[1] Criteria for determining the same or similar nature between goods and services

[2] Whether a construction business, which is the designated goods of the registered trademark “LGTRAUM” and the designated service business of pre-registered service mark “”, can be deemed as identical or similar to each other (negative)

[3] The criteria for determining whether a trademark constitutes "a trademark likely to mislead consumers" under Article 7 (1) 11 of the Trademark Act and the time of determining whether the trademark is "a trademark likely to mislead consumers" (=the time of determining the registration of the trademark)

[1] A trademark itself is a mark to identify the source of a service and its function is different, so it shall not be excessively recognized as identical or similar to the goods and services. Therefore, the same or similar nature between the goods and services shall not be recognized as wide as possible. As such, whether it exists closely related to the service and the goods, whether it is reasonable for the same enterpriser to manufacture and sell the goods and to provide the service, and whether it is reasonable for the general public to think as such, and whether the use of the goods and services coincide with the place of sale of the goods and the service, whether the scope of consumers coincide with the scope of the service, and if the similar mark is used, it shall be recognized in accordance with the common sense of the trading society.

[2] The manufacture and sale of construction materials, which are the designated goods of the registered trademark “LGTRAUM,” and the provision of a construction business, which is the designated service business of prior-registered service mark “”, cannot be deemed to be generally constituted by the same business entity. Since the place of sale of the registered trademark and the place of provision of prior-registered service mark designated goods and transactional situation differs between consumers and consumers, the designated service business of prior-registered service marks cannot be deemed to be identical or similar to each other.

[3] If a registered trademark, which is the subject of a request for a trial for invalidation of registration, is likely to mislead consumers as stipulated in Article 7(1)11 of the Trademark Act, it shall be known to the extent that it can be perceived as a trademark, service mark, product, or service of a specific person if it is a trademark, service mark, or goods or service in general transactions in the Republic of Korea at least, although other trademark, service mark, or service mark compared to the registered trademark or designated goods are not necessarily required to be well-known, it shall be determined at the time of the decision of registration of the registered trademark.

[1] Article 7 (1) 7 of the Trademark Act / [2] Article 7 (1) 7 of the Trademark Act / [3] Article 7 (1) 11 of the Trademark Act

[1] Supreme Court Decision 98Hu1587 delivered on February 23, 1999 (Gong1999Sang, 561) / [3] Supreme Court Decision 98Hu843 delivered on May 30, 200 (Gong2000Ha, 1566), Supreme Court Decision 2001Hu584 delivered on August 21, 2001 (Gong2001Ha, 2120), Supreme Court Decision 9Hu2655 Delivered on September 28, 2001 (Gong201Ha, 2388), Supreme Court Decision 2001Hu184, 1891 delivered on April 8, 200 (Gong203, 108Sang, 2008), Supreme Court Decision 2001Hu13681 delivered on April 28, 2003, Supreme Court Decision 2003Hu1368194 delivered on April 28, 2001203

Plaintiff (Patent & Multilater, Attorneys Park Jong-mun et al., Counsel for the plaintiff-appellant)

El branch Co., Ltd. (Law Firm Square, Attorneys Ku-Jon et al., Counsel for the defendant-appellant)

Patent Court Decision 2003Heo607 delivered on April 8, 2004

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

1. Regarding ground of appeal No. 1

A. A. The trademark itself is a mark to identify the source of a service and its function is different, so the same or similar nature between the goods and the service business should not be excessively recognized. Therefore, the same or similar nature between the goods and the service should not be recognized in light of the general relation between the service and the goods, whether the manufacture and sale of the goods and the provision of the service are carried out by the same business operator, and whether the use of the goods and the service is consistent with the place of sale of the goods and the service, whether the scope of the consumer is consistent, and whether the use of a similar mark is likely to cause confusion of the source if it is used (see Supreme Court Decisions 93Hu1421, 1438, Feb. 8, 1994; 98Hu1587, Feb. 23, 1999, etc.).

B. In light of the above legal principles and the records, the court below is justified in finding that the designated service mark of this case (registration No. 42416) composed of "LGTRUM" as the designated goods of the registered trademark of this case (registration No. 491351), such as artificial stone, studio construction, office building, building construction, commercial building construction, housing construction, apartment construction, apartment construction, apartment building, studio studio studio, non-metallic metal machinery board, nonmetallic metal product manufacturing and sale, nonmetallic metal product manufacturing and sale, nonmetallic product manufacturing and sale, nonmetallic product manufacturing and sale, non-metallic product manufacturing strawl, plastic strawl, etc., and prior-registered service mark (registration No. 42416) composed of "LGTRUM," and the designated service mark of this case (registration No. 491351), the designated goods of the registered trademark of this case cannot be seen as being identical to the designated goods of the registered trademark of this case, and the designated service mark of this case.

2. Regarding ground of appeal No. 2

A. If a registered trademark which is the object of a request for a trial for invalidation of registration is likely to mislead consumers as stipulated in Article 7(1)11 of the Trademark Act, it must be known to consumers or traders to the extent that it can be perceived as a trademark, service mark, product, or service business of a specific person immediately if it is a trademark, service mark, or service in general transactions in the Republic of Korea (see Supreme Court Decisions 2001Hu3187, Mar. 11, 2004; 89Hu1677, May 11, 1990; 92Hu2038, Jun. 22, 1993, etc.). The judgment should be determined at the time of the decision to register the registered trademark (see, e.g., Supreme Court Decisions 89Hu1677, May 11, 190; 92Hu2038, Jun. 22, 1993).

B. In light of the above legal principles and records, the court below's decision that the pre-registered service mark cannot be seen as a well-known service mark that is widely known to domestic consumers as a mark of a specific person in relation to the building business at the time of the decision to register the trademark of this case is just and acceptable, and there is no error of law such as misunderstanding of legal principles or incomplete hearing as otherwise alleged in the ground of appeal.

3. Therefore, the appeal is dismissed. It is so decided as per Disposition by the assent of all participating Justices on the bench.

Justices Park Ill-sook (Presiding Justice)