle, the part of the text and figure alone can be separated and observed. In addition, the part of the text and text can be separated from the part of the “Nicle” and the “StGles” can be seen as being kept in the form of “Nicle” and the name and shape of “Nicle” can not be seen as being separated from the part of the “MtGle” in the form of “MtGle’s name and form an indivisible concept.” As seen earlier, it is also natural that the part of the “Nicle” can not be seen as being separated from the part of the “MtGle’s name and form an indivisible concept” in the form of “MtGle.”

(D) As seen above, the trademark of this case and the prior registered trademark of this case are recognized to have common parts of the word “Nicle” or “Nicle” as a result of separate observation, and where these marks are abbreviationd solely by these essential parts, their names and concepts are the same as “Nicle” ( even if the trademark of this case is deemed to be a whole, its title is merely a combination of “Nicle”, which is similar to “Nicle”, which is the last word of the prior registered trademark, and thus its title is still similar). The trademark of this case and the prior registered trademark of this case constitute similar marks as stipulated in Article 7(1)7 of the Trademark Act.

(b) Whether the designated goods are identical or similar to the designated goods

Of the designated goods of the applied trademark of this case, “documents bags, Schlage cases, travel ridges, handbags, etc.” among the designated goods of the applied trademark of this case, “documents bags, Schlage cases, travel ridges, handbags, etc.” are the same goods as each other.

C. Sub-committee

Ultimately, the pending trademark is similar to the prior registered trademark and its mark. Since the trademark of this case is identical to the designated goods of these marks, “documents bags, Schlages, travel ties, handbags, etc.,” the trademark of this case related to the designated goods should be rejected by Article 7(1)7 of the Trademark Act. However, if there are many designated goods, such as the pending trademark of this case, if there are many designated goods, the registration of the pending trademark of this case should be rejected entirely (see Supreme Court Decision 2004Hu2109, Mar. 10, 206). Thus, the registration of the pending trademark of this case should be refused by Article 7(1)7 of the Trademark Act in relation to the remaining designated goods without further review. Accordingly, the decision of the Korean Intellectual Property Office refusing the registration of the trademark of this case is legitimate.

3. 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.

Judges Noh Tae (Presiding Judge)