[1] Whether the applied trademark “” is a trademark similar to the prior registered trademark “” (affirmative)

[2] In determining the similarity of trademarks, the standard time to determine the content of the designated goods of the pre-registered trademark (=the time when determining the registration of the pre-registered trademark)

[3] The scope of application of trial time under the proviso of Article 7 (3) of the Trademark Act

[1] The part of “BABY SOFTWSH” in the applied trademark “” constitutes a technical mark indicating the use of the designated goods, and thus, it cannot be an essential part of “JHNNS” in the applied trademark, and thus, the essential part of the trademark is “JHNNS” in the applied trademark “” as it constitutes a technical mark indicating the composition or nature of the designated goods, and thus, it cannot be an essential part because there is no or weak distinctiveness of other goods, and thus, the essential part of the prior registered trademark is “the part.” The essential part of the applied trademark includes “JHNSNNS” and “the essential part of the prior registered trademark,” both of which include “JOHNNNNNS” and all of which are the essential parts of the applied trademark, and the appearance, name and concept are similar, and thus, both trademarks are similar.

[2] In determining the similarity of trademarks, if there is a dispute over the designated goods of the pre-registered trademark, it shall be determined at the time of determining the registration of the pre-registered trademark.

[3] Since a lawsuit seeking revocation of a trial decision by the Intellectual Property Tribunal is to determine whether a trial decision, which is an administrative disposition, is legitimate, the illegality of the trial decision shall be determined on the basis of “law and fact-finding at the time of the trial decision,” and the facts arising after the trial decision is rendered cannot be used as the basis for determination. Therefore, Article 7(3) proviso of the Trademark Act applies only where the applicant for trademark registration takes over the trademark right of the pre-registered trademark before the trial decision and completes the registration of transfer at the latest

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

[3] Supreme Court Decision 99Hu2211 delivered on April 12, 2002

Johnson (Patent Attorney Park Jae-sik et al., Counsel for the defendant-appellant)

The Commissioner of the Korean Intellectual Property Office

July 6, 2006

1. The plaintiff's claim is dismissed.

2. The costs of lawsuit shall be borne by the Plaintiff.

The decision that the Korean Intellectual Property Tribunal revoked the trial decision on August 30, 2005 on the case No. 2005 Won1660.

1. The grounds for rejection of a trial decision against a request filed by the plaintiff to reject the application for trademark registration;

[Evidence] Evidence Nos. 1 through 3, No. 1-1 and No. 2

A. Details of the applied trademark of this case and the prior registered trademark

(1) The Plaintiff’s applied trademark

(1) Composition:

(2) Date/application number: September 5, 2003 / No. 40-2003-3937

(3) Designated goods: Haishing cream, exhausto, exhausto, ber, ber, ber, ber, ber, spacker, spacker, skinke, sprinker, medicinal cream, cshingcream, cutr, spacker, handbac, brack, fishing, hishing, hingr, hingring, hingring, hingringr.

(ii) the preregistered trademark;

(1) Composition:

(2) Registration number: No. 156356.

(3) Date of application / Date of decision on registration / Date of registration: March 18, 1987 / June 3, 1988 / June 23, 1988

④ 권리자 : 에스시이존슨앤드산인코포레이팃드(S. C. Johnson ＆ Son Incorporated)

(5) Designated goods: laundry, water rain, tax amount, household synthetic taxation, free acids, cleans, and booms under Article 10 of the former Enforcement Rule of the Trademark Act (amended by Ordinance of the Ministry of Trade, Industry and Energy No. 753 of September 4, 1990)

B. Plaintiff’s request for trial against rejection of trademark application and rejection of the trial decision

(1) On December 21, 2004, the Korean Intellectual Property Office rendered a decision to refuse trademark registration on the ground that the trademark applied for registration is similar to the prior registered trademark and the mark and the designated goods and constitutes Article 7(1)7 of the Trademark Act. On this basis, the Plaintiff filed a petition for a trial on the aforementioned decision of refusal on the ground that the trademark applied for registration differs from the prior registered trademark and its appearance, name and concept, and the designated goods differ and does not fall under Article 7(1)7 of the Trademark Act.

(2) On August 30, 2005, the Korean Intellectual Property Tribunal rendered a decision to dismiss the plaintiff's request for a trial on the ground that the trademark falls under Article 7 (1) 7 of the Trademark Act, since the appearance, name, and concept of the part is similar to that of "" as a part of the prior registered trademark in comparison with the prior registered trademark.

2. Summary of the Plaintiff’s ground for revocation of the trial decision

(a) Any non-similar assertion of a trademark and designated goods;

The pending trademark is not similar in terms of the overall composition of the prior registered trademark and the trademark, and the appearance of English shorts. Moreover, the pending trademark is also different from the prior registered trademark, which is named as the name “Json Sofas” or “Json,” as it is widely known to ordinary consumers as the Plaintiff’s trademark. Accordingly, the pending trademark and the prior registered trademark are different in terms of appearance and name.

