[1] Whether the part which has no or weak distinctiveness among the constituent parts of a trademark can be referred or conceptualized by itself as an essential part (negative with qualification)

[2] Whether the registered trademark "POWERPB" and the cited trademark "PB-1" are similar (negative)

[1] Among the constituent parts of a trademark, the part that has no or weak distinctiveness cannot be deemed as an essential part solely for that part. Therefore, it is reasonable to deem that ordinary consumers or traders do not simply refer to or conceptualize the subject trademark only with the part that has no or weak distinctiveness. The same shall also apply in cases where the part is combined with other letters, etc., unless it is combined with a combination of two or more parts.

[2] Of the registered trademark "PPPP, since ordinary consumers can have a strong meaning of "POWER" as to the designated goods, there is no distinctive character as it indicates the quality, efficacy, etc. of the designated goods. The remaining "PB" portion is commonly used together with two characters, and there is no circumstance that there is a special figure to have a new concept or a distinctive character. Thus, since it is a simple and ordinary mark, it is deemed that there is no or lacks distinctive character as it is also a simple and ordinary mark, it cannot be used as a subject to comparison only in determining the similarity with other trademarks. Based on the above, since the registered trademark "PB-1" cannot be compared with the cited trademark "PB-1" as a whole from the perspective of ordinary consumers, it cannot be compared with both trademarks, since both trademarks do not have any special concept, "the appearance of the trademark as a whole" or "non-title" cannot be compared with "the appearance of the trademark as a whole.

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

[1] [2] Supreme Court Decision 97Hu2804 delivered on October 13, 1998 (Gong1998Ha, 2693), Supreme Court Decision 98Hu867 delivered on April 23, 199, Supreme Court Decision 98Hu874 delivered on April 23, 199 (Gong199Sang, 1051)

Plaintiff (Appellant) (Patent Attorney Song Man-ho et al., Counsel for the plaintiff-appellant)

Defendant (Appellant) (Patent Attorney Lee Dong-gil, Counsel for defendant-appellant)

Patent Court Decision 200Heo5919 delivered on May 10, 2001

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

According to the reasoning of the judgment below, since the registered trademark of this case (registration No. 1 omitted) is a combination of "PB" without any special concept, which is the word "PB" and "PB," which has the meaning of "PB", as it indicates the quality and efficacy of the designated goods, it cannot be deemed that the registered trademark of this case is an indivisible part to the extent that it is not natural in the trade. Furthermore, since the "PB" portion of the registered trademark of this case consists of two parts only of the English language, it can be deemed that the trademark of this case can not be registered because the trademark of this case is a simple and sealed mark, even if it is combined with other parts, and thus, it cannot be seen that the trademark of this case cannot be admitted as a non-distinctively similar part of the registered trademark of this case, as long as there is no strong distinctiveness between the registered trademark of this case and the trademark of this case.

However, since the part with no or weak distinctiveness among the constituent parts of a trademark cannot be deemed as an essential part alone, it is reasonable to view that ordinary consumers or traders do not simply refer to the part with no or weak distinctiveness of the subject trademark, and the same applies in cases where the part is combined with other letters, etc. unless the part is combined with one another (see, e.g., Supreme Court Decisions 97Hu2804, Oct. 13, 1998; 98Hu867, Apr. 23, 1999; 98Hu874, Apr. 23, 199).

However, as recognized by the court below, since the part of the registered trademark of this case, "POWER" can have a strong meaning that ordinary consumers are able to understand the designated goods' quality, efficacy, etc., it has no distinguishability, and the remaining part of "PB" usually contains two characters in English Alphabab, which is commonly used, and it is not clear that there is no new concept or distinctive character. Thus, since it is a simple and ordinary mark and it is also deemed that there is no distinctive character, it cannot be used as a subject to comparison only in determining the similarity with other trademarks. Accordingly, the registered trademark of this case and the above cited trademark 2 (Registration No. 1 (Registration No. 3 omitted) of the trademark of this case cannot be seen as the trademark of this case, since the trademark of this case and the above cited trademark 1 (Registration No. 1 (Registration No. 3 omitted) of this case can be seen as the trademark of this case and the trademark of this case cannot be cited as the trademark of this case as a whole, even if it is compared with the trademark of this case.

Nevertheless, the court below erred by misapprehending the legal principles as to similarity between the registered trademark of this case and the cited trademark 2, and thereby affecting the conclusion of the judgment. The ground of appeal assigning this error is with merit.

Therefore, the judgment of the court below is reversed, and the case is remanded to the court below. It is so decided as per Disposition by the assent of all participating Justices.

Justices Son Ji-yol (Presiding Justice)