[1] In a trial to confirm the scope of a trademark right, the criteria for determining the similarity of the registered trademark and the mark subject to confirmation, and the matters to be considered in cases where the trademark is used

[2] Method of determining the similarity of trademarks where there is an essential part of the trademark, and method of determining whether there is no or weak distinctiveness that can function as an essential part of the combination trademark

[3] In a case where Party A, the user of the challenged mark “,” which is a product using the challenged trademark, filed a claim for a trial to confirm the scope of rights by asserting that the challenged mark does not fall under the scope of rights of the registered trademark, since the challenged mark “,” which is not identical or similar to the registered trademark, is not identical or similar to that of the registered trademark, the case holding that the judgment below, which determined otherwise, is erroneous in the misapprehension of legal principles, on the ground that the part of the challenged trademark “,” and the part of the challenged mark “,” which is a product using the challenged mark, are different from

[1] In a trial to confirm the scope of a trademark right, the similarity between a registered trademark and a challenged mark shall be determined based on whether there is a concern for ordinary consumers to mislead or confuse the origin of the goods in transactions of designated goods by observing the appearance, name, and concept objectively, as a whole, in an objective, overall, and separately, and on the basis of the direct perception that ordinary consumers feel about the trademark. In such judgment, in a case where the use of a mark is recognized as a fact of use of the trademark on the goods in question, the similarity of the registered trademark and the challenged mark should be comprehensively and comprehensively considered the transaction situation surrounding the goods in question, such as

[2] From among trademarks, it is necessary to compare and determine the similarity of trademarks with essential parts in order to induce conclusion of appropriate observation in cases where there is an essential part, namely, a part that independently performs the function of indicating the origin of a product by gathering an impression of the trademark on ordinary consumers or by inducing them to memory and associate with the trademark, and where there is an essential part, it is necessary to compare and determine the similarity of trademarks with essential parts in order to induce conclusion of appropriate observation. On the other hand, in determining whether there is no or weak distinctiveness that can function as an essential part of the combined trademark, the circumstances where a trademark containing the pertinent part is registered or has been published in many cases on the goods identical or similar to the designated goods may also be considered. Thus, the determination shall be made by comprehensively taking into account the number of trademarks registered or published, the number of applicants or trademark right holders, the degree of inherent distinctiveness

[3] In a case where Gap of the challenged mark " " "," which is a product using human niven, applied for a trial to confirm the scope of the right of the registered trademark " " "," claiming that the challenged mark " " " as the designated product is not identical or similar to the registered trademark and does not fall under the scope of the right of the registered trademark, the case holding that the judgment below erred by misapprehending the legal principles as well as the appearance of the challenged mark " and the part of the challenged mark are identical or similar to one another in fireworks, but it cannot be deemed that the above figure part is widely known or well-known or highly raised among consumers, and it is difficult to recognize distinctiveness or it is not appropriate to recognize distinctiveness as a specific person in the public interest, while the part of the registered trademark "," which is a product using human niven, has a relatively distinctive character compared to the figure part in the designated product, and consumers are referred to as "private niven," which is part of the registered trademark "," and thus, it is not easily possible to change the shape of the trademark in the shape of the product "nive".

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

[1] Supreme Court en banc Decision 201Hu3698 Decided February 25, 1992 (Gong1992, 1169), Supreme Court en banc Decision 201Hu3698 Decided March 20, 2014 (Gong2014Sang, 966) / [2] Supreme Court Decision 2015Hu1690 Decided February 9, 2017 (Gong2017Sang, 591), Supreme Court Decision 2015Hu932 Decided March 9, 2017 (Gong2017Sang, 662)

Plaintiff (Law Firm Hann Patent, Patent Attorney Jeong Jin-ro et al., Counsel for the plaintiff-appellant)

Defendant (Patent Attorney Han-ok et al., Counsel for the defendant-appellant)

Patent Court Decision 2018Heo1622 Decided May 18, 2018

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

The grounds of appeal are examined.

