[1] Criteria for determining similarity of trademarks and the meaning of trademarks in determining similarity of trademarks

[2] The case holding that "a prior registered service mark" is not similar

[1] Whether a trademark is similar shall be determined on the basis of objective, overall and external observation of the appearance, name, concept, etc. of two trademarks used for the same kind of product, and on the basis of the direct perception that ordinary consumers or traders feel the trademark, whether it is likely to mislead or confuse the source of goods in trade. On the other hand, in determining the similarity of trademarks, the meaning of a trademark shall be that the criteria for ordinary consumers or traders can report the trademark directly and indirectly, and its purport shall not be considered.

[2] The case holding that "the prior registered service mark " is different from the appearance of the trademark", "the prior registered service mark " is not similar to the appearance of the trademark", and domestic consumers easily leave the applied service mark "Empres" in English language by the "after the report," which is part of the report, or it is difficult to view that the prior registered service mark "after the report," which is the prior meaning, directly reduces the "Empres", and thus, it is not similar to each other

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

[1] Supreme Court Decision 92Hu896 delivered on October 23, 1992 (Gong1992, 3298)

East P&S Co., Ltd. (Patent Attorney Seo-hee et al., Counsel for defendant-appellant)

The Commissioner of the Korean Intellectual Property Office

October 8, 2004

1. The decision made by the Intellectual Property Tribunal on June 11, 2004 on the case No. 2004 Won20 shall be revoked;

2. The costs of lawsuit shall be borne by the defendant.

The same shall apply to the order.

1. Basic facts

[Evidence: Evidence No. 1, 2, Evidence No. 1 to 3]

A. The pending service mark

(1) Application number: No. 2002-18257

(2) Date of application: September 9, 2002

(3) Marks:

(4) Designated service business: Article 6(2) [Attachment 2] of the Enforcement Rule of the Trademark Act 35 of the classification of service business by category 35 of the service business "advertisement agency business, online advertisement business on computer network, advertisement business by mail order, promotion agency business, cosmetics sales agency business, business of sales agency, business of sales agency of cosmetics, cosmetic sales brokerage business, purchase agency business, marketing service business"

(b) Preregistered trademark;

(a) Registration number: No. 467243;

(2) Date of application/registration: February 20, 1999/ March 27, 200

(3) Marks:

(d) Right holder: a fixed number of days;

(5) Designated goods: Article 6 (1) [Attachment 1] [Attachment 1] of the former Enforcement Rule of the Trademark Act (amended by the Ordinance of the Ministry of Commerce, Industry and Energy No. 146 of December 24, 2001) 3 of the classification of goods: “Yetour powder, medicinal rain, shampin, shampin, shampin, shampin, shrine, shampin, shampton, shampton, shamp, shresh, shreshing, and cresh cream”

C. Reasons for the decision of refusal and the trial decision of this case

On December 10, 2003, the Korean Intellectual Property Office rendered a decision of refusal by applying Article 7(1)7 of the Trademark Act to the designated service mark "(2)" on the ground that the registered trademark and concept are similar as a whole to those of pre-registered trademark in relation to "pre-registered sales agent, pre-registered sales intermediary, cosmetics sales agent, and cosmetics sales intermediary."

Accordingly, the plaintiff filed a trial seeking the revocation of the above decision of refusal, and the Korean Intellectual Property Trial and Appeal Board reviewed it with 2004 won20, and dismissed the plaintiff's request for a trial on June 11, 2004.

D. Summary of the grounds for the instant trial decision

Examining the similarity of the pending service mark and the preregistered trademark, the pending service mark of this case is often used to the extent that it is possible for general consumers in the Republic of Korea using English as the word "Empres" only with the word "Empres" as a part of the English language, excluding the non-distinctive part.com", and the word "Empres", a prior registered service mark of this case, is often used to understand the above meaning. Thus, the appearance and name of the pending service mark of this case and the prior registered service mark of this case, are the same and similar as a whole. Examining the similarity of the designated service mark of the pending service mark of this case and the prior registered service mark of this case, the designated goods of the prior registered service mark of this case are both products and products, the designated service business of this case, the sales brokerage business of native products, the sales brokerage business of this case, the sale brokerage business of cosmetics, etc. of this case, and it is not easy for consumers to understand the source of the cosmetic service of this case as the product manufacturer and seller of this case's.

