[1] The method of determining the similarity of trademarks where there is an essential part among the combined trademarks consisting of two or more letters or diagrams, and whether the part consisting of the constituent parts of the trademark, which has no or weak distinctiveness, may be an essential part (negative)

[2] The method of determining whether there is a distinctive character that can function as an essential part of the combined trademark

[3] In a case where Gap filed for a registration invalidation trial against foreign corporations Eul, the holder of the registered service mark " "", claiming that the registered service mark is similar to his/her registered trademark " "" and the mark and the designated service business or the designated goods, and that Eul filed for a registration invalidation trial on the portion of "the amount of precious metal Nos. 5, non- precious metal No. 1, No. 1, 2005, put to place orders, caps, caps and caps retail business" in the designated service business of the registered service mark, the case holding that the judgment below erred by misapprehending the legal principles which judged otherwise, since the figure of the shape of the shape of the shape of the sides cannot be deemed as an essential part of the registered service mark "the registered service mark " ","

[1] In principle, the similarity of combined trademarks consisting of two or more letters or diagrams shall be determined on the basis of the overall appearance, name, and concept of the constituent parts. However, if there is an essential part in the trademark, that part alone alone carries out the function of indicating the origin of goods by causing ordinary consumers to express an impression as to the trademark, or to memory or associate with the trademark, it is necessary to prepare and determine the similarity of trademarks with essential parts in order to induce the conclusion of appropriate overall observation. Furthermore, regardless of other essential parts in the trademark, such part alone becomes the subject of comparison in determining similarity with other trademarks because of its independent distinctive character that is perceived as being expressed to ordinary consumers, regardless of other essential parts, and therefore, the part that has no or weak distinctiveness among the constituent parts of the trademark cannot be deemed as an essential part.

[2] In determining whether a part of a combined trademark has distinctiveness that can function as an essential part, the circumstance in which a trademark containing the relevant part is registered or applied for and publicly announced as to goods identical or similar to the designated goods may also be considered, and such determination shall be made by comprehensively taking into account the number of trademarks registered or notified publicly, the number of applicants or trademark right holders, the degree of inherent distinctiveness of the relevant part, the relationship with the designated goods, and the existence of circumstances in which it is deemed inappropriate to allow a specific person to monopoly the relevant part for public interest

[3] In a case where Gap filed for a registration invalidation trial against foreign corporations Eul, the holder of the registered service mark " "", claiming that the registered service mark is similar to its registered service mark " " "" and the mark and the designated service business or the designated goods" in the designated service business of the registered service mark, the case held that the court below erred by misapprehending the legal principles on the registration of the service mark, in view of the fact that, although the registered service mark and the registered service mark contain both the figures of "the form of a number of side-surging, which is seeing the left side," both of the registered service mark and the registered service trademark, including the figures similar to the registered service mark of this case, it is difficult to recognize the distinctiveness of the above part, or it is not proper to grant a specific person exclusive recognition of them for public interest, on the grounds that there are no separate distinctive character of the shape of side-surgic shape in the registered service mark from the registered service mark

[1] Article 34(1)7 of the Trademark Act / [2] Article 34(1)7 of the Trademark Act / [3] Article 34(1)7 of the Trademark Act

[1] Supreme Court Decision 2001Hu1808 Decided December 14, 2001 (Gong2006Ha, 1187) Supreme Court Decision 2004Hu912 Decided May 25, 2006 (Gong2006Ha, 1187) Supreme Court Decision 2015Hu1690 Decided February 9, 2017 / [2] Supreme Court Decision 95Hu1494 Decided March 22, 1996 (Gong195Sang, 1404), Supreme Court Decision 2008Hu5151 Decided April 23, 2009 (Gong2015Hu932 Decided March 9, 2017)

Victos Stove brand brand management (Victosia’s Stoves management, Inc.) (Attorneys Lee Dong-won et al., Counsel for the plaintiff-appellant)

Defendant (Law Firm Sejong, Attorneys Park Jong-soo et al., Counsel for the defendant-appellant)

Patent Court Decision 2017Heo1595 Decided October 13, 2017

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

The grounds of appeal are examined.

1. In principle, the similarity of combined trademarks consisting of two or more letters or diagrams shall be determined based on the overall appearance, name, and concept of their constituent parts. However, if there is an essential part, in order to induce an appropriate conclusion of the overall observation, it is necessary to compare and determine the similarity of trademarks with the essential part in order to induce an appropriate conclusion of the overall observation (see, e.g., Supreme Court Decisions 2015Hu1690, Feb. 9, 201). In addition, regardless of other constituent parts, the essential part of a trademark becomes the subject of comparison when determining similarity with another trademark because of its independent distinctive character that is perceived as being placed on ordinary consumers, regardless of other constituent parts, the part that has no or weak distinctiveness among the constituent parts of the trademark cannot be deemed as an essential part (see, e.g., Supreme Court Decisions 2001Hu1808, Dec. 14, 201; 2005Hu52064, May 29, 2005).

Meanwhile, when determining whether a part of a combined trademark has distinctiveness that can function as an essential part, the circumstance in which a trademark containing the relevant part is registered or applied for registration is publicly announced with respect to goods identical or similar to the designated goods may also be considered (see, e.g., Supreme Court Decisions 95Hu1494, Mar. 22, 1996; 2008Hu5151, Apr. 23, 2009). This should be determined by comprehensively taking into account the number of trademarks registered or notified publicly, the number of applicants or trademark right holders, the degree of inherent distinctiveness of the relevant part, the relationship with the designated goods, and the existence of circumstances in which it is deemed inappropriate to enable a specific person to monopoly the relevant goods for public interest (see, e.g., Supreme Court Decision 2015Hu932, Mar. 9, 2017).

2. We examine the above legal principles and records.

A person shall be appointed.

The marks of the instant registered service mark (registration number omitted) registered as “Skin’s cosmetics retail business, precious metal retail business, household wholesale business, clothing retail business, and mother and child retail business,” etc. consisting of the Plaintiff as to the right side, and the Defendant’s registered trademark as indicated in the judgment of the court below, with the designated goods “Skn’s clothes, Shirts, divings, KONs, and joint-time horses,” etc. as indicated in the judgment of the court below, all of the designated goods included the figures of “sn’ting side pattern, which is seeing the left side.” However, considering the circumstances where multiple service marks, including shapes similar to the figures of the instant registered service mark, which were registered as the filing date of the instant registered service mark, are different from those of the instant registered service mark holders, it is difficult to recognize the distinctiveness of the above figure portion or it is not proper to enable a specific person to monopoly it for the public interest. Therefore, the shape of the instant registered service mark cannot be seen as an independent distinctive figure of the instant registered service mark.

Nevertheless, the lower court deemed the essential part of the registered service mark of this case as the figure figure of the shape of the shape of the opening side, and determined as similar to the mark of the registered trademark. In so doing, the lower court erred by misapprehending the legal doctrine on the similarity of service marks, thereby failing to exhaust all necessary deliberations, which affected the conclusion of the judgment.

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 Kim So-young (Presiding Justice)