In a case where the examiner of the Korean Intellectual Property Office decided to refuse the registration of a service mark on the grounds that the pre-registered service mark " " " "," "," ", "," "," "," "," and each of the designated services are similar to the pre-registered service mark " " "," which is a designated service business for the sale of real estate, the case holding that the part of "Save" in the applied service mark cannot be deemed as an essential part, and that the mark of the applied service mark and the pre-registered service mark are not similar, and thus does not fall under Article 7 (1) 7 of the former Trademark Act.

On the ground that the pre-registered service mark " "," "," ", "," ", "," ", "," "," and each mark and designated service business are similar to the pre-registered service mark "," "," "," which is a pre-registered service business that is designated by the examiner of the Korean Intellectual Property Office for the designated service business of selling real estate, etc.

Since the part of the pending service mark and the pre-registered service mark are common in letters, if both marks are similar, the part of the “spaw” should be seen as the essential part of the pending service mark. It is difficult to view that the above part of the “spawch” is widely known and well-known, or that the above part of the “spawch” contains a high weight in the entire service mark compared with other components, or that strong increase for consumers, and it is not deemed that the designated service of the pending service mark is relatively superior to the aforementioned part of the “e.g., e.,” and rather, considering the level of domestic English distribution, the “HL” within the meaning of “PARK” and “HIL” appears to be easy to easily increase the concept of “spawch” as the place of real estate located in the pre-registered service mark, and it is difficult to view that there is no difference between the above part of the pre-registered service mark and the part of the pre-registered service mark “spawch” under the former Trademark Act as being used separately by a specific person.

Article 7(1)7 of the former Trademark Act (wholly amended by Act No. 14033, Feb. 29, 2016) (see current Article 34(1)7)

Daelim Industrial Co., Ltd. (Law Firm Bowal et al., Counsel for the defendant-appellant)

The Commissioner of the Korean Intellectual Property Office

October 26, 2018

1. The decision made by the Intellectual Property Tribunal on February 26, 2018 on the case No. 2016 won463 shall be revoked.

2. The costs of the lawsuit are assessed against the defendant.

The same shall apply to the order.

1. Basic facts

A. The pending service mark

1) Application number / filing date: (Application Number omitted)/ October 1, 2015

2) Composition:

3. Designated service business: A real estate purchase financing brokerage business, real estate sales business, apartment house rental business, multi-family housing management business, real estate acquisition agent business, building acquisition agent business, real estate consulting business, real estate rental business, real estate-related financial management business, commercial building sales information business, real estate sales, real estate sales, real estate sales, real estate sales, rental and rental contract brokerage business, real estate management business, rental and rental contract brokerage business, real estate management business, rental and trade business, building sales, building rental, real estate appraisal business, land appraisal business;

(b) Prior registered service marks;

(i) a prior registered service mark 1

A) Date of application/registration date/registration number: June 7, 2012/ January 7, 2014/ (registration number 1 omitted)

B) Composition:

(c) Designated service business: Investment bank business under Chapter 36 classified into service business; financial design consulting business; hub loan business; real estate-related financial management business; real estate purchase financing brokerage business; real estate-related financial investment management business; merger/acquisition/corporate/corporate restructuring/corporate financing; financial information business related to merger/corporate restructuring/corporate financing; financial information business related to merger/acquisition/corporate/corporate restructuring/corporate financing; assets management/capital/capital/direct investment; financial consultation business related to financial investment / assets management/capital/capital investment; financial analysis business related to financial investment/capital/direct investment;

D) Person entitled to registration: Bluton T.M. L.C.

