[1] The method of determining the similarity of combined trademarks consisting of two or more letters or diagrams combinations

[2] In a case where a trademark contains an essential part, whether the similarity of a trademark may be determined by comparing only the essential part without being separately observed (affirmative), and the method of determining whether the constituent part of the trademark is an essential part of the trademark / Whether such a legal doctrine likewise applies to the service mark (affirmative)

[3] In a case where Gap entitled to prior registered service mark " " " "", " " "," and other service marks " " " " " , beyond the Hanbab Medical Service Act," and registered service mark " " " " " constitutes grounds for invalidation of registration under Article 7 (1) 11 and 12 of the former Trademark Act, the case holding that the judgment below erred by misapprehending the legal principles as to the similarity of the service mark and failing to exhaust all necessary deliberations in the judgment below, even though the prior registered service mark and the registered service mark constitute a similar service mark with the same name and concept as "self-product"

[1] In principle, the similarity of combined trademarks consisting of two or more letters or diagrams shall 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 compare and determine the similarity of trademarks with essential parts in order to induce the conclusion of appropriate observation.

[2] The essential part of a trademark, irrespective of other components, becomes an object of comparison in determining similarity with another trademark because of its independent distinctive character recognized by ordinary consumers, regardless of its independent distinctive character. Therefore, in cases where a trademark contains an essential part, the similarity of trademarks may be determined by comparing only the essential part without examining whether the part is separately observed.

In addition, the elements of a trademark are considered, such as whether the part is well-known or well-known or highly raised among ordinary consumers, and whether the part constitutes a high weight in the entire trademark. However, the standard of relative distinctiveness compared to other parts should be determined by comprehensively considering the degree of relative distinctiveness compared with the other parts, its combination and degree, the relationship with the designated goods, and the transaction circumstances.

This legal doctrine also applies to service marks.

[3] The case holding that in a case where a registered service mark owner Gap filed a petition for a registration invalidation trial against Eul holding the registered service mark right of the registered service mark " " " " " "," whose name and concept are the same as that of "here medical service, sexual surgery," etc. as the designated service business, the designated service mark holder Eul filed a petition for a registration invalidation trial on the grounds that the registered service mark constitutes grounds for invalidation of registration under Article 7 (1) 11 and 12 of the former Trademark Act (wholly amended by Act No. 1403, Feb. 29, 2016), the case held that the judgment below erred by misapprehending the legal principles as to the similarity of the registered service mark since the prior registration service mark, etc. and the registered service mark are both "self-living" and "self-living" are both required, and without examining whether the "self-living" is separately observed.

[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] Article 2 (3), Article 7 (1) 7 (see current Article 34 (1) 7), Article 11 (see current Article 34 (1) 11), Article 12 (see current Article 34 (1) 12), and Article 34 (3) of the former Trademark Act (wholly amended by Act No. 1403, Feb. 29, 2016) / [3] Article 2 (3), Article 7 (1) 7 (1) 7, Article 34 (1) 14 (see current Article 34 (1) 11), Article 34 (1) 12 (see current Article 34 (1) 12) of the former Trademark Act (wholly amended by Act No. 14033, Feb. 29, 2017)

[1] Supreme Court Decision 2003Do3906 Decided January 26, 2006 (Gong2006Sang, 356), Supreme Court Decision 2006Hu1964 Decided November 9, 2006, Supreme Court Decision 2010Do7352 Decided January 27, 201, Supreme Court Decision 2012Da12849 Decided June 26, 2014

Plaintiff (Patent Attorney Park Young-young et al., Counsel for the plaintiff-appellant)

Defendant

Patent Court Decision 2015Heo3887 decided September 18, 2015

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

The grounds of appeal are examined (to the extent of supplement in case of supplemental appellate briefs not timely filed).

