[1] Method of determining similarity of trademarks

[2] The case holding that the trademark "OCRN PESL" and the prior registration trademark "" are not similar

[1] In determining the similarity of trademarks, the similarity of trademarks shall be determined by observing the external appearance, name, and concept of trademarks in a whole or separately, thereby causing misconceptions or confusions as to the source of goods. Thus, even if one of the external appearance, name, and concept is similar, if a trademark as a whole can avoid misconceptions or confusions as to the source clearly, it shall not be deemed similar.

[2] The case reversing the judgment of the court below that held that the prior-registered trademark "OCEN" and "PEARL" are identical or similar to those of the applicant trademark "OCRN" are described only in English, and they are not commonly used, so it is hard to see that our country's general consumers can generally recognize the applicant trademark as being directly and indirectly "in relation to the designated goods," on the other hand, in consideration of the fact that the trademark's similarity is the most important factor of the trademark's wide distribution of advertisement media, the applicant trademark's prior-registered trademark "as the trademark's name is called "OCEN" and conceptualp", which is named and conceptualized as "OCEN PESL", and even if there are some identical or similar parts in terms of concept, it is not similar to the trademark's overall, objective, and different observation from the perspective of ordinary consumers, on the ground that both trademarks are not similar.

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

[1] Supreme Court Decision 95Hu1494 delivered on March 22, 1996 (Gong1996Sang, 1406), Supreme Court Decision 95Hu1692 delivered on April 9, 1996 (Gong1996Sang, 1406), Supreme Court Decision 95Hu1623 delivered on July 12, 1996 (Gong196Ha, 2501), Supreme Court Decision 95Hu2084 delivered on July 30, 1996 (Gong196Ha, 2673), Supreme Court Decision 96Hu344 delivered on September 6, 1996 (Gong196Ha, 3015)

Woo Sckn Investment Schan et al. (Patent Attorney Park Yong-sik et al., Counsel for the defendant-appellant)

The Commissioner of the Korean Intellectual Property Office

Korean Intellectual Property Office Decision 95Na222 dated May 6, 1996

The decision of the court below is reversed, and the case is remanded to the Korean Intellectual Property Office.

The grounds of appeal are also examined.

According to the reasoning of the decision of the court below, the court below held that the trademark of this case (hereinafter referred to as the "original trademark") and the cited trademark registered by the earlier application (registration No. 170468 of May 22, 1989) "" (registration No. 170468 of the Korean Intellectual Property Office) are identical to the trademark of this case (hereinafter referred to as the "original trademark") and the cited trademark registered by the earlier application (registration No. 170468 of May 2, 1989), since the original trademark is not a series of indivisibles to the extent that it does not have any special concept, it is possible to separately observe the original trademark as a combined trademark to the extent that the combined trademark of this case is natural and natural, and if it is separately observed as one of the essential parts of this case, it is recognized that the above cited trademark is a "original owner", and therefore, the overall trademark is similar to both trademarks, and therefore, if both similar trademarks are used as the designated goods, it is justified that the registration of the original trademark might be mistaken or confused.

However, in determining similarity of trademarks, the external appearance, name, and concept of a trademark shall be observed as a whole and separately, and it shall be determined by whether there is a concern for misconception or confusion as to the origin of goods. Thus, even if one of the external appearance, name, and concept is similar, if a trademark as a whole can avoid misconception or confusion as to the origin clearly, it shall not be deemed similar (see, e.g., Supreme Court Decisions 96Hu344, Sept. 6, 1996; 95Hu1494, Mar. 22, 1996).

Therefore, according to the records, all the words "OCEN" and "PEARL" in the main trademark are marked only in English, and since they are not commonly used terms, it is difficult to view our general consumers in our country as being directly and indirectly 'in relation to the designated goods'. Meanwhile, in consideration of the wide distribution of advertisement and publicity media, the similarity of the main trademark is referred to as "the original trademark" as "the original trademark" as "the most important factor, so its appearance and name are so different from its appearance and name, even if there are some identical or similar parts in terms of concept, the two trademarks are not similar in terms of general consumers, and as such, even if both trademarks are used together with the same and similar designated goods, there is no concern to mislead and confuse the general consumers as to the source of goods.

Ultimately, the original trademark and the cited trademark are deemed as identical or similar to the concept, and the court below erred by misapprehending the legal principles as to determining similarity of trademarks, which affected the conclusion of the decision, and the grounds for appeal pointing this out are as follows.

Therefore, the decision of the court below is reversed, and the case is remanded to the Korean Intellectual Property Office for a new trial and determination. It is so decided as per Disposition by the assent of all participating Justices on the bench.

Justices Lee Yong-hun (Presiding Justice)