(ii) a prior registered service mark 2

(A) Date of application/registration date/registration number: October 5, 2007 / November 1, 2008 (registration number 2 omitted)

B) Composition:

(c) Designated service business: Building sale business, real estate management business, real estate leasing business, real estate brokerage business, office rent business, apartment management business, apartment lease business, apartment housing rental business, housing management business, housing brokerage business, and supermarket management business, classified into service business of category 36;

D) Person entitled to registration: Nonparty

(iii) a prior registered service mark 3

(A) Date of application/registration date/registration number: October 5, 2007 / November 1, 2008 (registration number 3 omitted)

B) Composition:

(c) Designated service business: Building sale business, real estate management business, real estate leasing business, real estate brokerage business, office rent business, apartment management business, apartment lease business, apartment housing rental business, housing management business, housing brokerage business, and supermarket management business, classified into service business of category 36;

D) Person entitled to registration: Nonparty

(iv) a prior registered service mark 4

A) Date of application/registration date/registration number: July 23, 2003/ October 7, 2004 (registration number 4 omitted)

B) Composition:

(c) Designated service business: Building sale business, real estate management business, real estate leasing business, real estate brokerage business, office rent business, apartment management business, apartment lease business, apartment housing rental business, housing management business, housing brokerage business, and supermarket management business, classified into service business of category 36;

D) Person entitled to registration: Nonparty

(v) a prior registered service mark 5

A) Date of application/registration date/registration number: July 23, 2003/ October 7, 2004 (registration number 5 omitted)

B) Composition:

(c) Designated service business: Building sale business, real estate management business, real estate leasing business, real estate brokerage business, office rent business, apartment management business, apartment lease business, apartment housing rental business, housing management business, housing brokerage business, and supermarket management business, classified into service business of category 36;

D) Person entitled to registration: Nonparty

6) Prior registered service mark 6

A) Date of application/registration date/registration number: July 23, 2003/ October 7, 2004 (registration number 6 omitted)

B) Composition:

(c) Designated service business: Building sale business, real estate management business, real estate leasing business, real estate brokerage business, office rent business, apartment management business, apartment lease business, apartment housing rental business, housing management business, housing brokerage business, and supermarket management business, classified into service business of category 36;

D) Person entitled to registration: Nonparty

C. Details of the decision of rejection or trial

1) On February 1, 2016, the Korean Intellectual Property Office examiner notified the Plaintiff of the grounds for rejection that a service mark cannot be registered under Article 7(1)7 of the former Trademark Act (wholly amended by Act No. 1403, Feb. 29, 2016; hereinafter the same) and provided an opportunity to submit a written opinion. The Plaintiff did not submit a written opinion by the designated date on April 1, 2016, and the Korean Intellectual Property Office examiner did not discover any matters to reverse the above grounds for rejection as a result of the reexamination on June 21, 2016, and decided to refuse the registration of the service mark (hereinafter “instant decision of rejection”).

2) On July 28, 2016, the Plaintiff filed a request for revocation of the instant decision of refusal (2016 won4463). On February 26, 2018, the Intellectual Property Trial and Appeal Board rendered a ruling to reject the Plaintiff’s request for adjudication (hereinafter “instant decision”).

[Reasons for Recognition] There is no dispute, Gap evidence Nos. 1-7, Gap evidence No. 13-15, the purport of the whole pleadings

2. Determination as to the propriety of the instant trial decision

A. Summary of the parties' assertion

1) Plaintiff

For the following reasons, the pending service mark does not fall under Article 7(1)7 of the former Trademark Act, since it is not likely to cause mistake or confusion as to the source of service business in light of the transaction norms with the earlier application service mark. Accordingly, the instant trial decision should be revoked.

A) Of the pending service mark, the part regarding “spawal” in the instant pending service mark has no distinctive character, and it is unlikely that the name of the apartment complex can be separated only by the so-called Spet four. Therefore, the pending service mark is not similar to the registered service mark in comparison with the registered service mark in whole and the registered service mark in the instant pending service mark.

B) Since apartment buildings are valuable goods, consumers pay attention at the time of purchasing them, even if there are some similar parts among service marks, there is a risk of misconception and confusion about the source.