1. In principle, the similarity of combined trademarks consisting of two or more letters or diagrams shall 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 an appropriate conclusion of the overall observation, it is necessary to compare and determine the similarity of trademarks with the essential part in order to induce an appropriate conclusion of the overall observation (see, e.g., Supreme Court Decisions 2003Do3906, Nov. 26, 2006; 2006Hu1964, Nov. 9, 2006; 2010Do7352, Nov. 27, 201; 201; 201Da12849, Jun. 26, 2014).

The essential part of a trademark is, regardless of other constituent parts, independent distinctiveness, which is recognizable to ordinary consumers only, and thus, is subject to comparison in determining similarity with other trademarks. Therefore, in cases where a trademark contains an essential part, the similarity of trademarks can be determined by comparing only the essential part without considering whether the part is separately observed.

In addition, whether the part of a trademark is essential or not shall be determined based on factors such as whether the part is widely and well-known or well-known or strong increase is made to ordinary consumers, and whether the part accounts for a high weight in the entire trademark. However, the determination should be made by comprehensively considering the degree of relative distinctiveness compared to other parts, its combination and degree, the relationship with the designated goods, and the transaction circumstances.

This legal doctrine also applies to service marks.

2. We examine the above legal principles and records.

The registered service mark (service mark registration No. 176248) of this case, as indicated in the judgment of the court below, consists of “here of oriental medicine and sex surgery business” as designated service business. The registered service mark 1 and 2 of this case, as indicated in the judgment of the court below, consists of two sides of each right by using “ oriental medicine hospital business” as designated service business, etc., and the registered service mark 3 of this case is composed of two sides of each right, and the registered service mark of this case, as indicated in the judgment of the court below, consists of two parts of service business, such as “ oriental medicine clinic business.”

A person shall be appointed.

A person shall be appointed.

A person shall be appointed.

A person shall be appointed.

A person shall be appointed.

The word “self-living” portion of the instant prior-registered service mark and prior-use service mark (hereinafter “the instant prior-registered service mark, etc.”) jointly owned is the word having the meaning of “self-living” and “self-living” in relation to the designated service business or the service business using the instant prior-registered service mark, while the word “her own ability” and “self-living” has an inherent distinctive character in relation to the designated service business or the service business. On the other hand, the word “her own Council member” or “her oriental medical hospital” indicates its designated service or service business and do not distinguish between the designated service mark 2, 3, and prior-use service mark and the designated service mark. Furthermore, in light of the period used in the media as “her own medical business,” and the frequency and content introduced to the media, degree of publicity, etc., the phrase “self-living” portion, which has distinctiveness in the instant prior-registered service mark, constitutes an independent distinctive function in relation to the instant prior-registered service mark, etc., being widely recognizable to general consumers.

Meanwhile, among the characters of the registered service mark of this case, the phrase “self-living” has strong distinctiveness as in the same way as the original part of the registered service mark of this case. On the other hand, “the first part” is used in Chinese language, such as a drug or a story, and its designated service business is related to the designated service business, and thus, its distinctiveness is not high. In addition, in comparison with the original part of the registered service mark of this case, relative distinctiveness is weak. Furthermore, even if “self-living” has the meaning of “story,” it is not pre-registered and it is not a new meaning that combines both the meaning of “self-living” and “the first” and “the first part of the registered service mark of this case, and it is difficult to view that the part of the registered service mark of this case does not function as a distinctive mark only as a combination with “the first”. In light of the aforementioned characteristics of the registered service mark of this case, it is difficult to view that it does not have any particular function as a combination of the registered service mark of this case.

Thus, since both the pre-registered service mark of this case and the registered service mark of this case are the “self-living” of both the essential parts, if the above service mark is compared with the “self-living” criteria without considering whether the “self-living” is separately observed, it shall be deemed that the name and concept are the same and similar service mark.

Nevertheless, the lower court determined that the instant prior-registered service mark, etc. and the instant registered service mark are not similar to the name, concept, etc., and thus their marks are not similar. In so doing, it erred by misapprehending the legal doctrine on the similarity of service marks, thereby failing to exhaust all necessary deliberations, which affected the conclusion of the judgment.

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 Lee Ki-taik (Presiding Justice)