[1] Criteria for determining similarity of combined trademarks

[2] The case holding that since the trademark " " can be added to the trademark " "," there is a little difference from the appearance of the pre-registered trademark " "," but the name and concept are similar, if both trademarks are used for the same or similar goods, ordinary traders or consumers may mislead or confuse the origin of the goods

[3] Criteria for determining similarity of designated goods

[4] The case holding that since "AM radio receiver, MP3 displayer," etc. as designated goods of the applied trademark, and "portable telecommunications machinery and equipment" as designated goods of the pre-registered trademark correspond to the production sector, sales sector, and consumer scope, etc., it is likely that if both trademarks are used as designated goods of the two trademarks, they may be mistaken or confused as goods manufactured or sold by the same company

[1] Article 7 (1) 7 of the Trademark Act / [2] Article 7 (1) 7 of the Trademark Act / [3] Article 7 (1) 7 of the Trademark Act / [4] Article 7 (1) 7 of the Trademark Act

[1] Supreme Court Decision 94Hu1466 delivered on December 2, 1994 (Gong1995Sang, 495) Supreme Court Decision 94Hu1824 delivered on May 12, 1995 (Gong1995Sang, 2124) Supreme Court Decision 2003Hu1871 Delivered on October 15, 2004 (Gong2004Ha, 1879) / [3] Supreme Court Decision 2000Hu815 Delivered on October 27, 200 (Gong200Ha, 2466), Supreme Court Decision 200Hu1256 Decided May 14, 2004 (Gong204Sang, 104Sang, 1014).

Es. S. rap, S. (Patent Attorney Na-young, Counsel for the plaintiff-appellant)

The Commissioner of the Korean Intellectual Property Office

Patent Court Decision 2008Heo1050 Decided April 23, 2008

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

The grounds of appeal are examined.

1. In the case of so-called combined trademarks consisting of not less than two symbols, letters, diagrams, colors, etc., the similarity of trademarks should be determined by the appearance, name, and concept arising from the entire composition of the trademark in principle. However, unless each constituent element is combined to the extent that the appearance, name, or concept to function as an identification mark of one's goods is formed or each constituent element is inseparably combined, the similarity of trademarks may be determined by the appearance, name, and concept arising from the division or extraction of only a part constituting the essential part of the whole component, unless it is deemed natural in the transaction (see Supreme Court Decisions 92Hu254, Aug. 18, 1992; 2006Hu3502, Mar. 29, 2007, etc.).

In light of the above legal principles and the records, the designated goods are easily recognized as the abbreviations or indications related thereto of the “SURUDD SYSTM”, which are terms used by ordinary traders and consumers as “three-dimensional sound or music,” or the term used in the trademark of this case (application number No. 2006-41559) composed of “Audio system (hereinafter “Audio system”), car audio display, MP3 display,” and “P3 display,” and the trademark of this case (application number No. 2006-4159) consisting of “Audio” and “Audio” refers to three-dimensional sound or music, in relation to the designated goods. The part “” also directly indicates the use of the designated goods as the ordinary word having the purport of “Audio” and the part “Audios” and “Audios” can not be deemed as a distinctive feature of the designated goods, and thus, it constitutes a component of the entire trademark, and thus, can be deemed as a combination of the designated goods.

Therefore, with the trademark applied in this case with "the essential part," the designated goods as "ported telecommunication machinery and apparatus, etc." and in comparison with the registered trademark (registration number No. 478081) of another person based on earlier application consisting of "the designated goods" (registration number No. 478081), both trademarks are somewhat different from their appearance, but their names and concepts are similar, so if both trademarks are used together for the same or similar goods, ordinary traders or consumers may confuse and confuse the origin of the goods. Thus, the trademark applied in this case should be deemed similar.

2. Whether the designated goods are similar shall be determined on the basis of whether it is likely to be misunderstood as goods manufactured or sold by the same company if they are used in the same or a similar trademark on the compared goods. However, the determination shall be made in accordance with the general transaction norms by comprehensively taking into account the actual circumstances of the transaction, such as quality, shape, use and production, sales sector, and the scope of consumers, which are the characteristics of the goods themselves (see Supreme Court Decisions 98Hu850, Jul. 28, 2000; 2003Hu144, Jul. 22, 2004, etc.).

In light of the above legal principles and the records, among the designated goods of the prior registered trademark, “portable telecommunications equipment” and “AM/FM radio receiver, MP3 radars” among the designated goods of the prior registered trademark of this case belong to “electric and telecommunications equipment” or “telecommunications equipment” under the classification of goods under Article 10(1) of the Trademark Act and Article 6(1) of the Enforcement Rule of the Trademark Act, and fall under similar military codes. Although the quality and shape of the goods are different, today’s portable communications equipment and appliances tend to go beyond their own function as radio communication organization, and have a tendency to go beyond their function as a multimedia product such as AM/F radio receiver, MP3 radars, etc., and ultimately, are similar to those of the designated goods that are produced from the same manufacturer and sold in the same household products or shopping, etc., and thus, it should be seen as identical to the “M/M market” or “telecommunications equipment and appliances to be used in the same sector as the designated goods. Therefore, it should be seen as similar to the scope of the “M/M” of the same product or trademark.

3. If so, the trademark applied in this case is identical or similar to the prior registered trademark, and used on goods identical or similar to the designated goods.

Nevertheless, the court below determined that both trademarks are not similar because they are not similar to the designated goods of the pre-registered trademark because they are not similar to the pre-registered trademark, but to some characteristics of the goods themselves, and they are not similar to the designated goods of the pre-registered trademark. The court below erred by misapprehending the legal principles on the similarity of the combined trademark and the determination of similarity of goods, which affected the conclusion of the judgment. The ground of appeal pointing this out has merit

4. Therefore, without examining the remaining grounds of appeal by the Defendant, 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 Kim Nung-hwan (Presiding Justice)