Furthermore, the designated goods of the applied trademark are goods of cosmetics for human use, such as cosmetics stores or cosmetics stores in department stores. Meanwhile, among the designated goods of the applied trademark, the term “laundry, synthetic taxation for household use, glass taxation, and cleanner” is goods belonging to the non-human consumption tax, and “water rain and tax amount” is also goods belonging to the non-human consumption tax, and both at the time of the decision on the registration of the registered trademark, they are sold at the non-human consumption, such as Smarket or discount stores. Accordingly, the designated goods of the applied trademark are different in their use and place of sale, and cannot be deemed as goods similar to those in general transaction norms.

Ultimately, compared with the prior registered trademark, the trademark does not fall under Article 7(1)7 of the Trademark Act because the trademark and the designated goods are not similar to the prior registered trademark.

(b) Claim on taking over a prior registration trademark right;

Of the designated goods of the prior registered trademark, the issue of whether or not the designated goods of the applied trademark are similar to the designated goods of the applied trademark is “water rain and tax amount.” The Plaintiff was transferred from the trademark right holder of the prior registered trademark during the lawsuit in this case, the designated goods of the prior registered trademark in which the designated goods were “water rain and tax amount.” Therefore, Article 7(1)7 of the Trademark Act does not apply because the portion of the applied trademark in which the designated goods are “water rain and tax amount” constitutes “where the trademark right holder and the applicant become the same person after the application for trademark registration is filed,”

Therefore, the applied trademark does not fall under the provision of Article 7 (1) 7 of the Trademark Act, because the registered trademark and the designated goods are different.

3. Determination as to the similarity between the applied trademark and the pre-registered trademark

A. Whether the trademark is similar

(1) Criteria for determining similarity of trademarks

In determining similarity of a trademark, it is a principle to observe the trademark as a whole and to compare and examine its appearance, name, and concept. However, even when the overall observation of the trademark is conducted, in cases where the identification function of the trademark is recognized only because a certain part of the trademark leads consumers' attention and exists, it is necessary to extract an essential part with the center distinctiveness of the trademark and prepare two trademarks in parallel with the overall observation. In addition, among the constituent parts of the trademark, those parts which have no or weak distinctiveness, such as the ordinary name, official name, designated goods, efficacy, use of the designated goods, technical marks indicating the character of the designated goods, the name of a conspicuous geographical name, and the company's name, etc., cannot be an essential part (see Supreme Court Decision 2004Hu3454, Apr. 27, 2006).

(2) Determination:

The part of “BABY SOFTWSH” in the applied trademark “, as the end of Korea, is a product related to “SOFTWH” or “sying a cleaning agent” in the meaning of “ABY” or “ABY” in the English language “ABY” is combined with “SOBY” or “ASH” in the meaning of “ABY” or “ABY”. Accordingly, the part of “BABY SOFWSH” constitutes a technical mark indicating the use of designated goods and cannot be an essential part because it falls under the technical mark indicating the use of the designated goods. Ultimately, the essential part of the applied trademark is the part of “JOHNNSSNS”.

On the other hand, the prior registered trademark is a trademark placed in parallel with the English language “SOL PL US” on the lower side, and the part of the “SOL PL US” in this context indicates that the combination of the English text “PL”, which is a chemical language, meaning that the caller distributed and liquidity in liquid, is added to the English text “SOL.” Therefore, the part “SOL US” constitutes a technical mark indicating the composition or nature of designated goods, and thus, cannot be deemed as an essential part because it has no or weak distinctiveness of its own goods. Accordingly, the part of the prior registered trademark is the essential part “” of the registered trademark.

In addition, in light of the English education level of ordinary consumers in the Republic of Korea, the term “JHNNN” and “JHNS”, which are the essential parts of the applied trademark, include both “JHNNNS” and “N” as the main parts of the applied trademark, include “JHNNN” and “JHNSN” as the English language, and their appearance and name are similar. In addition, in light of the English education level of ordinary consumers in the Republic of Korea, the term “JHNN” and “JHNNN” are deemed as the name of a person who is commonly used in the English country. Ultimately, the applied trademark and pre-registered trademark are similar to the appearance, name and concept of the essential part, and thus, are deemed as a whole

B. Whether the designated goods are similar

(1) The criteria and time of determining the similarity of designated goods

The similarity of designated goods between the applied trademark under Article 7(1)7 of the Trademark Act and the preregistered trademark should be determined in accordance with the general transaction norms by comprehensively taking into account the quality, shape, use, and production sector, sales sector, scope of consumers, actual circumstances of transaction, etc., which are the characteristics of the goods themselves (see Supreme Court Decision 2003Hu1086, Aug. 19, 2005). In addition, if there is a dispute over the designated goods of the preregistered trademark, it shall be determined at the time of determining the registration of the preregistered trademark.

