206Heo2851 Decision of Refusal (Trademarks)

Kim South-Nam

Daejeon

Attorney Kim Jong-min, Justice Kim Byung-hee, Justice Lee Dong-hee, and Justice Kim Dong-dong

The Commissioner of the Korean Intellectual Property Office

Litigation Performers Kim Jong-sik

July 13, 2006

August 10, 2006

1. The decision made by the Intellectual Property Tribunal on February 27, 2006 on the case No. 2005 Won1962 shall be revoked.

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

The order is as set forth in the text.

1. The grounds for the trial decision against the plaintiff's decision to refuse the trademark;

[Evidence] Evidence No. 1, Eul No. 1-4, and Eul No. 3

A. The Plaintiff’s applied service mark and the content of the comparable service mark (1) Plaintiff’s applied service mark

(1) Composition: The filing date / the application number: October 25, 2002 / 2002 - 21608

(3) Designated services: Nursing service (excluding herbal-related nursing service), health care service (excluding herbal-related nursing service), hospital service (excluding oriental medicine-related hospital service), hospital service (excluding oriental medicine-related hospital service), pharmacy service (excluding oriental medicine-related hospital service), medical health equipment leasing service (excluding oriental medicine-related medical equipment leasing service), medical assistance service (excluding oriental medicine-related medical aid service), medicine information service (excluding oriental medicine-related medicine information provision service), clinic service (excluding oriental medicine-related medicine information service), and comparative service mark (excluding oriental medicine-related hospital service).

(1) Composition: (2) Date of application / Date of registration / Number of registration : / Number of persons holding service mark rights on September 10, 2002 / January 12, 2004

(4) Designated service business: Health care business, pharmacy business, medical service business, clinic business, and child hospital business (class 44 of the classification of goods).

B. The plaintiff applied for the registration of the above service mark on October 25, 2002, but the Korean Intellectual Property Office March 7, 2005.

Inasmuch as the name of the Plaintiff’s service mark and the main body of the comparable service mark are identical, the decision of refusal was made on the ground that the Plaintiff constitutes Article 7(1)7 of the Trademark Act. (2) Accordingly, on March 31, 2005, the Plaintiff appealed to the above decision of refusal and filed a petition for a trial of dissatisfaction with the Korean Intellectual Property Tribunal. On February 27, 2006, the Korean Intellectual Property Tribunal deliberated on this as 2005 Won1962, and decided on February 27, 2006, both the Plaintiff’s service mark and the comparable service mark are referred to as “Korea”. In this case, the two service marks are identical, and their designated services also include “health management and medical service business,” and thus, the decision of refusal by the Korean Intellectual Property Office constitutes Article 8 of the Trademark Act and thus, the decision of refusal by the Korean Intellectual Property Trial and Appeal Board dismissed the Plaintiff’s request for a trial on the ground that it

2. Summary of the plaintiff's ground for revocation

A. While the Plaintiff’s pending service mark is named as “us”, the comparative service mark is referred to as “Isia or glass,” the entire two service marks are not identical or similar, as the comparative service mark is referred as “Isia or glass.”

B. The Plaintiff’s applied service mark is for carrying on the business of internal medicine, which is its designated service business, while the comparable service mark is for carrying on child medicine, and the work of internal medicine and infant medicine are different from the service provider and the consumers, and are not identical or similar.

3. Whether the applied service mark and the comparable service mark are identical or similar;

A. Criteria for judgment

A service mark is used to identify another service business to prevent mistake and confusion as to the service provider. The function of the service mark is to prevent confusion with the entire service mark. As such, similarity of a service mark should be determined by observing the service mark as a whole and comparing it with its appearance, name, and concept. In addition, since the part having no or weak distinctiveness in the composition of a service mark cannot be deemed as an essential part only with the part having no or weak distinctiveness, it is reasonable to deem that general consumers or traders do not simply call or interpret it simply with other words (see Supreme Court Decision 2001Hu1808, Dec. 14, 2001). The same holds true even where the part is combined with other words (see Supreme Court Decision 2001Hu1808, Dec. 14, 2001).

B. Preparation for appearance (1) of the applied service mark and the comparable service mark

The pending service mark is a service mark consisting of WORI EYE CLINIC “this combined service mark. The comparable service mark is a service mark consisting of two different points in the bottom” and “UR II” and “C”.

Therefore, the appearance of the comparable service mark composed of the patent application service mark is significantly different due to the difference between the figure and the figure, the figure of the letter, and the composition of the web page address.

(2) Preparation for the name and concept

It is difficult to see that the figure and text parts of the applied service mark are indivisiblely combined to the extent that they are deemed natural in the transaction if they are separately observed, and it cannot be seen that “EYE CLINIC” as indicated in the upper end of the part of the English text is indivisiblely combined to the extent that it is natural that the separate observation is not natural. On the other hand, the comparative service mark appears to be the part “www” and the part “cc” divided into both sides and the two sides, and thus, it seems to be the important part in this part that is indicated relatively considerably in the center.

In preparation for the name and concept, first of all, the pending service mark is called “EYE CLINIC” indicated as a small character among the constituent parts, and it has no distinctiveness and is relatively weak as the ordinary name that is referred to as “Korea” and recognized as such concept. Meanwhile, “URii” as an essential part of the comparative service mark, “URii” is both diagramsd by English users, and thus it seems difficult for ordinary consumers to easily name. On the other hand, it is expected that URii “URii” is called as “URii in accordance with the English language,” “Korea,” “Korea,” or “Korea,” and “Korea,” which is a relatively weak character, if the comparative service mark is named as “Korea or Korea,” and thus, it is not widely known as an “child,” and thus, it is also said that there is no distinction between “I” and “I” as an ordinary word.

Therefore, the name and concept of the two service marks commonly include the part of “Korea” and may be deemed as similar. However, as they fall under ordinary names, their parts alone are without distinctiveness or weak.

(3) Principle of total observation

Therefore, since the name of the main part of the two service marks and the concept perceived from it are both without or without distinctiveness, it is reasonable to compare with the overall observation of the similarity of the two service marks. Considering the overall and comprehensive observation of the two service marks, the patent application service marks are expected to be 'Aluriium' or 'Korea', and the comparative service marks are expected to be 'C' or 'C' with us, and their appearance are remarkably different from us, so the two service marks are deemed not similar. (4) In particular, the elements to be considered in determining the similarity of the figure service marks or the combined service marks are in particular.

In light of the fact that home shopping or online electronic transactions are active through TV or computer in light of the empirical rule, as it is much more frequent to place orders for services rather than voice media, and that services, which are intangible service business, are provided only at a specific place of business equipped with medical facilities, and the use of such service mark is ordinarily carried out in a limited manner, such as displaying the signboard attached to the medical facilities and ordinarily outside of the medical facilities, in preparation for the similarity of the service mark, it is reasonable to consider the similarity of appearance as a very important factor in determining the similarity of appearance as well as the similarity of appearance.

Therefore, although the two service marks are likely to be the same as our "" even if the name of the important part is likely to be the same, their appearance is remarkably different, it is reasonable to see that the two service marks are not similar as a whole.

4. Conclusion

Ultimately, the Plaintiff’s applied service mark does not correspond to Article 8(1) of the Trademark Act because the earlier application/service mark and its mark are not similar. The instant trial decision, which maintained the original decision rejecting the registration of the applied service mark on the ground that it falls under the above provision, should be revoked illegally.

Therefore, since the plaintiff's claim seeking the revocation of the trial decision of this case is well-grounded, it is decided as per Disposition by accepting it.

Judges Cho Jae-ho

Judges Doing-type

Judges Seo-young