[1] The case holding that since the applied trademark " " and the registered trademark " " are similar to one another, they cannot be registered under Article 7 (1) 7 of the Trademark Act

[2] The case holding that trademark registration cannot be obtained pursuant to Article 6 (1) 3 of the Trademark Act on the ground that the galphology of "" and the galpha "O" cannot be viewed as having a distinctive character to the extent that ordinary consumers or traders' special attention

[1] The case holding that since the term "the trademark " " " and the appearance of the prior registered trademark " are different from those of the prior registered trademark " ", but they are similar to the concept "the word " and the word "non-tension" that play an important role in a trade society, if two marks are used for the designated goods identical or similar, they may cause general consumers or traders to mislead or confuse the origin of the goods, they are deemed as similar marks and thus they cannot obtain trademark registration pursuant to Article 7 (1) 7 of the Trademark Act

[2] The case holding that the applied trademark " " cannot be registered in accordance with Article 6 (1) 3 of the Trademark Act on the ground that it cannot be said that the registered service mark as a whole has distinctiveness to the degree of ordinary consumers or traders' special attention, since it is recognized that the trademark " " is a unique letter and English alphala "O" in the shape of snow as " "," although it is recognized that the trademark " is gluorized in the shape of snow as " "," such degree of characteristics alone, cannot be viewed as an increase to the extent that ordinary consumers or traders have a meaning.

[1] Article 7 (1) 7 of the Trademark Act / [2] Article 6 (1) 3 of the Trademark Act

[1] Supreme Court Decision 2003Hu1871 decided Oct. 15, 2004 (Gong2004Ha, 1879) / [2] Supreme Court Decision 99Hu2549 decided Feb. 22, 200 (Gong2000Sang, 847) Supreme Court Decision 2002Hu710 decided Jun. 25, 2004

Frigly, LelC et al. (Law Firm L&C Patent Attorney Kim Young-young, Counsel for the defendant-appellant)

The Commissioner of the Korean Intellectual Property Office

August 12, 2010

1. All of the plaintiffs' claims are dismissed.

2. The costs of lawsuit are assessed against the plaintiffs.

The decision made by the Intellectual Property Tribunal on April 23, 2010 on the case No. 2009 Won3911 shall be revoked.

1. Basic facts

A. The applied trademark of this case

(1) Date/application number: March 31, 2008/40-2008-15613

2) Composition:

3) 지정상품 : 상품류 구분 제16류의 문방구(stationery) 등, 상품류 구분 제25류의 의류(clothing) 등, 상품류 구분 제28류의 인형 및 인형용 액세서리(dolls and accessories therefore) 등

4) Applicant: The plaintiff

(b) Preregistered trademark;

1) Registration number/application date/registration date/Renewal date: Trademark registration No. 43026//3026/5 March 5, 1997/ November 20/20, 209 January 20, 2009

2) Composition:

(iii) Designated goods: Mac lines of 28 category 18 for riding, spokes of 28 category of goods, spokes, plastic spokes, spokes, Maccokes, scokes, scokes, necks (sports goods), spokes for children, spokes, spokes, spokes, and spokes;

4) Person entitled to registration: Samsung Burland Corporation

C. Details of the instant trial decision

1) The Plaintiff filed an application for the trademark of this case, but the Korean Intellectual Property Office rendered a decision of refusal on April 1, 2009 on the ground that the trademark of this case falls under Articles 7(1)7 and 6(1)3 of the Trademark Act concerning the pre-registered trademark, etc. and thus cannot be registered.

2) On April 29, 2009, the Plaintiff filed a petition for a trial seeking the revocation of the foregoing decision of refusal with the Intellectual Property Tribunal, and the Intellectual Property Tribunal deliberated on it as 2009 Won3911, and on April 23, 2010, the trademark applied for trademark of this case falls under Article 7(1)7 of the Trademark Act because the registered trademark of this case is similar to the registered trademark, the mark, and the designated goods, and thus, the Plaintiff cannot obtain the said request for a trial on the grounds that the remainder of the grounds for refusal cannot be examined further.

