[1] The relationship between the overall observation and the functional observation in determining the similarity of trademarks

[2] Whether the designated goods and the designated service business are similar to the registered trademark/service mark of earlier application consisting of “the place of learning, the management of private teaching institutes, and the communications lecture business,” and the applied trademark/service mark and the designated service business as “the medium language private teaching institute management and communications lecture business,” etc. (affirmative)

[1] Whether a trademark is similar or not shall be determined by comprehensively considering the appearance, name, and concept of two trademarks compared to the two trademarks. At the time of time, given that there are cases where a certain constituent part of a trademark independently performs the function of indicating the origin of other goods, such as creating an appearance of the trademark, or inducing ordinary consumers or traders to memory or associate with the trademark, it is necessary to observe the trademark in parallel with the overall observation in order to prepare for the appearance, name, and concept of the trademark.

[2] The designated goods and the designated service business shall be "school sites, entrance and research institute business, communications lecture business", and the applied trademark/service mark and the designated service business shall be "," and all of the earlier application service marks consisting of " " " "" may be called "emergency" simply. The concept may also be the same and similar concept may cause misconceptions and confusions as to their source if they are used in the same or similar designated service business. Thus, the two service marks shall be deemed as a similar service mark as a whole, regardless of their appearance differences.

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

[1] Supreme Court Decision 94Hu265 delivered on May 24, 1994 (Gong1994Ha, 1836) Supreme Court Decision 2004Hu2895 Delivered on June 27, 2006

Non-performance and Appeal Co., Ltd. (Patent Dan Patent Attorney Lee Dong-soo et al., Counsel for the defendant-appellant)

The Commissioner of the Korean Intellectual Property Office

Patent Court Decision 2006Heo2530 Decided June 16, 2006

The judgment below is reversed, and the case is remanded to the Patent Court.

The grounds of appeal are examined.

1. According to the reasoning of the judgment below, the court below determined that the trademark/service mark of this case (application number 2004-845) and designated service business of this case consisting of the designated goods and designated service business as "learning site, entrance and research institute management business, communications lecture business, etc." and the designated service business as "" can be referred to as "emergency" and the applied trademark/service mark of this case can be referred to as "emergency" and the applied trademark/service mark of this case can be referred to as "emergency", and the applied trademark/service mark of this case can be referred to as "non-Korean," and the applied trademark/service mark of this case can be referred to as "non-Korean," or the applied trademark/service mark of this case can be referred to as "non-Korean," or the designated service mark of this case is clearly different in terms of the concept of "non-Korean, and its external appearance and appearance are clearly different in terms of the concept of "non-Korean," and it can be seen that the appearance of the service business of this case and its appearance are clearly similar.

2. However, the lower court’s determination is difficult to accept.

A. Whether a trademark is similar should be determined by comprehensively taking account of the appearance, name, and concept of two trademarks compared. At the time, given that a certain constituent part of a trademark independently performs the function of indicating the origin of other goods, such as creating an impression of the trademark, or inducing ordinary consumers or traders to memory or associate with the trademark, it is necessary to observe the trademark in parallel with the overall observation in an appropriate manner to extract such constituent part and prepare its appearance, name, and concept (see, e.g., Supreme Court Decisions 94Hu265, May 24, 1994; 2003Do3906, Jan. 26, 2006). When a trademark is combined with each constituent part of the text, text, or figure, it is deemed that separate and observe each constituent part of the trademark from other parts cannot be seen as identical or similar to that of the trademark, and if it is always deemed that it cannot be seen as identical or similar to that of another person’s goods, it can be seen as identical or similar to that of the entire trademark.

B. In light of the above legal principles and records, the service mark of earlier application combining each constituent element of the trademark of this case/service mark of this case/service mark of this case and each constituent element of letters and diagrams shall be deemed as an indivisible combination to the extent that it is deemed that the separate observation of each constituent element is natural in the transaction, in full view of the overall composition and form, the individual constituent element, form, size and proportion of each constituent element, the degree and location that combines other constituent elements, and the types and contents of the designated service business. Among them, the part of the Korean “emergency” which is common to both service marks may be deemed as a part with central distinctive character because it consists of a very strong leading of ordinary consumers or traders’ attention. Thus, ordinary consumers or traders may form an impression as to both service marks by simply referring and interpreting both service marks as “emergency.”

In addition, in the case of the applied trademark/service mark of this case, the part of “emergency” has been somewhat devised and indicated as “non-lic and symbol” in letters in the lower right-hand part, and in the case of the earlier application service mark, even though there is a statement of “emergency” in the figure part, insofar as the name of “emergency” with central distinctive character in both service marks is identical, general consumers or traders with average care may form an increase in both service marks, and memory and efficiencies by virtue of the name of the “emergency” part and the concept arising therefrom, so such circumstance alone does not change the concept of both service marks.

Furthermore, the determination of the similarity of a trademark or service mark should not be compared with two trademarks or service marks themselves, but be made from the perspective of whether consumers or traders representing two trademarks or service marks may mislead or confuse the source of designated goods or designated service. Although the two service marks are different in their overall appearance, it is difficult to deem that the difference has reached the degree of clearly preventing misconception or confusion of the source of designated service by suppressing the identity of the name and concept of the “emergency” part with central distinctiveness in both service marks.

Ultimately, both service marks can be called "emergency" simply, and in such a case, if they are used together for the same or similar designated service business as the same or similar concept is identical, they may cause misconceptions or confusions as to their source. Thus, the two service marks should be viewed as similar service marks as a whole, notwithstanding the difference in their appearance.

Nevertheless, the court below erred by misapprehending the legal principles as to the similarity of service marks, or by failing to exhaust all necessary deliberations, which affected the conclusion of the judgment. Therefore, the ground of appeal assigning this error is with merit.

3. Therefore, the lower judgment is reversed, and the case is remanded to the lower court for further proceedings consistent with this Opinion. It is so decided as per Disposition by the assent of all participating Justices on the bench.

Justices Yang Sung-tae (Presiding Justice)