1. A. In a trial to confirm the scope of a trademark right, the similarity of a registered trademark and a challenged mark shall be determined based on whether ordinary consumers are likely to mislead or confuse the origin of the designated goods in the transaction of the designated goods by observing the appearance, name, and concept objectively, as a whole, in an objective, overall, and separately, and on the basis of the direct perception that ordinary consumers feel with respect to the trademark (see, e.g., Supreme Court Decisions 91Hu691, Feb. 25, 1992; 201Hu3698, Mar. 20, 2014). In such determination, if it is recognized that the mark was used for the goods in question, the extent of recognition of the mark and the relation with the goods in question, and the trade circumstances surrounding the goods in question, such as the name and perception of the consumers, should be considered comprehensively and comprehensively.

B. Of the trademarks, it is necessary to compare and determine the similarity of trademarks with the essential part in order to induce conclusion of appropriate observation in cases where there is an essential part, namely, a part that independently performs the function of indicating the origin of the goods by causing ordinary consumers to express an impression of the trademark, or to associate or associate with the trademark among the trademarks (see Supreme Court Decision 2015Hu1690, Feb. 9, 2017). Meanwhile, in determining whether a part of the combined trademark has no or weak distinctiveness that can function as an essential part, the circumstances where a trademark containing the relevant part is registered or is publicly announced with respect to the goods identical or similar to the designated goods may also be considered. Thus, the number of trademarks registered or publicly announced, the number of applicants or trademark right holders, the degree of inherent distinctiveness of the relevant part, the relationship with the designated goods, and the existence of circumstances that it is deemed inappropriate to place a specific person monopoly for public interest (see, e.g., Supreme Court Decision 2015Hu3293, Mar. 9, 2017).

2. We examine the above legal principles and records.

A. The instant registered trademark “,” as the trademark of this case, is a mark consisting of a flame-shaped figure and English characters consisting of two parts; the above English letters consisting of the gate “S” and a part of “bo”, and the designated goods are “human boo,” etc., and the designated goods are “human boo,” etc. In addition, “,” which is the challenged mark, is a mark consisting of a black-shaped figure and some designs of English letters, and the goods using them are “human boo,” respectively.

B. Of the two marks, the figure parts are identical or similar to one another in the flowers shape, but it cannot be deemed that the above figure part is widely known and well-known or strong increase for consumers. Rather, it is difficult to recognize the distinctive nature or it is inappropriate to grant a specific person exclusive license on the grounds that a number of trademarks, including the figure in the similar shape as above, have been registered prior to the instant trial decision, such as the designated goods or goods using the cryp, and the quality and efficacy of the designated goods or goods using the cryp.

C. On the other hand, the part of the registered trademark of this case, "," which is a little distinctive character compared to the figure portion in relation to the designated goods, is recognized, and consumers have referred the registered trademark of this case to "private letter," which is a part of the English language, so it is necessary to say that it is an essential part.

D. Examining the above facts in light of the legal principles as seen earlier, the part concerning “” of the instant registered trademark and the part concerning “” of the challenged mark are not similar since not only their appearance but also their names are different from “grative” and “consumption.”

E. Nevertheless, the lower court determined that both marks are similar on the grounds that the letters and diagrams of both marks, and the specific shapes and shapes of the goods used as indicated below, and the specific shapes of their packaging are similar or common.

A person shall be appointed.

In so determining, the lower court erred by misapprehending the legal doctrine on determining the similarity of trademarks, thereby adversely affecting the conclusion of the judgment, notwithstanding the difference in the appearance and name of both marks taking into account the aforementioned transaction circumstances, by considering the special and limited aspects of the goods, such as the specific shape and shape of the goods, and the specific form of their packaging, which can be easily changed in the goods. The allegation contained in the grounds of appeal on this point is with merit.

3. Conclusion

Therefore, the judgment of the court below is reversed, and the case is remanded to the court below for a new trial and determination. It is so decided as per Disposition by the assent of all participating Justices on the bench.

Justices Kim Seon-soo (Presiding Justice)