[1] Criteria for determining similarity of trademarks

[2] The case holding that, among prior-registered trademarks, "C" cannot be an essential part because of lack of distinctiveness, and the prior-registered trademark and the applied trademark "NBLE" are not similar

[1] In determining similarity of trademarks, the similarity of trademarks should be determined by comprehensively and separately observing the appearance, name, and concept of trademarks in order to cause misconceptions or confusions as to the origin of goods. Thus, even if parts of trademarks are identical in name or appearance, if they are limited to a part of the trademark composition, if they are limited to a part of the trademark composition, they cannot be readily concluded that both trademarks are similar.

[2] The case holding that since the term "CITY" or "LINE" in the prior-registered trademark "CITY" is merely the word widely used while indicating its meaning if it is a middle school student, it is difficult for ordinary consumers or traders to separately observe the above trademark, and it is also difficult to see that the trademark contains "CITY" as well as "CITY" with respect to the designated goods of the category 45 of the product to which the prior-registered trademark belongs, the term "CITY UNNE", "CIT YOY", "CITOYY", "CYITITIT", "CYITITIT", "CYITITITS", "CYITSSESS", "CYYITS" as a whole and thus, it is not sufficient for consumers to observe and observe the above trademark in light of the concept of "gregnentness", "gregnent distinguishability" or "CYYYY", "GYYY" as a whole non-registered trademark.

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

[1] [2] Supreme Court Decision 95Hu1494 delivered on March 22, 1996 (Gong1996Sang, 1404), Supreme Court Decision 95Hu2084 delivered on July 30, 1996 (Gong1996Ha, 2673), Supreme Court Decision 96Hu511 delivered on October 25, 1996 (Gong196Ha, 344)

Byunnam (Patent Attorney Park Yong-sik et al., Counsel for the defendant-appellant)

The Commissioner of the Korean Intellectual Property Office

Korean Intellectual Property Trial Office Decision 95Na788 dated May 31, 1996

The decision of the court below is reversed, and the case is remanded to the Korean Intellectual Property Office.

The grounds of appeal are examined.

According to the reasoning of the decision of the court below, the court below held that the trademark of this case (hereinafter referred to as the "original trademark") is similar in comparison with the cited trademark "CITY NBLE" and the cited trademark (1) registered prior to and registered (registration No. 152826 of January 29, 1988 of the Korean Intellectual Property Office), and the two trademarks are different from each other, but they cannot be deemed as a trademark which is a combination of each of the two trademarks with a series of different parts, and the original trademark "CITY" and "NINBLE" are separated from the two parts of the "CITY" and the "CITY" of the preceding part, and therefore, if both trademarks are called "CITY" and "CITY", they are similar trademarks, and thus, if both trademarks are registered as "CITY", they are likely to cause confusion and confusion between consumers and consumers of the same kind of goods, they are justified.

In determining the similarity of trademarks, the similarity of trademarks should be determined by examining the appearance, name, and concept of trademarks in a whole or separately, and whether there is a risk of misconception or confusion as to the origin of goods. Thus, even if a part constituting a trademark has the same title or appearance as that of the trademark, if the same part is limited to a part of the trademark composition, if it is limited to a part of the trademark composition, the entire observation of both trademarks shall not be readily concluded as similar.

According to the records, 'CITY' or 'LINE' among cited trademarks (1) is not enough to separately observe the cited trademarks (1) as it is too widely used for four sections as a whole and it is difficult for ordinary consumers or traders to separately observe the cited trademarks (1) as it is in the judgment of the court below, and it is also difficult to see that the cited trademarks (1) are classified as trademarks including 'CITY' as well as 'CITY' 45 kinds of designated goods belonging to the cited trademarks (1), 'CITYNNE' (Registration No. 10787), 'CITY205' (Registration No. 16405), 'CY280' (Registration No. 167, 'No. 1857, 'No. 1857, 'No. 297, 'No. 297', 'No. 207, 'No. 16405').

Thus, the original trademark and the cited trademark (1) are not similar to each other when observing the trademark in a general and separately from the perspective of ordinary consumers. Accordingly, even if both trademarks are used for the designated goods identical or similar to the same or similar designated goods, there is no concern for ordinary consumers to mislead or confuse the origin of goods. However, the court below held that in such a case on the premise that both trademarks are abbreviationd with "CITY", both trademarks are likely to mislead or confuse the origin of goods to ordinary consumers because they are identical in their names and concepts. Accordingly, the court below erred by misapprehending the legal principles on determining the similarity of trademarks, which affected the result of the trial decision, and the ground of appeal pointing this out is with merit.

Therefore, the decision of the court below is reversed and the case is remanded to the Korean Intellectual Property Tribunal for a new trial and determination. It is so decided as per Disposition by the assent of all Justices who reviewed the appeal.

Justices Park Jong-ho (Presiding Justice)