2) Defendant

The pending service mark of this case cannot be deemed as being inseparably combined with each of its constituent parts, and ordinary consumers and traders tend to memory the trademark as simple names as much as possible. Thus, the pending service mark is referred to as “spawne” part rather than as a whole. Meanwhile, the pending service mark of this case is similar to the registered service mark of this case, and its mark is similar to the registered service mark of this case, and the designated service constitutes Article 7(1)7 of the former Trademark Act, as it is similar to the registered service mark of this case. Accordingly, the trial decision of this case, as seen above, is legitimate.

B. Whether it falls under Article 7(1)7 of the former Trademark Act

1) Relevant legal principles

From among the combined trademarks consisting of two or more letters or diagrams, it is necessary to compare and determine the similarity of trademarks with the essential parts in order to induce the conclusion of appropriate observation in cases where there is an essential part, that is, a part that independently performs the function of indicating the origin of goods by putting an impression on, memory, or demonstration of the trademark on ordinary consumers. However, if there is no essential part among the trademarks, it is necessary to determine the similarity of trademarks in comparison with the whole trademark in accordance with the principle of overall observation. Whether the part 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 highly raised among ordinary consumers, or whether the part constitutes a high weight in the whole trademark. However, the determination should be made by comprehensively taking into account the degree of relative distinctiveness compared with other parts, the degree and degree of combination with the other parts, the relation with the designated goods, and the business situation (see, e.g., Supreme Court Decisions 2015Hu1690, Feb. 9, 2017; 2017>

2) Determination as to the similarity of marks

A) Whether the part of the pending service mark in the instant case can be seen as the essential part

The marks of the pending service mark of this case consisting of “,” “,” “,” “,” “,” “,” “,” and “the marks of the pending service mark of this case are in common character, and thus, if the two marks are similar, the part of the pending service mark of this case “surf” in the pending service mark of this case constitutes an essential part, which independently performs the function of indicating the source of service, by promoting ordinary consumers to raise an impression about, or to memory and memory the said service mark.

However, considering the following circumstances, the basic facts and the written evidence Nos. 17, 19-26, and Eul’s evidence Nos. 7, 8, 10, 11, and 11 (including each number; hereinafter the same shall apply) can be comprehensively seen, only the part of the pending service mark of this case’s application constitutes an element of performing the function of indicating the source of real estate sales business, etc., which is a designated service business independently.

① It is difficult to view that the part of the pending service mark of this case is widely and well-known or well-known, or that part of the service mark contains a high weight in the entire service mark or strong increase for consumers. Moreover, with respect to the designated service business of the pending service mark of this case, it cannot be deemed that the designated service business of the pending service mark of this case has a relatively distinctive character compared to the aforementioned part. Rather, the part of “spaws” indicates the place where real estate, such as apartment, is located with the word “HLS” as the word “PAK” and “HLL” combined with the word “HLS” in English language, meaning park. Considering the level of domestic English distribution, it appears that the term “PARK” and “HLL” can easily see that consumers and business partners can easily see the said part “spaws” as a relatively easy word, and thus, it does not constitute a new concept that has more new meaning than each other due to the combination between the word “PAK” and “IILL”.

② Since multi-family housing, including apartment, fluor, and fluor, including the nationwide part of “SaBB”, exists more than 70 places, the part of “SaBBB” is practically being used by multiple people, it seems inappropriate for the public interest to read it to a specific person.

③ 최근 건설사들은 아파트가 위치한 지역과 건설사 브랜드에 더하여 아파트의 입지나 특성 등을 나타내는 펫네임(각 아파트의 개별 명칭)을 붙여 분양하는 경향이 있다. 그러나 GS건설의 경우 ‘파크’라는 펫네임을 20여 개 아파트 단지에 사용하고 있고, 삼성물산의 경우에도 ‘팰리스’라는 펫네임을 4개의 아파트 단지에 사용하고 있는 등 건설사들이 공통된 펫네임을 여러 아파트 단지들에 사용하고 있는 점을 고려할 때, 펫네임 단독으로 아파트 단지를 구별하는 기능을 한다고 보기 어렵다. 게다가 아파트의 입지나 특성을 중심으로 펫네임을 붙이는 경향에 따라 ‘레이크’, ‘리버’, ‘파크’ 등 지정서비스업과 관련하여 식별력이 약한 단어들이 주로 사용되는 점을 고려하면 더욱 그러하다.

