In a case where Gap corporation, which registers "," "," and "" as a trademark or service mark and engages in precious metal transactions and business related thereto, sought injunction against infringement of trademark rights, etc. against Eul corporation engaged in precious metal transactions and business related thereto by using the marks " "," "," "," and " " "," the case holding that Gap corporation trademark and Eul corporation mark are not similar.

In a case where Gap corporation, which registers "," "," and "" as a trademark or service mark and engages in precious metal trade and related business, sought injunction against infringement of trademark rights, etc. against Eul corporation engaged in precious metal trade and business related thereto by using the marks " " "," " "," "," and " " " "," the case holding that the portion of Gap corporation's trademark "Korea Gold Exchange" in its trademark cannot be deemed to have an independent distinctive character that is recognizable to ordinary consumers or traders by itself, and that it is not appropriate to grant a specific person exclusive right in public interest, and thus, it cannot be deemed to be "a part with distinctive character," and the trademark or service mark of Gap corporation is not deemed to be "a part with distinctive character," although some kinds of letters are included in the same Korean characters, since the degree of originality or creativity remains offset and offset, it is apparent that there is a difference between Eul company's trademark marks and Eul, and if marks meeting the above degree, it would not cause confusion with the source to consumers, it is not similar to Gap company marks.

Articles 2(3), 65(1) (see current Article 107(1)), 65(2) (see current Article 107(2)), and 66-2 (see current Article 109) of the former Trademark Act (Amended by Act No. 1403, Feb. 29, 2016);

Korea Gold Exchange (Attorney Kim Jin-jin, Counsel for defendant-appellee)

Lee-han Co., Ltd. (Law Firm Lee & Lee, Attorney Han-soo, Counsel for defendant-appellant)

Seoul Central District Court Decision 2016Gahap2654 Decided August 26, 2016

March 16, 2017

1. The plaintiff's appeal is dismissed.

2. The costs of appeal shall be borne by the Plaintiff.

The judgment of the first instance shall be revoked.

1. The defendant,

(a) No use, sale, transfer, distribution, display, import, or export of each product listed in Attachment 1, which is listed in Attachment 1, is allowed to use, display, attach, or use, display, display, import, or export any product listed in Attachment 1;

(b) The marks listed in paragraph (2) of the attached Form shall not be used, displayed or attached on the packaging paper, packing paper, fixed price list, transaction documents, name cards, signboards, carvings and other advertising and publicity materials of each product listed in paragraph (1) of the attached Table, or displayed or distributed them;

2. The defendant shall delete the marks listed in attached Form 2 posted on the website listed in attached Form 3 operated by the defendant.

3. The defendant shall pay to the plaintiff 50 million won with 15% interest per annum from the day following the delivery of a copy of the complaint of this case to the day of complete payment.

1. Basic facts

A. The plaintiff's registered trademark and service mark

The Plaintiff is a person who engages in precious metal trade and related business, and is a right holder of the following trademarks or service marks (hereinafter referred to as “Plaintiffs’ trademarks”).

1) A) Trademark/service mark registration number: Number 1 omitted;

B) Date of application / Date of registration: February 20, 2012

C) Composition:

(d)designated goods or designated services;

- Gold stuffs, gold products, gold bullions, gold bullions, etc., of category 14 of the product classification;

- Sales agent business of gold bullions of Class 35, sales brokerage business of gold bullion, etc.

2) A) Trademark registration number: Number 2 omitted

B) Date of application/registration: December 28, 2010/ July 9, 2012

C) Composition:

D) Designated goods

- Gold bullions, gold stuffs, gold bullions, gold bullions, gold bullions, etc., of category 14 of the product classification;

3) A) Service mark registration number: Number 3 omitted.

B) Date of application / Date of registration: November 16, 2012 / December 16, 2013

C) Composition:

(d) designated services;

-the precious metal wholesale business, precious metal retail business, and precious metal sales agency franchise business-related information business, etc., classified into service business categories 35;

B. Defendant mark

The defendant is engaged in the business of trading precious metals and related business using the following marks (hereinafter referred to as the "Defendant mark"):

(i)

(ii)

(iii)

[Reasons for Recognition] Facts without dispute, Gap evidence Nos. 1, 3, 21, 22, Eul evidence Nos. 1 through 3, 10 (including each number), the purport of the whole pleadings

2. The plaintiff's assertion

A. Claims based on the Trademark Act

Since the Defendant uses the Defendant mark similar to the Plaintiff’s trademark for goods or services identical or similar to the Plaintiff’s designated goods or designated services, it is sought for the prohibition of infringement and the destruction of infringing products, etc. and damages pursuant to Articles 65(1) and (2) and 66-2 of the former Trademark Act (amended by Act No. 14033, Feb. 29, 2016; hereinafter “former Trademark Act”).

