[1] Criteria for determining similarity of trademarks

[2] Whether it is similar to those of the applicant trademark "CloxXWER" and the cited trademark "Cloin" (negative)

[1] In determining similarity of trademarks, the similarity of trademarks shall be determined by observing the appearance, name, and concept of the trademark as a whole and separately from the standpoint of consumers to mislead or confuse the origin of the goods. Thus, even if one of the external appearance, name, and concept is similar, if a trademark as a whole makes it possible for consumers to clearly mislead or confuse the origin, it shall not be deemed similar.

[2] The term "XWER" and the cited trademark "PER" include all the letters "PERs" as a combination trademark of different figures, but the word part of the applied trademark can be seen as a whole composed of "X" and the word "EXPPPPPPPPPPPPPPPPPPPPPPPPPPPPPPPPPPPPPPPPPPPPPPPPPPPPPPPPPPPPP equipment is not identical to those of different figures, and there is a very natural aspect to separate the word "X" from those of different goods under the Trademark Act that belong to the applied trademark, and it is hard to see that the applied trademark is not identical to those of the designated goods under the Trademark Act, at least 43 kinds of goods (i.e., complete, rare, physical equipment, and amusement equipment).

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

[1] [2] Supreme Court Decision 95Hu1494 delivered on March 22, 1996 (Gong1996Sang, 1404), Supreme Court Decision 96Hu801 delivered on March 14, 1997 (Gong1997Sang, 1115) / [1] Supreme Court Decision 96Hu1163 delivered on March 28, 1997 (Gong197Sang, 1240), Supreme Court Decision 97Hu1146 delivered on April 24, 1998 (Gong198Sang, 1501), Supreme Court Decision 97Hu2026 delivered on May 222, 1998 (Gong198Ha, 176) / [2] Supreme Court Decision 196Hu19798 delivered on March 196, 197 (Gong297Hu19697 delivered on March 196, 197)

Han Mcatros Co., Ltd. (Patent Attorney Lee Young-ok et al., Counsel for the defendant-appellant)

The Commissioner of the Korean Intellectual Property Office

Korean Intellectual Property Trial and Appeal Board Decision 96Na2199 dated July 31, 1997

The original decision is reversed, and the case is remanded to the Korean Intellectual Property Office.

The grounds of appeal are 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") is identical or similar to the trademark of this case (hereinafter referred to as the "original trademark") and the cited trademark registered in the earlier application (registration number omitted) may cause misconceptions or confusions as to the origin of goods, and therefore, the decision of the court below that the original trademark of this case can be referred to as the "expPPPPPPPPPPPPPP" as a trademark composed of a little figure of Roman's "expPPPPPPPPPP", which can be referred to as the "expphe" or "expphe" as a whole, and that the original trademark of this case (hereinafter referred to as the "brephe") is identical or similar to the cited trademark, and therefore, if both trademarks are used together on the designated goods similar thereto, there is a concern that ordinary consumers or traders may be misconceptions or confusion as to the origin of goods.

However, in determining the similarity of trademarks, the similarity of trademarks shall be determined by observing the external appearance, name, and concept in general and separately from the perspective of consumers to mislead or confuse the source of goods. Thus, even if one of the external appearance, name, and concept is similar, if a trademark can be clearly mistaken or confused with the source, it shall not be deemed similar (see, e.g., Supreme Court Decisions 95Hu1494, Mar. 22, 1996; 96Hu801, Mar. 14, 1997).

According to the records, although the original trademark and the cited trademark include all the letters "PERs" as a combination of figures and letters, it is difficult to view the original trademark as a combination of these parts, but the word "X" can be composed of all the word "EXs" in appearance and as a whole, it can be called "EXs" as a combination of the word "X", and it is very natural to separately observe the part "PPPPPPPPPPPPPPPPPPPPPPPPPPPPPPPPPPPPPPPPPPPPPPPPPPPPPP equipment, and it is also difficult to view the parts "PPPPPPPPPPPPPPPPPPPPPPPPPPPP equipment, such as the combination of these parts, etc., the kinds of goods specified in the Enforcement Rules of the Trademark Act to which the original trademark belongs, and at least those of the above parts "SPPPPPPPPPPPPPPPPPPPPPPPPPPPPPPPPPPPPPPPPPPPPPPPPPPPPPPP.

If so, in comparison with the original trademark and the cited trademark from the perspective of ordinary consumers, both trademarks are clearly different not only from their appearance, but also from their names and concepts. Therefore, even if both trademarks are used together on the designated goods identical or similar to the identical or similar designated goods, there is no concern for ordinary consumers to mislead or confuse the origin of goods.

Nevertheless, the court below erred by misapprehending the legal principles on determining similarity of trademarks and failing to exhaust all necessary deliberations, which affected the conclusion of the decision, where the original trademark is similar to the cited trademark, and cannot be registered under Article 7 (1) 7 of the Trademark Act.

The appeal pointing this out is with merit.

Therefore, the original decision shall be reversed, and the case shall be remanded to the Korean Intellectual Property Office corresponding to the original decision, and it is so decided as per Disposition by the assent of all participating Justices

Justices Seo Sung-sung (Presiding Justice)