Criteria for determining similarity of trademarks

The similarity of trademarks under Article 9 (1) 7 of the Trademark Act shall be determined depending on whether two trademarks used for the same kind of goods are likely to cause mistake or confusion as to the origin of the goods in the transaction by observing in an objective, overall and different aspects in terms of their appearance, name, and concept. Even if some of their appearance, name, and concept are similar, if it is possible to avoid confusion of the origin clearly as a whole, it shall not be deemed a similar trademark.

Article 9(1)7 of the Trademark Act

Attorney Park Jong-ho et al., Counsel for the defendant-appellant

The Commissioner of the Korean Intellectual Property Office

Korean Intellectual Property Office Decision 256 dated September 30, 1987

The original adjudication shall be reversed, and the case shall be remanded to the Korean Intellectual Property Trial Office.

The grounds of appeal by the attorney of the applicant are examined.

The similarity of trademarks under Article 9 (1) 7 of the Trademark Act shall be determined depending on whether two trademarks used for the same kind of goods are likely to cause mistake or confusion as to the origin of the goods in the transaction by observing the two trademarks objectively, comprehensively and differently from their appearance, name, and concept in terms of their appearance, name, and concept. Even if some of their appearance, name, and concept are similar, if it can avoid confusion of the origin clearly as a whole, it shall not be deemed a similar trademark.

According to the facts established by the original decision, this original service mark consists solely of the fessi diagrams, and the cited service mark is a service mark marked “fessi transportation” in Korean, and compared with both, there is no similar feature in terms of name and concept, but it is difficult to view that there is a concern for general consumers or traders to cause confusion as to the source of service, and it is difficult to view that there is a significant change in appearance, and to observe the whole in an objective and ethic manner, it cannot be said that the original service mark and the cited service mark are similar.

Nevertheless, the original adjudication maintains the circumstances that refused an application for the original service mark deeming the original service mark and the cited service mark as a similar trademark, which led to the misunderstanding of legal principles as to the similarity of trademarks under Article 9 subparag. 7 of the Trademark Act, which thereby adversely affected the conclusion of the judgment. Therefore, the grounds for appeal are with merit.

Therefore, we reverse and remand the original adjudication. It is so decided as per Disposition by the assent of all participating Justices on the bench.

Justices Kim Sang-won (Presiding Justice) Lee Jong-won (Presiding Justice)