[1] The method of determining the similarity of trademarks where there is an essential part among the combined trademarks consisting of two or more letters or diagrams, and the standard for determining whether the constituent parts of the trademark are essential

[2] Method of determining whether there is no or weak distinctiveness that can function as an essential part of a combination trademark

[3] In a case where the issue is whether the challenged mark " "," which is a product using "influence," falls under the scope of the right of registered trademark " "," the designated product of which is "influence research," the case holding that the trademark and the challenged mark do not constitute an essential part of performing the function of indicating the origin of the product independently from the registered trademark and the challenged mark, and that if the two marks are comprehensively observed or compared mainly with the parts of "" and "", they are not similar in appearance or name, etc.

[1] Article 34 (1) 7 of the Trademark Act / [2] Article 34 (1) 7 of the Trademark Act / [3] Article 34 (1) 7 of the Trademark Act and Article 121 of the Trademark Act

[1] [2] Supreme Court Decision 2015Hu932 Decided March 9, 2017 (Gong2017Sang, 662), Supreme Court Decision 2015Hu949 Decided March 9, 2017, Supreme Court Decision 2016Hu2447 Decided March 15, 2017 / [1] Supreme Court Decision 2015Hu1690 Decided February 9, 2017 (Gong2017Sang, 591), Supreme Court Decision 2014Hu2535 Decided July 11, 2017 (Gong2017Hu2697 Decided March 29, 2018)

Plaintiff (Patent Attorney Ba-han, Counsel for the plaintiff-appellant)

Defendant (Patent Attorney Lee Jong-chul et al., Counsel for the defendant-appellant)

Patent Court Decision 2017Heo5320 decided November 14, 2017

The judgment below is reversed, and 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, it is necessary to compare and determine the similarity of trademarks independently with the essential part 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 raising an impression of the trademark among ordinary consumers, or by inducing ordinary consumers to memory or associate with the trademark, and thereby inducing the conclusion of appropriate observation. In addition, whether the constituent part of a trademark is essential or not shall be determined on the basis of the elements such as whether the part is widely and clearly known or clearly, or is a part that gives a strong increase to ordinary consumers, or a part that accounts for a high weight in the entire trademark. However, the determination should be made on the basis of comprehensive consideration of the degree of relative distinctiveness compared with other constituent parts, the degree and degree of combination with the other constituent parts, the relationship with the designated goods, and the transaction situation (see, e.g.,

Meanwhile, in determining whether a trademark has no or weak distinctiveness that can function as an essential part of a combined trademark, the circumstances in which many trademarks including the relevant component are registered or applied for registration are publicly announced with respect to goods identical or similar to the designated goods can also be considered. Thus, the determination should be made by comprehensively taking into account the number of trademarks registered or publicly announced, the number of applicants or trademark right holders, the degree of intrinsic distinctiveness of the relevant component part, the relationship with the designated goods, and the existence of circumstances in which it is deemed inappropriate to allow a specific person to monopoly the relevant trademark (see Supreme Court Decision 2015Hu932, Mar. 9, 2017, etc.).

2. We examine the above legal principles and records.

A. The registered trademark of this case (trademark registration number omitted) in the judgment of the court below is "," and the designated goods are "brusing research". The mark subject to confirmation in the judgment of the court below is "", and the goods using it are "brus".

B. Of the registered trademarks of this case, the part “” refers to the designated goods themselves and thus, cannot be recognized as distinctive character. Meanwhile, the part “” is incorporated into a single unit without being kept, and it is merely a part four, and there is no particular difficulty in referring to the entire name.

C. Of the registered trademark of this case, the part of the registered trademark of this case cannot be deemed to be widely known and well-known or well-known, or the part causing strong increase to ordinary consumers, and it is difficult to view that the part of the registered trademark of this case constitutes a high portion of the entire trademark. Rather, inasmuch as the aforementioned part is widely used as the meaning of “the period during which it continues to exist so far” and its quality, efficacy, etc. associated with the designated goods, its distinctiveness is not high. In light of the circumstances where multiple trademarks, including “one thousand years,” were registered with respect to goods identical or similar to the designated goods prior to the instant decision of this case, it is difficult to recognize the distinctiveness thereof, or it is inappropriate to recognize it as a specific person in the public interest. Furthermore, the above part of the registered trademark of this case cannot be deemed to have high relative distinctiveness compared to the above part of the registered trademark of this case. Moreover, there is no evidence to see that the part of the registered trademark

D. In light of the concept of “” and “” among the challenged marks, it is difficult to recognize their independent distinctiveness in light of the relationship with the goods using the trademark, the degree of designization, and the proportion of the entire trademark, etc. Meanwhile, the part “” is a combination without a string, and there is no particular difficulty in referring to the entire name as a whole merely 4 parts.

E. Of the challenged marks, the part of the challenged mark cannot be deemed to be widely and well-known or well-known, or the part that gives a strong impression to ordinary consumers, and it is also difficult to deem that the part of the challenged mark constitutes a high portion of the entire trademark. Rather, it is difficult to recognize distinctiveness on the same ground as the part of the registered trademark of this case, or it is inappropriate to recognize that the part of the challenged mark is exclusive to a specific person for public interest. Furthermore, the part of the challenged trademark of this case cannot be deemed to have high relative distinctiveness level compared with the part of the challenged trademark of this case. Moreover, there is no evidence to deem that the challenged mark merely referred to

F. Therefore, the part of the trademark of this case and the challenged mark cannot be deemed as an essential part of performing the function of indicating the origin of goods independently from the trademark of this case and the challenged mark. If both marks are comprehensively observed or compared with the part of “” and “” focusing on their external appearance or name, it is not similar in terms of differences.

3. Nevertheless, the lower court deemed the part “” and “” respectively from the registered trademark of this case and the challenged mark as the essential part, and determined that both marks are similar in terms of the name and concept of the essential part. In so determining, the lower court erred by misapprehending the legal doctrine on determining similarity of trademarks, thereby adversely affecting the conclusion of the judgment. The allegation contained in the grounds of appeal on this point is with merit.

4. 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 Kwon Soon-il (Presiding Justice)