2. Whether the trial decision of this case is legitimate

A. Grounds for revocation of the Plaintiff’s trial decision

(1) The word "Empres", which is the component hub of the pending service mark, does not directly use it, and the word "Empres" of the pre-registered trademark, is difficult for ordinary consumers to express their meaning without finding an English advance, and even if ordinary consumers are aware of its intention, it cannot be seen as only "Ihs and kings" and it cannot be seen as "Empres". Thus, both are not similar to each other. Since the appearance and name are completely different, even if the pending service mark and pre-registered trademark of this case are used together, there is no possibility of misconception or confusion about their source.

(2) As a part of the technology-intensive and very sensitive fashion industry due to its characteristics, the manufacturer is mainly composed of large enterprises and specialized companies with technological skills, and most cosmetics sales agents and brokerage business operators are clearly distinguishable from cosmetics manufacturers in light of the actual circumstances, among the designated service businesses of the instant pending service mark, the 'fence sales agency business, native sales brokerage business, cosmetics sales agency business, and cosmetics sales brokerage business, and various kinds of cosmetics, which are designated goods of the preregistered trademark, are not similar even if they are common to some extent.

(b) Markets:

(1) First, we examine whether each of the instant pending service marks and the prior registered trademark is identical or similar to each other.

The similarity of a trademark shall be determined by the objective, overall, and external observation of the appearance, name, and concept of two trademarks used for the same kind of product, and on the basis of the direct perception that ordinary consumers or traders feel the trademark, whether it is likely to mislead or confuse the origin of goods in trade. On the other hand, in determining the similarity of a trademark, the meaning of the trademark shall be determined based on ordinary consumers or traders, so that they can report the trademark directly and indirectly, and the purport of the trademark can only be known only after the examination, deliberation, or prior investigation is conducted (see Supreme Court Decision 92Hu896 delivered on October 23, 1992).

The pending service mark of this case is composed of "Hwalu.com" of the English text, and the registered trademark of this case is composed of "Empres" of the English text, and its appearance is different. The registered service mark of this case is simply called "Hwalu" of "Hwalu" or "Hwalu" of "Hwalu" by the entire service mark of this case, and its title is different from each other.

In addition, in terms of the concept, the pending service mark of this case can be divided into "Hwinu of the front part" and ".com" of the back part commonly used for the domain name four, and among them, it can be interpreted as "Hwinu's reading room and the denial of yellow dust." However, according to the English language "Empres" in the first or third of the evidence No. 3, the term "Empres" has the meaning of "pros" in the English English language, but it is difficult for the above English consumers to regard the term as being used or linked frequently by the general consumers of our country, and considering the English propagation level in our country, it is difficult to see that domestic consumers directly have the registered trademark, and it is difficult to find the meaning of the pre-registered service mark of this case without considering the concept of the pre-registered service mark of this case. Therefore, it cannot be seen as similar to the concept of the pre-registered service mark of this case.

Therefore, since the pending service mark of this case and the preregistered trademark of this case are different in their appearance, name, and concept, even if they are used for the same or similar designated service business, it is difficult to view that the general consumers in Korea easily leave the pending service mark of this case in English language by ‘Empres' or ‘Empress' by ‘Empres' by ‘after the report,' which is part of the report, or that the preregistered service mark of this case and the preregistered trademark of this case are not similar in the overall context.

(2) Ultimately, the pending service mark of this case is different from the pre-registered trademark. Thus, the pending service mark of this case does not fall under Article 7 (1) 7 of the Trademark Act without further review as to whether the designated service business of this case is identical or similar to the designated goods of the pre-registered trademark. Accordingly, the pending service mark of this case is unlawful. Accordingly, the decision of this case is unlawful.

3. Conclusion

Therefore, the plaintiff's claim of this case is reasonable, and it is so decided as per Disposition.

Judges Lee Jae-hwan (Presiding Judge)