Criteria for determining similarity of designated goods of a registered trademark

Whether or not the designated goods of a registered trademark are identical or similar shall be determined in accordance with the transactional norms in light of the quality, shape, use, and the circumstances of transaction, etc., and it is difficult to readily conclude that the goods of the same kind belong to the same kind under the former Trademark Act, which are merely distinguishing the types of goods for the convenience of trademark registration affairs.

Article 9(1)7 of the Trademark Act; Article 11(1) of the former Trademark Act; Article 5 of the Enforcement Decree of the former Trademark Act

1. As to the Plaintiff (Attorney Lee Byung-ho, Counsel for the plaintiff-appellant)

The Commissioner of the Korean Intellectual Property Office

Korean Intellectual Property Office Decision 288 decided December 15, 1981

The original adjudication shall be reversed, and the case shall be remanded to the Korean Intellectual Property Trial Office.

The ground of appeal by the claimant is examined.

1. According to the reasoning of the original decision, the trademark of this case by the claimant is similar to the cited trademark registered priorly (registration number omitted) and its designated goods are the same as the designated goods, and thus, the respondent is likely to cause consumers to confuse the place of goods, and the respondent maintains the disposition of rejection in accordance with Article 9(1)7 of the Trademark Act.

2. In light of Article 9(1)7 of the Trademark Act, since trademark itself is identical or similar to the registered trademark of another person based on an earlier application and used for goods identical or similar to the designated goods of the registered trademark, it cannot be registered. Thus, even if the trademark itself is identical or similar to the designated goods of the earlier application, if the goods using the trademark are not identical or similar to the designated goods of the earlier application and thus there is no risk of causing confusion as to the source of goods, registration may not be refused pursuant to the above provision. Thus, whether the goods are identical or similar shall be determined in accordance with the transaction norms in light of their quality, shape, use, the circumstances of transaction, etc., and it is clear that Article 11(1) of the former Trademark Act (amended by Act No. 3326 of Dec. 31, 1980) and Article 5(1) of the Enforcement Decree of the same Act (amended by Presidential Decree No. 10431 of Jul. 30, 1981) and Article 12 of the former Trademark Act does not stipulate the scope of goods classification.

According to the records, the designated goods of the applied trademark of this case are electrical flickering devices, studs, cables, cables, cable connectionsers, fluorgs, gluors, gluors, bluorm lampss, bluorgs, gluors, gluors, gluorings, equipment lamps, etc. of the above product classification table. The designated goods of the applied trademark of this case are electric machinery and appliances of this case of this case of this case of this case of this kind 39, the designated goods of the applied trademark of this case of this case of this kind of goods of the same kind of 39, which are identical to the above trademark classification table, but the designated goods of the applied trademark of this case of this case of this case of this kind of goods are merely moving the abstract kind of goods listed in the above product classification No. 39 of the above product classification list, and thus it cannot be concluded as identical or similar to the designated goods of this case of this case of this case.

3. Ultimately, in determining the same or similar nature of goods, the original adjudication is erroneous in matters of law by misunderstanding the legal principles on the designated goods, which affected the conclusion of the adjudication, and the appeal is not clearly stated, but is not likely to cause confusion between the registered trademark of this case and the registered trademark of earlier application cited in the application trademark of this case and the registered trademark of this case, and thus, it is therefore justified.

Therefore, it is so decided as per Disposition by the assent of all participating judges on the bench that the case to be tried again is remanded to the Korean Intellectual Property Office Appeal Trial Office.

Justices Lee Lee Sung-soo (Presiding Justice)