[1] Whether a trademark infringement may be deemed where a mark identical or similar to another person’s registered trademark is not recognized as the use of a trademark only by designing it properly (negative), and the standard for determining whether it is being used as a trademark

[2] In a case where foreign corporation Gap, which is a trademark right holder of the registered trademark " " ", using the shape of " " "," with the designated goods as precious metal booms, sought suspension of trademark infringement against Eul corporation selling pents using the shape of " "," the case holding that the registered trademark of Gap corporation and Eul corporation's product shape are not similar since it can avoid misconceptions and confusions about the source of goods as a whole, and the shape of Eul corporation's product is used only as design, and it cannot be deemed that Eul's product is used as a product identification mark

[1] The act of using a mark identical or similar to another person's registered trademark on goods identical or similar to the designated goods constitutes an infringement on another person's trademark right. However, even if it is used for a mark identical or similar to another person's registered trademark, if it is not for the purpose of indicating the source that it is the essential function of the trademark, but for the purpose of making it difficult to recognize the use of the trademark as the use of the trademark on a timely basis because it is used only as a design, it shall not be deemed an act infringing on the trademark right of the registered trademark. In order to determine whether it is used as a trademark, it shall be determined by considering the relation with the goods, the mode of use of the mark,

[2] In a case where foreign corporation Gap, a trademark right holder of the registered trademark "" with the designated goods as precious metal ging, etc. sought suspension of trademark infringement against Eul corporation which sells pents using the shape of "", the case holding that Gap corporation's registered trademark and Eul company's product shape can be determined as identical to Gap company's trademark since Gap corporation's trademark and Eul's product shape are figures which form strong gals and can be referred to as "Gang gal" and "Gang gal gal gal gals", although several shapes of shapes are registered with strong gal gals which form theme for goods identical or similar to the designated goods of the above registered trademark, and the shape of Gap company's product can not be determined as identical to Gap company's registered trademark, since the shape and gal gal gal gal gal gal gal gal gal gal gal gal gal gal gal gal, regardless of its appearance.

[1] Article 66 (1) of the Trademark Act / [2] Articles 65 and 66 (1) of the Trademark Act

[1] Supreme Court Decision 2004Do5034 Decided October 15, 2004 Supreme Court Decision 2010Do5994 Decided January 13, 201 (Gong2011Sang, 370)

Aura Fura (Law Firm LLC, Attorneys Park Young-ho et al., Counsel for the plaintiff-appellant)

Sarobki Korea Co., Ltd. (Attorneys Lee Im-soo et al., Counsel for the plaintiff-appellant)

Seoul High Court Decision 2010Na51989 decided January 19, 2011

The appeal is dismissed. The costs of appeal are assessed against the plaintiff.

The grounds of appeal are examined.

1. As to the misapprehension of legal principles as to determining similarity of trademarks

In light of the records, the Plaintiff’s registered trademark (registration number No. 54997) with the designated goods as precious metal ging, etc. and the shape “” with the Defendant’s product as indicated in the holding of the lower judgment are both shapesed, and their head parts are relatively large compared to their body body body, and the external shape of the Plaintiff’s product is omitted, and its external shape is simplified only with head, body body, gate, bridge, gate, and gate. There are similar characteristics in that the inner part of the Defendant’s product is spawned, but the shape of the Defendant’s product is a shape that gives three-dimensional dimensional reduction due to the characteristics of the product made by using c risk hing, and the shape of the Plaintiff’s product is also a shape that does not have the shape of the Plaintiff’s product, while the shape of the Defendant’s product is spawn, the shape of the Defendant’s product, the shape of the Plaintiff’s product, the shape of which differs from that of the Plaintiff’s product, while the shape of the Plaintiff’s strong g.

Then, considering the following names and concepts, the shape of the Plaintiff’s registered trademark and the Defendant’s product is a figure in which the shape of both the Plaintiff’s trademark and the Defendant’s product is strong, which is conceptualized as “Gangia” and can be called as “Gangia chart.” However, multiple shapes of shapes are registered as theme with respect to goods identical or similar to the designated product of the Plaintiff’s registered trademark. However, in the case of a figure trademark whose name and concept are similar solely on the grounds that the name and concept are similar, regardless of the similarity of their appearance, if the two trademarks are called as a whole, regardless of the similarity of name and concept, regardless of the similarity of their appearance, the scope of the similarity of trademarks is excessively expanded, and unreasonable results that unreasonably restrict a third party’s freedom to choose trademarks, even if both are referred to as “Gangia” and “Gangia chart” as such, it cannot be readily concluded that the shape and appearance of the Plaintiff’s product is similar as a whole, and thus, can not be concluded as similar to the Plaintiff’s trademark.

Therefore, the judgment of the court below to the same purport is just, and there is no error in the misapprehension of legal principles as to similarity of trademarks.

2. As to the misapprehension of legal principles as to the trademark use

The act of using a mark identical or similar to the registered trademark of another person on goods identical or similar to the designated goods constitutes an infringement on the trademark right of another person. However, even if it is used on goods identical or similar to the registered trademark of another person, if it cannot be perceived as the use of a trademark solely because it is not for the purpose of indicating the source that it is the essential function of the trademark, but for the purpose of using it, it cannot be seen as an infringement on the trademark right of the registered trademark. In order to determine whether it is used as a trademark, it shall be determined in full view of the relation with the goods, the mode of using the trademark, the widely and well-knownness of the registered trademark, the intent of the user, and the process of using it, etc. (see Supreme Court Decision 2004Do5034, Oct. 15, 2004).

In light of the records, the shape of pentant in the pentant, such as the Defendant’s product, is mainly an element that may stimulate consumers’ desire to purchase through visual and aesthetic effects, and it is difficult to view that the shape of pentant itself is used to indicate the source of the product. The Defendant’s product is one of the group of pentitor City Products sold by the Defendant, and the Defendant manufactures and sells c risk vexling materials which form diverse animals, including strong gals before the application of the Plaintiff’s trademark, and the Defendant’s company other than the Defendant manufactures and sells pentant, etc., which widely manufactures and sells pentants using strong galnes. However, the Plaintiff’s registered trademark appears to have been widely known to domestic consumers, but it appears that the Defendant’s registered trademark is considerably known to Defendant’s domestic consumers. Defendant’s products as well as Defendant’s products are indicated in the Defendant’s product’s packaging and guarantee slip, and Defendant’s major products are indicated in the Defendant’s Internet sales site.

In light of the above legal principles, the shape of the Defendant’s product is used only as a design, and cannot be deemed as used as a product identification mark, in full view of the characteristics of pentt used in the above facts, transaction circumstances surrounding the above product, transaction situation surrounding the Plaintiff’s trademark and the Defendant’s registered trademark, the degree of recognition of the Plaintiff’s registered trademark, the Defendant’s intent, and the process of manufacturing and selling the Defendant’s product

In the same purport, the court below is just in holding that the shape of the defendant's product cannot be seen as being used as trademark and thus cannot be seen as an infringement of the trademark right of the plaintiff's registered trademark, and there is no error in the misapprehension of legal principles as to

3. Conclusion

Therefore, the appeal is dismissed, and the costs of appeal are assessed against the losing party. It is so decided as per Disposition by the assent of all participating Justices.

Justices Lee In-bok (Presiding Justice)