[1] In a case where there is an essential part of a combined trademark, whether it is necessary to prepare for and determine the similarity of the trademark with an essential part (affirmative), and the method of determining whether the constituent part of the trademark is an essential part

[2] In a case where the issue of whether the applied trademark “” as the designated goods of “Catheters Sed in Medical Images,” was similar to the pre-registered trademark “”, the case holding that the court below erred by misapprehending the legal principles in deeming the portion of “DDRNY” in the applied trademark as the essential part of the pre-registered trademark, and in comparison with the pre-registered trademark, both trademarks are deemed as not only the appearance, but also the name and concept different from the pre-registered trademark, and thus, deeming the “OPS” portion as the essential part of the pre-registered trademark to be similar to both trademarks

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

[1] Supreme Court Decision 2006Hu1964 Decided November 9, 2006 Supreme Court Decision 2010Do7352 Decided January 27, 201, Supreme Court Decision 2015Hu1690 Decided February 9, 2017 (Gong2017Sang, 591) Supreme Court Decision 2014Hu2535 Decided July 11, 2017, Supreme Court Decision 2017Hu1984 Decided December 28, 2017

Lnib Imagling, Inc. (Patent Attorney Kim Tae-tae et al., Counsel for the plaintiff-appellant)

The Commissioner of the Korean Intellectual Property Office

Patent Court Decision 2015Heo5715 decided May 19, 2016

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 should 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 prepare and determine the similarity of trademarks with the essential part in order to determine the similarity of trademarks among the trademarks.

In addition, whether the part of a trademark 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 strong increase in the general consumers, and whether the part constitutes a high weight in the entire trademark. However, the determination should be made by comprehensively taking into account the degree of relative distinctiveness compared with other parts, its combination and degree, the relationship with the designated goods, and the transaction circumstances (see Supreme Court Decision 2015Hu1690, Feb. 9, 2017).

2. We examine the above legal principles and records.

A. The trademark of this case’s international registration (hereinafter “instant application trademark”) consists of “DDRONY” and “OPTS”, and the entire trademark is composed of relatively a relatively tension with “DDDDPS”. The pre-registered trademark 1 consists of “observers” and “observers” or “observers.”

B. The designated goods of the applied trademark of this case, “OPTS” is a medical device that facilitates surgery or diagnosis in the outside of the human body by installing sirens, etc. on rubber or metal agents to photograph the inside of the human body and monitoring them. The term “OPS” part of the applied trademark of this case is merely the extent that “C” was changed from “OPTIC” with the meaning of “grance and sirens” to “S”. Therefore, the term “OPS” part is deemed to be a series of “OPIC” related to the nature of the designated goods, and thus, its distinctiveness is weak.

On the other hand, among the applied trademarks in this case, the term "DCRNY" portion is called "dive area", and in comparison with the designated goods in relation to the designated goods, relative distinctiveness is strong, and the importance of the trademark in the entire trademark is high.

C. Therefore, the part of “DDAGONY” in the pending trademark in this case ought to be considered as an essential part, and the part of “OPTPPS” cannot be considered as an essential part. In comparison with “DDAGONNY” and preregistered trademark 1, which is an essential part of the pending trademark in this case, the two trademarks are different not only from their appearance, but also from their names and concepts.

D. Nevertheless, the lower court deemed the “OTPPS” portion of the applied trademark of this case as an essential part and determined as similar to the mark 1 of the pre-registered trademark. In so determining, the lower court erred by misapprehending the legal doctrine on determining similarity of trademarks, thereby failing to exhaust all necessary deliberations, and thereby adversely affecting the conclusion of the judgment. The allegation contained in the grounds of appeal on

3. Conclusion

The lower judgment is reversed without further proceeding to decide on the remaining grounds of appeal, 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 Cho Jae-chul (Presiding Justice)