[1] Whether the part which has no or weak distinctiveness among the composition of a trademark can be referred or conceptualized as an essential part only (negative with qualification)

[2] The method of determining whether a trademark represents the raw material of the product

[3] The case holding that among the designated goods, the part of "FERRO" which constitutes "FERO" can not be deemed as an essential part because it is related to "the pharmaceutical products for treatment of lack of iron content, blood agents, non-saccines, pregnant pharmaceutical products, and veterinary pharmaceutical products" among the pre-registered trademark composed of "FERO SOL DUDAL" and therefore it cannot be deemed as an essential part, and therefore, it cannot be deemed as separated from this part

[1] Among the component parts of a trademark, technical marks such as the ordinary name of goods, official name, efficacy, use, indication of raw materials, etc., and conspicuous geographical name, and the part that has no or weak distinctiveness cannot be deemed as an essential part alone. Thus, it is reasonable to deem that ordinary consumers or traders do not simply refer to or interpret the subject trademark simply with the absence or weak distinctiveness. This is the same as long as the whole is not combined with other letters, etc. even if the subject trademark is combined with the part.

[2] Whether a trademark indicates the raw materials of the goods should be objectively determined in light of the concept of the trademark, the relationship with the designated goods, the actual trade society, etc. Therefore, in order to determine that the trademark is to indicate the raw materials of the goods, whether the goods to which the trademark pertains are actually being used as raw materials of the designated goods or not, or if a general consumer or a trader recognizes that it is used as raw materials of the goods.

[3] The case holding that the part of "FERRO" among the designated goods is related to "the pharmaceutical products for treatment of lack of iron content, blood solvents, saccines, pregnant pharmaceutical products, and veterinary pharmaceutical products" among the pre-registered trademark composed of "FERO SON DUDAL", and thus it cannot be deemed as an essential part and thus, it cannot be deemed as separated from this part.

[1] Article 6 (1) of the Trademark Act / [2] Article 6 (1) 3 of the Trademark Act / [3] Article 6 (1) 3 of the Trademark Act

[1] Supreme Court Decision 2001Hu1808 Decided December 14, 2001 (Gong2002Sang, 321) Supreme Court Decision 2003Hu236 Decided January 28, 2005 / [2] Supreme Court Decision 89Hu667 Decided December 8, 1989 (Gong190, 263) Supreme Court Decision 2002Hu192 Decided May 13, 2003 (Gong2003Sang, 1367)

Amar (Law Firm Central, Attorneys Lee Ba-soo et al., Counsel for the defendant-appellant)

Master Pharmaceutical Co., Ltd. (Patent Attorney Choi Jae-chul, Counsel for the plaintiff-appellant)

Patent Court Decision 2004Heo4181 Decided November 5, 2004

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

The grounds of appeal are examined.

1. Among the component parts of a trademark, technical marks such as the ordinary name of goods, official name, efficacy, use, and labelling of raw materials, etc., and parts which have no or weak distinctiveness such as a conspicuous geographical name and company name cannot be deemed to be an essential part only. Thus, it is reasonable to view that ordinary consumers or traders do not simply refer to the part having no or weak distinctiveness of the trademark, and the same does not apply to the case where the part is combined with other letters, etc., unless the whole trademark is combined with an indivisible one (see Supreme Court Decision 2003Hu236, Jan. 28, 2005). Whether a trademark indicates raw materials of goods should be objectively determined in light of the concept of the trademark, the relation with the designated goods, the actual situation of the transaction society, etc. Thus, in order to indicate the raw materials of goods, if the goods whose meaning the trademark is used as raw materials of the designated goods, or if ordinary consumers or traders recognize that the goods are used as raw materials of the designated goods.

2. According to the records, “FERRO” is defined in English as a type of Fe, a chemical flag indicating metal, and is defined as “vegetable or steel content” in advance. The steel powder is a vegetable plant essential for human living body, and if this falls short of it, as a vegetable product containing steel content is manufactured and sold together with non-pactic agents, etc. In order to prevent or treat the shortage, a number of combined trademarks, including “FERO” or “FERO” or its Korean translitation, “FERO”, and “L” consisting of two preregistered trademarks (registration No. 185156) composed of “FERO SDANNNAL”, and thus, it is difficult to deem that the portion of the preregistered goods falls under the category of goods belonging to the designated goods, such as the designated goods classified as the goods, and thus, it is difficult to deem that the portion of the preregistered goods falls under the category of pharmaceutical drugs or pharmaceutical drugs, and thus, the portion of the preregistered goods is registered as raw goods.

Nevertheless, the court below concluded that the pre-registered trademark 2 may be separated and abbreviated by the "FERRO" portion, and that the name of the part and the "fela", the title of the trademark of this case, are very similar to each other, and judged that both trademarks are similar. The judgment of the court below is erroneous in the misapprehension of legal principles as to the determination of similarity between the pre-registered trademark and the combined trademark including the above, or failing to exhaust all necessary deliberations, which affected the conclusion of the judgment. The ground of appeal pointing this out is with merit.

3. Therefore, the judgment of the court below is reversed, and the case is remanded to the court below for a new trial and determination. It is so decided as per Disposition by the assent of all participating Justices on the bench.

Justices Shin Shin-chul (Presiding Justice)