[1] In a case where there is an essential part of a combined trademark, whether it is necessary to prepare for and determine the similarity of the trademark with an essential part (affirmative), and the method of determining whether the constituent part of the trademark is an essential part

[2] In a case where Party A entitled to prior registered service mark “” filed a petition for a invalidation trial against Party B, who is the trademark right holder of the registered trademark “B,” which is a designated service business, for the registration invalidation of the trademark “A” under Article 7(1)7 of the former Trademark Act, the case holding that the lower court erred by misapprehending the legal doctrine on the similarity of trademarks, and failing to exhaust all necessary deliberations, on the ground that the trademark is not similar to the prior registered service mark, on the ground that the “TT” jointly owned constitutes an essential part of an independent distinctive mark to function as an independent distinctive mark, and that the “TT” portion is not deemed as an essential part because it has no or weak distinctiveness with respect to the category of clothing, sports clothes, and Shirts among the designated goods

[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] Articles 2(3) and 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 2006Hu1964 Decided November 9, 2006 Supreme Court Decision 2010Do7352 Decided January 27, 201, Supreme Court Decision 2015Hu1690 Decided February 9, 2017 (Gong2017Sang, 591) Supreme Court Decision 2014Hu2535 Decided July 11, 2017

Plaintiff (Patent Attorney Lee Jae-soo, Counsel for the plaintiff-appellant)

Defendant (Law Firm Squa, Attorneys Oh Jin-jin et al., Counsel for the defendant-appellant)

Patent Court Decision 2017Heo3263 decided July 21, 2017

The part of the lower judgment against the Defendant is reversed, and that part of the case is remanded to the Patent Court.

The grounds of appeal are examined.

1. In principle, the similarity of combined trademarks consisting of two or more letters or diagrams should be determined on the basis of the overall appearance, name, and concept of their constituent parts. However, if there is an essential part, in order to induce the conclusion of appropriate observation, it is necessary to prepare and determine the similarity of trademarks with their essential parts in order to determine the similarity of trademarks.

In addition, whether the part of a trademark is essential or not shall be determined based on the elements such as whether the part is widely and well-known or well-known or strong increase in the general consumers, and whether the part constitutes a high weight in the entire trademark. However, the determination should be made by comprehensively taking into account the degree of relative distinctiveness compared with other parts, its combination and degree, the relationship with the designated goods, and the transaction circumstances (see Supreme Court Decision 2015Hu1690, Feb. 9, 2017).

2. We examine the above legal principles and records.

A. The registered trademark of this case (registration number omitted) as indicated in the holding of the court below consists of “A” as the designated goods with the category of clothing, sports clothes, and air rts as the designated goods. The registered service mark of this case, as indicated in the judgment of the court below, consists of “A” with the category of clothing, retail business as the designated service business.

B. The part of “short” jointly owned by both marks is used as an abbreviation of “group titts” based on the time of application for the instant registered trademark (as of March 18, 2014), which is the base point of time for determination under Article 7(1)7 of the former Trademark Act (wholly amended by Act No. 1403, Feb. 29, 2016). The two words are referred to as “group titts,” and there is a tendency that two or more words are abbreviationd in front of each word.

However, according to the records, “shorts” is a word that is not pre-registered, and the Internet use case where “shorts” is used in the meaning of “group T-Vs” does not extend to about 10 annual averages per 13 years and 4 months from November 21, 2000 to March 18, 2014. In addition, the Internet product search data using the search term as “shorts” is considerably less than the data using the search term as “groups”, and a large number of them appears to be the result of the search on the Defendant’s Internet site, the holder of the prior-registered service mark of this case. Accordingly, it is difficult to view that “shorts” was used to substitute “groups” or that it cannot be seen as a “group T-Vs” with the meaning of “group T-Vs”, and thus, it cannot be deemed that it does not reach an extent that it does not constitute an inherent or weak relation between “groups” or designated service business.

C. In addition, the term “satisfy” part of the registered trademark of this case means “satisfying the value,” and it is highly distinguishable from “satisfy” part without distinctiveness in relation to the designated goods.

D. Furthermore, it is difficult to view the function of identification marks only as a combination, since the “satisfy” does not form a new meaning more than a combination of each part.

E. In full view of these circumstances, the term “short” in the instant registered trademark constitutes an essential part of the instant registered trademark to function as an independent identification mark.

F. Nevertheless, the lower court determined that the registered trademark of this case is not similar to the prior registered service mark of this case on the ground that the part “Tti” of the registered trademark of this case, among the designated goods, cannot be deemed as an essential part because it has no or weak distinctiveness with respect to the category of clothing, sports clothes, and exhausthers. In so doing, the lower court erred by misapprehending the legal doctrine on the similarity of trademarks, thereby adversely affecting the conclusion of the judgment by failing

3. Therefore, the part of the judgment below against the defendant is reversed, and that part of the case is remanded to the court below 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 Ki-taik (Presiding Justice)