In a case where an examiner of the Korean Intellectual Property Office decided to refuse trademark registration on the ground that the above trademark falls under Article 7 (1) 7 of the Trademark Act in relation to the trademark " "," the case holding that since it is difficult to recognize distinctiveness of one's own goods in light of social norms or it is not appropriate to recognize distinguish between "Umami" and "UMAM" among the applied trademarks, the part which constitutes the essential part of the applied trademark "," is clearly different from the prior registered trademark in terms of appearance, name and concept, the above applied trademark is not similar to the prior registered trademark, on the grounds that it is difficult to recognize distinctiveness of one's own goods in light of social norms, or it is not appropriate to recognize distinctiveness of other goods in terms of public interest.

Article 7 (1) 7 of the Trademark Act

1. As to the Plaintiff’s ground of appeal, the lower court erred by misapprehending the legal principles on the grounds of appeal, as otherwise alleged in the ground of appeal.

The Commissioner of the Korean Intellectual Property Office

Patent Court Decision 2012Heo3756 Decided October 11, 2012

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

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

1. Whether a trademark is similar should be determined depending on whether there is a concern for mistake or confusion as to the origin of a product based on the direct perception that ordinary consumers or traders experience in the transaction of the product. Even if there exists a similar part between two trademarks, if it is possible to avoid confusion as to the origin clearly when overall observation is conducted, the part constituting the essential part may not be deemed a similar trademark. Furthermore, the part having no or weak distinctiveness in the composition of a trademark cannot be deemed an essential part, and the same holds true even where such part is combined with other letters, etc. (see, e.g., Supreme Court Decision 2010Hu3073, May 24, 2012). Furthermore, whether there is no or weak distinctiveness in the composition of a trademark shall be objectively determined by objectively considering the concept, relationship with the designated goods, and the circumstances of the trading society, etc. of the part, where it is difficult to recognize distinctiveness of other goods under the social norms or where it is inappropriate for a specific person to monopoly it for public interest (see, e.g., Supreme Court Decision 2006Hu54.

A person shall be appointed.

A person shall be appointed.

A person shall be appointed.

A person shall be appointed.

A person shall be appointed.

2. In light of the above legal principles and the records, we examine whether the trademark of this case (application number No. 40-2010-11418), glusium, etc. consisting of the trademark of this case as designated goods and the trademark of this case (application number No. 40-2010-11418), glusium, and glusium as the designated goods as the designated goods and whether the pre-registered trademark of this case is similar to the pre-registered trademark 1 through 3 or glusium, glusium, and glusium, as seen in the right side.

In the instant application trademark, the English language “Umai” and “UMAMI” are written in the English language above and below the word “Umai” as well as in the form of “UMAMI.” As such, the English language “Umai” and “UMAMI” mean that “Umai” and “UMAMI,” “the nature, purification, and truth,” etc. of the English fishing gear, which can easily be easily known to ordinary consumers, are written in combination with “SASOING”, which is an English language used for food, food advertising, explanation, etc., and the overall composition of the instant application trademark as seen earlier, in light of the overall composition of the instant application trademark, these words can be understood as “the fixed number of Mamast,” and “UMAMI” as “the fixed number of Mamast,” and “UMAI”. Furthermore, the word “UMI” and “UMI” are also written in the English language, etc., and the word “Korea,” as the English language, etc.

In full view of these facts, the part of “Umai” and “UMAI” in the applied trademark of this case indicate its efficacy, use, etc. in relation to designated goods, and thus cannot be deemed as constituting “inception requiring identification” as it is difficult to recognize distinctiveness of one’s own goods in light of social norms or as it is inappropriate for a specific person to monopoly in the public interest. In addition, with respect to distinctiveness, the part “” which constitutes the essential part of the trademark in this case, is obvious difference from the prior registered trademark in appearance, name, and concept. Therefore, even if the trademark in this case and the prior registered trademark are used for goods identical or similar to the trademark in this case, it is not likely to cause mistake or confusion with ordinary consumers or traders as to the origin of goods. Thus, the trademark in this case is not similar to the prior registered trademark.

The judgment of the court below to the same purport is just, and there is no error in the misapprehension of legal principles as to the similarity of trademarks.

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 Ko Young-han (Presiding Justice)