(2) Determination:

Among the designated goods of the pre-registered trademark, the issue of whether the applied trademark is similar to the designated goods of the pre-registered trademark is “water patent and tax amount,” and thus, first, whether the water patent and tax amount, which are the designated goods of the pre-registered trademark, refer only to non-human use except for human use, as asserted by the Plaintiff.

Of the “product classification” under Article 10 of the Enforcement Rule of the former Trademark Act (amended by Ordinance of the Ministry of Trade, Industry and Energy No. 753 of September 4, 1990), which was enforced on June 3, 198, when the registration and decision of the pre-registered trademark was made, Article 10 of the former Enforcement Rule of the Trademark Act (amended by Ordinance of the Ministry of Trade, Industry and Energy No. 753 of September 4, 1990) provides for the “water rain and tax amount” of the pre-registered trademark as designated goods of the pre-registered trademark, as well as the “laundry, medicine rain, etc.” which are non-human colons.

On the other hand, the Korean Intellectual Property Office established the criteria for the examination of similar goods and service business (A evidence 6-1, 2) in order to consider the similarity between the designated goods of the registered trademark and the designated goods of the registered trademark before March 1, 1998, as internal criteria for examining the similarity between the designated goods of the registered trademark. However, among the criteria for the examination, the "water collection and tax amount" in the goods tax item of No. G1301 of No. 1301 of the product group of July 1, 1997, is also defined as "non-human non-human non-use non-use non-use non-use non-use non-use non-use non-use non-use non-use non-use non-use non-use non-use non-use non-use non-use non-use non-use non-use non-use

According to the above provisions, among the designated goods of the pre-registered trademark, the term “water patent and tax amount” was determined to include both non-human and human body at the time of determining the registration of the pre-registered trademark. Furthermore, the designated goods of the pre-registered trademark and the designated goods of the pre-registered trademark which are the designated goods of the pre-registered trademark are similar to the use of all goods used by all people in relation to cleaning in a bath room, and their production and sales sector and consumers are similar. Thus, these goods constitute similar goods in light of general transaction norms.

C. Sub-committee

Ultimately, trademark registration cannot be obtained because it falls under Article 7 (1) 7 of the Trademark Act because the prior registered trademark, trademark, and designated goods are similar to those of the prior registered trademark.

4. Determination on the assertion on transfer of prior registration trademark right

The main text of Article 7(3) of the Trademark Act provides that a trademark for which an application is filed shall be determined on the basis of “when the application is filed” as to whether the trademark falls under the grounds for non-registration under Article 7(1)7 of the Trademark Act, and the proviso of Article 7(3) provides that trademark registration shall be granted where the applicant becomes the same person by taking over the trademark right of the registered trademark after the filing date and completing the registration of transfer.

However, the proviso of Article 7(3) of the Trademark Act does not provide for when the applicant for trademark registration acquires the trademark right of the prior registered trademark and completes the registration of transfer, in case where each of the procedures for the refusal ruling, the appeal against rejection ruling, and the appeal against rejection ruling is conducted in sequence. Thus, it should be determined by the reasonable interpretation of the relevant legal provisions.

On this point, since a lawsuit seeking revocation of a trial decision by the Korean Intellectual Property Tribunal is to determine whether a trial decision, which is an administrative disposition, is legitimate, the illegality of the trial decision shall be determined on the basis of “law and fact-finding at the time of the trial decision,” and the facts arising only after the trial decision was rendered cannot be used as the basis for determining the facts (see Supreme Court Decision 9Hu2211, Apr. 12, 2002). Therefore, the proviso of Article 7(3) of the Trademark Act shall apply only where an applicant for trademark registration takes over the trademark right prior to the trial decision and completes the registration of transfer after the trial decision was made, and it shall be interpreted that the provision

However, according to the evidence No. 17-1 and No. 2 of the Plaintiff’s evidence No. 17-2, the Plaintiff may recognize the fact that the designated goods of the pre-registered trademark owner of the pre-registered trademark had been transferred in installments from the pre-registered trademark owner of the pre-registered trademark on June 1, 2006, which was after the instant trial decision. As such, the proviso of Article 7(3) of the Trademark Act cannot be applied to the applied trademark.

Ultimately, the plaintiff's above assertion is without merit.

5. Conclusion

Therefore, the trademark applied for trademark cannot be registered because it falls under Article 7 (1) 7 of the Trademark Act, and thus, the decision consistent with this conclusion is just, and the plaintiff's request is dismissed as it is without merit. It is so decided as per Disposition.

Judges Cho Yong-ho (Presiding Judge)