④ At the Internet site related to the guidance, most of the news is referred to as the “e-mailing site on the e-Se-Se-Se-Se-Se-Se-Se-Se-Se-Se-Se-Se-Se-Se-Se-Se-Se-Se-Se-Se-Se-Se-Se-Se-Se-Se-Se-Se-Se-Se-Se-Se-Se-Se-Se-Se-Se-Se-Se-Se-Se-Se-Se-Se-Se-Se-Se-Se-Se-Se-Se-Se-Se-Se-Se-Se-Se-Se-Se-Se-Se-Se-Se-Se-Se-Se-Se-Se-Se-Se-Se-S.”

In regard to this, the Defendant asserts to the effect that there is a transaction room referring to the apartment of the e-Sae-Sa-Sa-Sa-Sa-Sa-Sa-Sa-Sa-Sa-Sa-Sa-Sa-Sa-Sa-Sa-Sa-Sa-Sa-Sa-Sa-Sa-Sa-Sa-Sa-Sa-Sa-Sa-Sa-Sa-Sa-Sa-Sa-Sa-Sa-Sa-Sa-Sa-Sa-Sa-Sa-Sa-Sa-Sa-Sa-Sa-Sa-Sa-Sa-Sa-Sa-Sa-Sa-Sa-Sa-Sa-Sa-Sa-Sa-Sa-Sa-Sa-Sa-Sa-Sa-Sa-Sa-Sa-Sa-Sa-Sa-Sa-Sa-Sa-S.

B) Preparation for marks of the pending service mark and prior registered service mark of this case

As seen earlier, the part of the pending service mark of this case does not fall under the essential part, and it is inappropriate to separately observe the part of the pending service mark as to whether it is similar in preparation for the entire constituent part of the pending service mark and the pre-registered service mark, the pending service mark of this case is not similar to the pre-registered service mark as follows.

(1) The pending service mark and prior registered service mark of this case are different in the number of compositions, in Korean and English composition, in writing, etc., and their appearance are not similar.

(2) The pending service mark of this case is called “the e-Se-Se-Se-Se-Se-Se-Se-Se-Se-Se-Se-Se-Se-Se-Se-Se-Se-Se-Se-Se-Se-Se-Se

(3) The pending service mark of this case has the concept of apartment complex “the e-Sae-Sae-Sae-Sa-Sa-Sa-Sa-Sa-Sa-Sa-Sa-Sa-Sa-Sa-Sa-Sa-Sa-Sa-Sa-Sa-Sa-Sa-Sa-S-Sa-Sa-Sa-Sa-Sa-Sa-Sa-Sa-Sa-Sa

3) Sub-decisions

In full view of the above, the pending service mark is not similar to the prior registered service mark, and thus, it does not constitute Article 7 (1) 7 of the former Trademark Act without any need to prepare for the designated service business.

C. Appropriateness of the instant trial decision

Therefore, the pending service mark registration of this case cannot be denied. Nevertheless, the instant trial decision has maintained the instant decision of refusal differently from this conclusion, and thus, is unreasonable.

3. Conclusion

Thus, the plaintiff's claim seeking the revocation of the trial decision of this case is reasonable and acceptable.

Judges Yoon Sung-sung(Presiding Judge) (Presiding Judge)

1) In addition to the above cases, the Defendant did not submit any other cases. The reference materials submitted by the Defendant on December 5, 2018 after the closing of argument are merely reference materials to the effect that the reference materials submitted by the Defendant on December 5, 2018 are referred to as “the e e e thropis” or “the ethropis”, and it cannot be evidence to prove that they are named as “the ethropis.