[1] Criteria for determining similarity of combined service marks

[2] The method of determining whether a part with no or weak distinctiveness can only be an essential part in the composition of a service mark, and whether the constituent part of the service mark constitutes “a essential part with distinctiveness”

[3] Whether the registered service mark " " 25 cc" with a registered service business "real estate leasing business" can be briefly named and conceptualized (affirmative)

[1] The service mark that cannot be deemed as being indivisible to such an extent that it is natural in the transaction to separately observe each constituent part is not always called and conceptualized by the entire constituent part, but can be called and conceptualized simply by the term “the constituent part capable of performing the function of distinguishing independent services”. In a case where two or more titles or concepts occur from a single service mark, if one of them is identical or similar to another’s service mark, both services marks are similar.

[2] Since a service mark cannot be deemed as an essential part solely on the part that has no or weak distinctiveness, it is reasonable to view that ordinary consumers or traders do not simply refer to or conceptualize the part that has no or weak distinctiveness. The same applies to cases where the part is combined with other letters, etc., and whether the part has no or weak distinctiveness should be determined objectively by taking into account the concept that the part has, the relation with the designated service business, the circumstances of the transaction society, etc.

[3] The registered service mark " " "," which uses a designated service business as "real estate leasing business," shall not be deemed to be a combination that is indivisible to the extent that it is deemed natural in the transaction if observed separately from the part "LG" and the part "25 ........." among them, the part "25 ....." cannot be deemed as having no or weak distinctiveness with respect to "real estate leasing business, etc., and can sufficiently perform the function of distinguishing one's own service independently. Thus, the registered trademark can be referred and conceptualized simply

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

[1] Supreme Court Decision 9Hu1485 delivered on June 26, 2001 (Gong2001Ha, 1766), Supreme Court Decision 2003Hu1871 Delivered on October 15, 2004 (Gong2004Ha, 1879) / [2] Supreme Court Decision 2004Hu912 Delivered on May 25, 2006 (Gong2006Ha, 1187), Supreme Court Decision 2003Hu137 Delivered on September 14, 2006 (Gong2006Ha, 1760)

Plaintiff (Patent Attorney Kim Sung-soo, Counsel for the plaintiff-appellant)

The Commissioner of the Korean Intellectual Property Office

Patent Court Decision 2005Heo346 Decided March 31, 2005

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

We examine the grounds of appeal.

1. A service mark that cannot be deemed as being indivisible to the extent that it is natural in the transaction. It does not always mean or conceptualized by the entire constituent part of the service mark, but can be briefly named or conceptualized only with “the constituent part capable of performing the function of distinguishing independent services.” In a case where two or more titles or concepts exist from a single service mark, if one of them is identical or similar to another’s service mark, the two service marks may be similar (see Supreme Court Decision 2003Hu1871, Oct. 15, 2004, etc.). Since the part having no or weak distinctiveness cannot be deemed as an essential part solely based on that part, it is reasonable to view that ordinary consumers or traders do not simply refer or conceptualize with other parts without distinctiveness, or with weak distinctiveness, even if such parts are combined with other parts, the same shall apply to those parts which have no or weak distinctiveness after being sentenced to 201 and 204Da26571, Feb. 16, 2005.

2. In light of the above legal principles and records, the following can be determined.

The pre-registered service mark (registration number omitted) consisting of “real estate leasing business, etc.” and “B” consisting of a designated service business as “licensed real estate agent business” and the designated service business compared with the pending service mark in this case consisting of “B” shall not be deemed as a combination of “LG” and “25 ...” Among them, the term “25 ......” means only the term and content of “LG” and “B5 .........” or the term and content of “B5 .............,” and the term and content of “B5 ............, it does not have or weak distinctiveness with respect to “real estate leasing business, etc.” and may sufficiently function to distinguish independent services

While the part “25 Si” is a trade name of a famous large enterprise in the Republic of Korea and combines with the part “LG” which has strong distinctiveness, considering the meaning and content of “25 City” portion, and the combination between “LG” portion and “25 City,” the above circumstance alone does not immediately lead to the fact that the part “25 City” portion was pressured on “LG” portion, and thus, is weak or unreasonable or that the user’s attention is disregarded (see Supreme Court Decision 93Hu237, 244 (Joint) delivered on September 28, 1993). Although the franchise store of the holder of prior registered service mark operates a signboard “LG 25” with “LG 25,” and thus, it cannot be deemed that the trademark “500,000” and “250,000,0000,0000,0000,000,0000,000,000,000.

Thus, prior registered service marks can be called and conceptualized simply on the part "25 ......" The similarity between prior registered service marks and the applied service marks of this case should be determined on the basis of this determination. Nevertheless, the court below determined that prior registered service marks and the applied service marks of this case are not similar solely on the ground that the prior registered service marks do not have distinctiveness because they contain the meaning "25 ....." In the composition of prior registered service marks "25 ....." The court below determined that prior registered service marks and the applied service marks of this case are not similar solely on the part "25 ......." The court below erred by misapprehending the legal principles on determining the similarity of service marks, and failing to exhaust all necessary deliberation, which affected the conclusion of the judgment. Thus, the ground of appeal pointing this out is with merit.

3. 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 Yang Sung-tae (Presiding Justice)