[1] Whether a mark identical or similar to a mark used for goods can be registered as a service mark closely related to the goods (negative)

[2] Criteria for determining the same or similar nature between a trademark and a service mark

[3] In a case where there are grounds for invalidation only in part of two or more designated service businesses for which a trial to invalidate the registration of a service mark is requested, whether the registration shall be invalidated by each designated service (affirmative)

[4] The case holding that there is no similarity between physical treatment business and health examination business, which are the designated service business of the registered service mark, and the designated service goods of the cited trademark

[1] With respect to services related to goods, if a mark which is identical or similar to a mark used in a service business closely related to the goods is used for the service business, consumers may cause confusion as to the origin of the service as if the service provider is the same as the manufacturer and seller of the goods. In particular, considering the actual circumstances of the transaction society, if the provision of the service and the manufacture and sale of the goods are carried out by the same business operator, and if there is a tendency to think of it, the concern of confusion is greater. Thus, the registration of the service mark shall be rejected in accordance with the purport of Article 9 (1) 7 of the former Trademark Act (amended by Act No. 4210 of Jan. 13, 1990). On the other hand, the registration of the service mark shall be invalidated even if it has been registered.

[2] The trademark itself is a mark to identify the source of a service and its function of service is different, so it shall not be determined extensively on the basis of the same or similar nature between the goods and the service business. Therefore, the same or similar nature between the goods and the service should not be determined in accordance with the common sense of the trade society in light of the following: (a) whether the goods and the service are closely related with the goods; (b) whether the manufacturing and sale of the goods and the provision of the service are made by the same business operator; and (c) whether the use of the goods and the service is consistent; and (d) whether the place of the goods and the service is provided; and (e) whether the scope of consumers coincide with that of the goods and the service; and (e) whether the use of similar

[3] In a case where a certain service mark is registered with two or more designated service businesses, if a claimant requests a trial to invalidate the entire registration of a service mark, even if the claimant claims a trial to invalidate the registration of the service mark, and it is evident that there is no ground for invalidation in another designated service business, it is reasonable to make a trial to invalidate the registration only for the designated service business that has the ground for invalidation and to cancel only the part. Therefore, the decision on whether to invalidate the registration by each designated service business should be made.

[4] The case holding that there is no similarity between physical treatment business and health examination business, which is the designated service business of the registered service mark, and the designated service goods of the cited trademark

[1] Article 9 (1) 7 (see current Article 7 (1) 7) of the former Trademark Act (amended by Act No. 4210 of Jan. 13, 1990) / [2] Article 9 (1) 7 (see current Article 7 (1) 7) of the former Trademark Act (amended by Act No. 4210 of Jan. 13, 1990) / [3] Article 71 (1) of the Trademark Act / [4] Article 9 (1) 7 (see current Article 7 (1) 7) of the former Trademark Act (amended by Act No. 4210 of Jan. 13, 1990)

[1] [2] Supreme Court Decision 93Hu1421, 1438 decided Feb. 8, 1994 (Gong1994Sang, 1017), Supreme Court Decision 97Hu2309 decided Jul. 24, 1998 (Gong1998Ha, 2239) / [3] Supreme Court en banc Decision 92Hu2274 decided May 24, 1994 (Gong1994Ha, 1831), Supreme Court Decision 95Hu217 decided Oct. 13, 1995 (Gong195Ha, 3792), Supreme Court Decision 98Hu1693 decided Dec. 23, 1998 (Gong199Ha, 242)

Plaintiff (Patent Attorney Kim Jae-sub, Counsel for the plaintiff-appellant)

Defendant 1 and one other (Law Firm Pacific, Attorneys After Dong-dong et al., Counsel for the defendant-appellant)

Patent Court Decision 98Heo1709 delivered on July 3, 1998

The part of the judgment below against the plaintiff on the designated service business (water treatment and health examination business) other than the medical care equipment sales brokerage business, inspection equipment sales brokerage business, and household medical device sales brokerage business among the designated service business of the registered service mark of this case is reversed, and this part of the case is remanded to the Patent Court. The remaining appeal by the plaintiff is dismissed, and the costs of appeal are assessed against the plaintiff.

The grounds of appeal are examined.

