[1] Method of determining the similarity of combined trademarks consisting of two or more letters or diagrams combinations

[2] In a case where the Korean Intellectual Property Office rendered a decision to refuse the registration of a trademark applied for registration of the applied trademark “,” etc. as designated goods under Article 7(1)7 of the former Trademark Act in relation to the applicant trademark “,” the case holding that the lower court erred by misapprehending the legal doctrine, inasmuch as only “” part of the pre-registered trademark cannot be deemed as performing the function of indicating the origin of goods independently from the pre-registered trademark, and thus, the applied trademark cannot be deemed similar when compared to the entire composition of the pre-registered trademark

[1] Article 7(1)7 (see current Article 34(1)7) of the former Trademark Act (wholly amended by Act No. 14033, Feb. 29, 2016) / [2] Article 7(1)7 (see current Article 34(1)7) of the former Trademark Act (wholly amended by Act No. 14033, Feb. 29, 2016)

[1] Supreme Court Decision 2015Hu1690 Decided February 9, 2017 (Gong2017Sang, 591), Supreme Court Decision 2016Hu2447 Decided March 15, 2017, Supreme Court Decision 2014Hu2535 Decided July 11, 2017, Supreme Court Decision 2017Hu2697 Decided March 29, 2018 (Gong2018Sang, 841), Supreme Court Decision 2017Hu208 Decided July 24, 2018 (Gong2018Ha, 1798)

Mou Limed (Patent Attorney Lee Ho-soo et al., Counsel for the patent attorney Lee Jae-soo et al., Counsel for the patent attorney Lee Jae-soo)

The Commissioner of the Korean Intellectual Property Office

Patent Court Decision 2016Heo9868 Decided March 31, 2017

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. Of the combined trademarks consisting of two or more letters or diagrams, it is necessary to compare and determine the similarity of trademarks with the essential parts in order to induce the conclusion of appropriate overall observation in the case where there is an essential part, namely, a part that independently performs the function of indicating the origin of goods by raising an impression of the trademark, or inducing ordinary consumers to memory or associate with the trademark. However, if there is no essential part among the trademarks, the similarity of trademarks should be determined in accordance with the principle of overall observation.

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 portion of 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, etc.).

2. We examine the above legal principles and records.

A. The applied trademark of this case is composed of “” and the pre-registered trademark is composed of “”. The designated goods of the above two trademarks are “the category”, etc.

B. It is difficult to view that the part “” in the prior registered trademark is recognizable to consumers as the abbreviation of “Memorandum Of Uncying”, etc. It is difficult to view that the remainder part “” or “the” part does not form any particular concept.

C. The part on “,” “,” “,” or “,” with prior registered trademark does not have or weak distinctiveness in relation to the designated goods, but it is difficult to deem that the part is widely and well-known or well-known or strong increase for consumers. Moreover, there seems to be no friendly distinction between the two parts.

D. At the time of the filing date of the instant application for the trademark, prior registered trademark appears to have been often indicated in Korean language in the Internet shopping mall, etc., and there is no evidence to deem that the portion of the prior registered trademark is above the remainder of “the” or “the existence of IMM,” etc. Considering such transactional circumstances, it is not natural to view that the portion of the prior registered trademark is larger than that of “the remainder” or “the existence of IMM,” and that the prior registered trademark alone is called and conceptualized.

E. Therefore, since only “” portion of the pre-registered trademark cannot be deemed as independently performing the function of indicating the source of goods, the trademark of this case cannot be deemed as similar when compared to the entire constituent part of the pre-registered trademark.

F. Nevertheless, the lower court deemed the part of the Prior Registered Trademark as the essential part and determined that the trademark of this case is similar to the Prior Registered Trademark when separately observing the said part. In so determining, the lower court erred by misapprehending the legal doctrine on determining the similarity of trademarks, etc., which affected the conclusion of the judgment. The allegation contained in the grounds of appeal on this point

3. Conclusion

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)