[Ground of recognition] Evidence No. 1, Evidence No. 2-3, Evidence No. 3-1, No. 2, Evidence No. 4, the purport of the whole pleadings

2. Determination on the legitimacy of the instant trial decision

A. Summary of the plaintiff's assertion

① 이 사건 출원상표는 영문자 ‘UGLYDOLL’을 이중의 선으로 만화적 요소가 가미된 독특한 서체로 표현하고, 영어 알파벳 ‘O’를 ‘ ’와 같이 도안화하여 전체적으로 회화적인 표장으로 인식되도록 구성한 문자와 도형의 결합표장으로서, ‘어글리돌’로 호칭되고 ‘못생긴 인형’으로 관념될 것인 반면, 선등록상표는 시각적으로 현저한 도형 부분에 의해 전체적으로 ‘어글리 고릴라’로 호칭되고, ‘못생긴/심술궂은/사나운 고릴라’로 관념될 것이다. 따라서 이 사건 출원상표는 선등록상표와 표장이 유사하지 아니하여 상표법 제7조 제1항 제7호 에 해당하지 아니한다. ② 또한, 이 사건 출원상표는 그 지정상품과의 관계에서 일반 수요자가 상품출처를 표시하는 것으로 인식할 수 있는 충분한 자타 상품의 식별력을 가지고 있으므로, 그 지정상품인 ‘인형 등’의 형상을 보통으로 사용하는 방법으로 표시한 표장만으로 된 상표가 아니라고 할 것이어서 상표법 제6조 제1항 제3호 에도 해당하지 아니한다.

Therefore, although the trademark of this case should be registered as a trademark, the decision of this case, which concluded differently, is unlawful.

B. Whether the trademark of this case constitutes Article 7(1)7 of the Trademark Act

1) Preparation for marks

A) Criteria for determination

The similarity of trademarks shall be determined by whether there is a concern for mistake or confusion as to the origin of the goods by observing the appearance, name, and concept of two trademarks objectively, comprehensively, and separately, and on the basis of a direct perception that ordinary consumers or traders feel with respect to the trademark. The combination trademark consisting of each constituent part of letters, letters, or figures must be determined by the whole constituent part, not by the name, concept, but by the combination of each constituent part to the extent that it is not natural if separate observation of each constituent part is made so far as it is not indivisible to the extent that it is not natural in the trade. In addition, where it is possible to think of two or more names or concepts from one trademark, if it is recognized that one of them is identical or similar to another's trademark, the two trademarks are similar (see Supreme Court Decision 200Hu1871 delivered on October 15, 204).

B) Preparation of appearance

The applied trademark of this case is a text mark which designs “UGYOL” in English gate, and the prior registered trademark is a mark consisting of the shape of the English story and the word “eugly” in English text. Therefore, the appearance of the two marks is different in terms of existence of diagrams, the number of English characters, and the letter body.

C) Preparation for names and concepts;

The pending trademark “” in this case is a mark in which English gate “UGYDOL” is devised as a double line, and among which English alphagle “O” is written in the shape of visual shape as “O.” However, the same part of the pending trademark in this case can not be easily recognized as “O” in English. However, when considering the overall observation of the pending trademark in this case, it is difficult to view that the degree of the shape of the English alphagle “O” in English alpha, even if considering the overall observation of the pending trademark in this case, it is deemed that the overall observation of the pending trademark in this case is made as a double line in the location of “O” in English alpha, and is located in the same form as “O” in English alpha, and thus, it is difficult to view that the degree of the figure cannot be easily recognized by ordinary consumers as “O” in English.

그러므로 이 사건 출원상표는 영문자 ‘UGLYDOLL’로 인식되어 표장 전체에 의하여 ‘어글리돌’로 호칭될 수도 있지만, 영문자 ‘DOLL’ 부분은 지정상품인 ‘인형 및 인형용 액세서리(dolls and accessories therefore) 등’의 보통명칭(을 제1호증)이어서 식별력이 없거나 약하다고 할 것이므로 영문자 ‘UGLY’ 부분이 요부가 되어 ‘어글리’로 약칭될 수 있다고 할 것이다.

Meanwhile, the pre-registered trademark “” is a mark consisting of the shape and shape “ugly” and the part of the pre-registered trademark “ugly”. In light of the form of the composition thereof, the trademark can be deemed as a combination of the shape and text and the part of the pre-registered trademark “Egy” and can be deemed as a “egying” and “egying (egly, evidence B). However, the part of the pre-registered trademark can not be deemed as a combination of the part of the pre-registered trademark, although the part of the pre-registered trademark is written in a small language, it cannot be readily concluded that the part of the pre-registered trademark is not added to the part of the pre-registered trademark, and even if the two parts are not combined and observed separately, it cannot be said that the part of the pre-registered trademark can be seen as naturally distinguishable from the part of the pre-registered trademark.