1. According to the reasoning of the judgment below, the court below held that since the designated service business of the registered service mark of this case (water treatment business, health examination business, medical health equipment sales brokerage business, examination equipment sales brokerage business, inspection equipment and equipment sales brokerage business), its target service is related to the use, distribution, etc. of medical devices, including designated goods of the cited trademark (in case of internal landscape, brain wave, physical temperature, heart, heart, and absorption), its handled item is closely related to the product of the same kind, and the industry dealing with medical machinery, equipment, and parts thereof is closely related to the product of the same kind. The industry dealing with medical appliances and parts has been entering various fields of related service business such as distribution business because the market is narrow and unbundled, and there is a tendency for ordinary consumers to think it is likely that the above designated service business might mislead and confuse the above cited service business with the designated service business of the trademark of this case. Thus, the similarity between the designated service mark of this case and the designated service business of this case is recognized.

2. With respect to services related to goods, if a mark which is identical or similar to a mark used in a service business closely related to the goods is used for the service business, consumers may cause confusion as to the origin of the service as if the service provider is the same as the manufacturer and seller of the goods. In particular, considering the actual circumstances of the transaction society, if the provision of the service and the manufacture and sale of the goods are made by the same business operator, and if there is a tendency to think of it, the concern of confusion is greater. Thus, the registration of the service mark shall be refused in accordance with the purport of Article 9 (1) 7 of the former Trademark Act (amended by Act No. 4210 of Jan. 13, 1990; hereinafter the same shall apply). The registration of the service mark shall be invalidated even if it has been registered (see, e.g., Supreme Court Decisions 93Hu1421, 1438, 1438, 297Hu397, Jul. 29, 1998).

However, trademark itself is a mark to identify the source of service and its function is different, so it shall not be widely recognized as the same or similar nature between the goods and the service industry. Therefore, the same or similar nature between the goods and the service should not be recognized too extensively. Therefore, whether it is reasonable for the same enterpriser to manufacture and sell the goods and the service, and whether the use of the goods and the service is consistent with that of the goods and the service, whether the scope of consumers is consistent, and if the similar mark is used, it is likely to cause confusion of the source, and it should be recognized in accordance with the common sense of the trading society (see each Supreme Court decision above).

In addition, where a service mark is registered with two or more services as a designated service business, if it is evident that there is no ground for invalidation only in part of the designated service business and there is no ground for invalidation in another designated service business even if a claimant claims an invalidation trial against the entire registration of the service mark, it is reasonable to make a judgment on invalidation only in the designated service business that has the ground for invalidation and to cancel only that part (see, e.g., Supreme Court Decisions 92Hu2274, May 24, 1994; 95Hu217, Oct. 13, 1995).

3. In light of the above legal principles, it is justified that the court below determined that the sales brokerage business of medical health equipment, inspection equipment and equipment sales brokerage business, and the sales brokerage business of medical appliances for household use among the designated service businesses of the registered service mark of this case is recognized as identical or similar to the designated goods of the cited trademark, and the judgment of the court below within this scope is not erroneous in the misapprehension of legal principles as argued in the Grounds for Appeal.

4. However, the above service business is related to the designated goods of the cited trademark in terms of using medical devices such as physical therapy and health examination business among the designated goods of the cited trademark among the designated service business of this case and the designated goods of the cited trademark in the above service business. However, according to the circumstances of the trading society, it is general for the manufacturer and seller of medical devices to enter the physical therapy business or health examination business through the expansion of the business, or whether ordinary consumers tend to think as such, it cannot be said that the physical therapy business or health examination business and the medical device treatment business (manufacture, sale, etc.) do not coincide with each other, and it cannot be deemed that the scope of consumers' own medical device corresponds with each other, and further, the registered service mark is used as the service mark "water treatment business", "health examination business", and it cannot be concluded that the registered service mark is similar to the designated goods of this case and the registered service mark of this case, and the judgment of the court below is not likely to mislead or confuse the registered service mark of this case with the designated goods of this case.

5. Therefore, the part of the judgment of the court below against the plaintiff regarding physical therapy and health examination business among the designated service business of the registered service mark of this case shall be reversed, and this part of the case shall be remanded to the Patent Court for a new trial. The plaintiff's appeal concerning the remaining designated service business (the medical and health equipment sales brokerage business, inspection equipment and equipment sales brokerage business, and household medical device sales brokerage business) shall be dismissed, and the costs of appeal shall be assessed against the plaintiff. It is so decided as per Disposition with the assent of all participating Justices

Justices Seo Sung-sung (Presiding Justice)