The case holding that the applied trademark “” is not similar to “” and “” of the pre-registered trademark

The case holding that it is not similar to the pre-registered trademark registration inasmuch as it is difficult to view that the trademark “” is separated only from “NICLE” or “MILER”, and thus it is not likely to cause general consumers or traders to mistake or confuse the source of goods, as well as the appearance and appearance of the pre-registered trademark “” and “the name and concept of the pre-registered trademark “” are not different from those of the pre-registered trademark.

Article 7 (1) 7 of the Trademark Act

Supreme Court Decision 2005Hu2908 Decided August 25, 2006 (Gong2006Ha, 1637) Supreme Court Decision 2006Hu3557 Decided May 11, 2007, Supreme Court Decision 2008Hu2213 Decided September 25, 2008

Plaintiff (Patent & Co., Ltd., Patent & Co., Ltd. et al., Counsel for the plaintiff-appellant)

The Commissioner of the Korean Intellectual Property Office

Patent Court Decision 2008Heo7959 Decided October 24, 2008

The appeal is dismissed. The costs of appeal are assessed against the defendant.

The grounds of appeal are examined.

The similarity of a trademark shall be determined based on whether there is a concern for ordinary consumers or traders to mislead or confuse the origin of the designated goods in the transaction of the designated goods by objectively, comprehensively, and separately observing the external appearance, name, and concept of the trademark. Thus, even if there is a similar part between the compared trademarks, if there is little possibility that the trademark may be separated or recognizable, or if it can avoid confusion of the source clearly when observing the whole part, it shall not be deemed a similar trademark (see Supreme Court Decision 2006Hu3557, May 11, 2007, etc.).

In light of the record, the trademark of this case (application No. 40-2006-34773) composed of “” has a character trademark consisting of the name of a designer of clothes from U.S. and is similar in that it has part of “MALE” as stated in the judgment of the court below, and part of “NICE” as stated in the judgment of the court below which consists of “” and “NICE” as stated in the judgment of the court below.

However, in light of the overall name of the trademark applied in this case is merely a four word, and it is relatively short. In addition, in light of the English distribution level of Korea, the degree of international exchange, the Internet use of the trademark applied in this case, etc., domestic ordinary consumers or traders can easily understand that the mark of the trademark applied in this case is the name of the West. In the clothing product, etc., which is the designated goods of both trademarks, the use of the trademark as a whole name of the DNA is generalized at the filing date of the trademark applied in this case, and there was a tendency for ordinary consumers or traders to recognize the source of the goods as a whole including the name of the trademark as a trademark including the result, and as the trademark "NICLE" or "MILE" does not have a particularly strong distinctive character, general consumers or traders have separately removed only the "NICLE" or the "MILELE" part from the trademark applied in this case, the concept of the trademark applied in this case can be seen as a whole and well-known concept.

Therefore, insofar as it is difficult to see that the trademark applied in this case is separated only from “NICLE” or “MILER” and thus, the trademark applied in this case is not likely to cause misconceptions or confusions as to the source of goods, as well as prior registered trademarks and appearance, and as to the name and concept, it cannot be said that the trademark applied in this case may cause misconceptions or confusions as to the source of goods.

In the same purport, the court below is just to determine that the applied trademark and the registered trademark of this case are not similar.

The court below did not err in the misapprehension of legal principles as to determining similarity of trademarks as alleged in the grounds of appeal.

Therefore, the appeal is dismissed, and the costs of appeal are assessed against the losing party. It is so decided as per Disposition by the assent of all participating Justices on the bench.

Justices Yang Chang-soo (Presiding Justice)