[1] Whether the part having no or weak distinctiveness among the composition of a trademark can be referred or conceptualally referred to as an essential part only (negative)

[2] The case holding that "the prior registered trademark" and "the prior registered trademark" are not similar because they differ between names and concepts

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

[1] Supreme Court Decision 2001Hu1808 decided Dec. 14, 2001 (Gong2002Sang, 321)

Pkist Roz Rocop (Patent Attorney Park Young-young, Counsel for the defendant-appellant)

The Commissioner of the Korean Intellectual Property Office

Patent Court Decision 2002Heo4286 delivered on December 13, 2002

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

The grounds of appeal are examined.

1. The court below held that even if the trademark "sk of the applied trademark of this case consisting of "sk" and "SK of the registered trademark (registration No. 393571) composed of "sk" are all simple and common marks, so both trademarks cannot be divided into "sk" or "SK" and they cannot be viewed as objects of comparison for determining similarity of trademarks. Both trademarks differ in appearance, and even in their names, the applied trademark of this case is called "Skk" as "skk" or "sk, which is not the essential part with "sk" or "sk", and thus, if the trademark of this case is called as "sk" or "sk, which is not the same as the trademark of this case, the word "sk" cannot be divided into "sk" or "sk, which is different from the trademark of this case, the word "sk" cannot be divided into "sk" or "sk, which is not similar to the trademark of this case.

2. Inasmuch as the part having no or weak distinctiveness among the composition of a trademark cannot be deemed as an essential part solely based on that part, it is reasonable to view that general consumers or traders do not simply refer to the part having no or weak distinctiveness, and the same applies in cases where such part is combined with other words, etc. (see Supreme Court Decision 2001Hu1808, Dec. 14, 2001).

3. In light of the above legal principles and records, since the "sk" portion of the applied trademark of this case and the "SK" portion of the pre-registered trademark of this case are simple and ordinary marks, it cannot be deemed as a distinctive mark, and since the "SK" portion of the pre-registered trademark is used as a mark, it cannot be seen as a conspicuous recognition as to whose business it indicates the goods among consumers of the designated goods, the above "sk" portion or "SK" portion cannot be used as a subject of comparison only in determining the similarity of both trademarks, and since the letters in the pre-registered trademark are devised in a special form and are in a so long as they are difficult for consumers to easily recognize the designated goods, it cannot be deemed as an "SK" portion as it is difficult for the designated goods to directly recognize them, the court below judged that both trademarks are not similar on the premise of the above purport, and it cannot be viewed as a misapprehension of legal principles as to the distinctiveness of the trademark and the similarity of the trademark as alleged in the grounds for appeal.

4. Therefore, the appeal shall be dismissed, and all costs of appeal shall be borne by the defendant who is the losing party. It is so decided as per Disposition by the assent of all participating Justices.

Justices Shin Hyun-chul-chul (Presiding Justice)