As can be seen, where the trademark applied in this case is abbreviationd as “lingle,” the term “lingle”, the abbreviationd name of the prior registered trademark, is the same as “linite” and the concept is also the same.

D) Results of preparation

Therefore, although the trademark applied in this case is different from the prior registered trademark, the name and concept play an important role in the transaction society is similar, and if two marks are used on the designated goods identical or similar to the identical or similar trademarks, it is likely to cause general consumers or traders to mislead or confuse the origin of goods. Thus, two marks are similar marks.

2) Preparation for designated goods

이 사건 출원상표의 지정상품에는 ‘인형 및 인형용 액세서리(dolls and accessories therefore)’가 포함되어 있고, 선등록상표의 지정상품에는 ‘마스코트인형’이 포함되어 있어 두 표장의 각 지정상품도 서로 동일 또는 유사하다.

3) Judgment on the Plaintiff’s assertion

First of all, considering the fact that the complete trademark attached to the applied trademark of this case is raising a considerable global sales and was introduced to various media, the trademark of this case is a distinctive mark sufficiently functioning as a mark indicating the source of goods of a specific person. Thus, even if the trademark of this case is used in "inhuman form, etc." as the designated goods, the Plaintiff submitted evidence No. 5, No. 6-1 through 4, No. 7, and No. 10-1, No. 2, and No. 13, and No. 10-1, No. 10.

Next, the applicant asserts that the registration of the trademark of this case should not be refused in light of the fact that the trademark of this case was applied to the trademark of this case and registered in many countries, such as the United States, Switzerland, Japan, China, etc., but the existence of the eligibility for registration of the trademark should be determined individually according to each country in relation to the designated goods, and it does not go against the registration of other countries. Thus, the plaintiff's above assertion cannot be accepted

4) Sub-committee

Therefore, the applied trademark of this case is similar to the prior registered trademark, and its designated goods are identical or similar to the designated goods, and thus, it cannot be registered as trademark since it falls under Article 7 (1) 7 of the Trademark Act.

C. Whether the trademark of this case constitutes Article 6(1)3 of the Trademark Act

1) Criteria for determination

According to Article 6 (1) 3 of the Trademark Act, a trademark consisting solely of a mark indicating the quality, efficacy, use, shape, etc. of the designated goods in a common way shall be refused trademark registration. The purport of the provision is not only the case where a mark indicating the contents listed in Article 6 (1) 3 loses the function of distinguishing the goods, which is a technical mark indicating the characteristics of the goods, for the purpose of describing the characteristics of the goods, but also it is not reasonable for the public interest to exclusively use the goods exclusively for a specific person on the part of whom the necessary indication is made to anyone in the transaction (see, e.g., Supreme Court Decisions 9Hu2549, Feb. 22, 200; 200Hu710, Jun. 25, 2004).

2) Determination

As seen earlier, “UGLY” is a master with the purport that it is “unborn”, and as it is a master with the purport that “DOL” of English text is “human form,” the trademark applied in this case has the purport that it is “unborn human form.”

Therefore, in cases where the trademark applied in this case is used as the designated goods, the trademark applied in this case is directly indicated from the trademark applied in this case to a general consumer or trader, which is the designated goods. As such, the trademark applied in this case constitutes a trademark consisting solely of a mark indicating the shape of the designated goods in a common way.

As to this, the Plaintiff asserts to the effect that the trademark applied in this case does not constitute a trademark consisting solely of a mark indicating the shape of the designated goods in a common way, since the trademark applied in this case has a distinctive character considering the figure of “O” in the visual form as a whole, such as “O”.

However, as seen earlier, it is recognized that the trademark of this case has taken the shape of an alpha, English and alphab “O” in the shape of her eye as “,” as seen earlier. However, such degree of characteristics alone cannot be said to give an increase to the extent that the meaning of the text to ordinary consumers or traders is strong. Thus, the patent application service mark of this case can not be deemed to have a distinctive character to the extent that general consumers or traders’ special attention. Thus, the Plaintiff’s above assertion cannot be accepted on a different premise.

Therefore, the applied trademark of this case cannot be registered as it falls under Article 6 (1) 3 of the Trademark Act.

D. Sub-committee

As such, since the trademark applied in this case cannot be seen as one copy or trademark registration, the decision of this case, which is identical to this conclusion, is legitimate.

3. Conclusion

Therefore, the plaintiffs' claims seeking the revocation of the trial decision of this case are without merit, and it is decided as per Disposition by the assent of all.

Judges Kim Jong-hwan (Presiding Judge)