[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 there is no or weak distinctiveness that can function as an essential part of a combination trademark

[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)

[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)

Montreal Energycomer (Patent Attorney Na Young-hwan et al., Counsel for the defendant-appellant)

Non-Korea Co., Ltd.

Patent Court Decision 2014Heo8311 Decided April 30, 2015

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

The grounds of appeal are examined.

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, in determining whether a trademark contains no or weak distinctiveness that can function as an essential part of the combined trademark, the circumstance in which many trademarks, including the relevant component, are registered or applied for and publicly announced on goods identical or similar to the designated goods, may also be considered. Thus, the determination should be made by comprehensively taking into account the number of trademarks registered or publicly announced, the number of applicants or trademark right holders, the degree of inherent distinctiveness of the relevant component, the relationship with the designated goods, the existence of circumstances in which it seems inappropriate to allow a specific person to monopoly the relevant component

2. Examining the aforementioned legal principles and records, the court below is just in holding that the registered trademark of this case (registration number omitted), the registered trademark of this case, and the pre-registered trademark of this case as indicated in the judgment of the court below all contain the part "MoNTS" or "MONTS", but since it is difficult to recognize the distinctiveness of such part or it is inappropriate to recognize it as exclusive to a specific person for public interest, it does not constitute an essential part to independently perform the function of indicating the origin of goods. The registered trademark of this case, the pre-registered trademark of this case, and the pre-registered trademark of this case, and the pre-registered trademark of this case, are not similar in terms of their appearance, name, and concept.

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 Kim Yong-deok (Presiding Justice)