B. Claim based on the Unfair Competition Prevention and Trade Secret Protection Act

For the long time, the Plaintiff used the “Korea Gold Exchange” as a trademark or business mark for the Plaintiff’s goods or business, and used the Defendant’s goods and business-related marks, which are similar thereto. This constitutes an unfair competition act under Article 2 subparag. 1(a) or (b) of the Unfair Competition Prevention and Trade Secret Protection Act (hereinafter “Unfair Competition Prevention and Trade Secret Protection Act”), and thus, sought the prohibition of infringement and the destruction of created goods, etc. and damages pursuant to Articles 4 and 5 of the same Act.

3. Determination

A. Judgment on the assertion based on the Trademark Act

The Plaintiff’s trademarks are combined with the parts of the figure or the part of the English language (, , ) and the part of the Korean language “Korea Gold Exchange.” The first of all is to examine whether the part of the Plaintiff’s trademark’s “Korea Gold Exchange” is an essential part, and then to examine the similarity of each mark.

1) Whether the part “Korea Gold Exchange” constitutes an essential part of the Plaintiff’s trademark

A) Relevant legal principles

Even if there are similar parts between the two trademarks, where the part that forms the essential part is different from each other and can clearly avoid confusion as to the source, it cannot be deemed a similar trademark. In addition, the part that has no or weak distinctiveness among the constituent parts of a trademark cannot be deemed an essential part, and the same holds true even in cases where such part is combined with other letters, etc. (see Supreme Court Decision 2010Hu3073, May 24, 2012, etc.). Furthermore, whether the constituent parts of a trademark have no or weak distinctiveness shall be determined objectively by taking into account the concept that the constituent part possesses, the relationship with the designated goods, and the circumstances of the transaction society, etc. If it is difficult to recognize distinctiveness of the other goods under the generally accepted social norms or it is not appropriate to grant a specific person exclusive license, it shall not be deemed to fall under “a distinctive part” (see, e.g., Supreme Court Decision 2012Hu3589, Mar. 14, 2013). Such legal doctrine likewise applies to service marks and trademarks as prescribed in Article 2 subparag.

B) Specific review

(1) (A) First, the term “Korea Exchange” part of the Plaintiff’s trademarks constitutes a conspicuous geographical name at the same time as the abbreviation of Korea’s title.

Then, according to the part of the “gold Exchange”, the phrase “gold Exchange” has the meaning of “gold and its related transaction place,” and in addition to the whole purport of the pleadings in each of the statements of evidence Nos. 3, 4, and 17 (including each number) (including each number), it can be recognized that the term, including the words “gold” and “Exchange”, is commonly used in the precious metal trading industry by the Plaintiff from January 11, 2006, when the Plaintiff’s use of the Plaintiff’s trademark, had engaged in precious metal trading business, and even thereafter, the international gold Exchange, Korea Exchange, a stock company, a stock company, a stock company, a gold Korea Exchange, and a gold Korea Exchange, etc., has engaged in the business.

Therefore, the “Korea Gold Exchange” seems to be regarded as “the place where gold and other related transactions are conducted in the Republic of Korea” among domestic consumers or traders, and this can be seen as indicating the designated goods or the nature of the designated service business of the Plaintiff trademark. Therefore, the “Korea Gold Exchange” is deemed to have no or weak distinctiveness in relation to the designated goods or the designated service business of the Plaintiff trademark.

(B) Furthermore, even though the name “Korea Gold Exchange” takes the form similar to the name of a special juristic person, such as “Korea Stock Exchange” and “Korea Futures Exchange,” it appears that if it is used for the designated goods or designated services of the instant registered trademark, it would be recognized as goods or services related to special legal persons by domestic ordinary consumers, and would be likely to mislead or deceive the quality of goods or services. Therefore, it is inappropriate to enable a specific person to monopoly for public interest.

(C) If so, the part of the Plaintiff’s trademark, “Korea Gold Exchange” alone, cannot be deemed as an independent distinctive character that can be perceived by ordinary consumers or traders. Moreover, it is not appropriate to grant a specific person exclusive right for public interest, and thus, it cannot be deemed as an “a part with distinctive character.”

(2) As to this, the Plaintiff: (a) prepared a business site on paper 3-Ga, which the Plaintiff was well aware of with a domestic precious metal distance, and used the Plaintiff’s trademark; (b) sold and run various events via commercial banks; and (c) obtained the sufficiently well-knownness by advertising through the press media. Therefore, the part of the Plaintiff’s trademark “Korea Gold Exchange” among the Plaintiff’s trademarks is widely recognized as indicating the Plaintiff’s products or services, and thus, (c) can play a role as a sufficiently recognizable part.

First, according to the statements in Gap's Evidence Nos. 4 through 6, 9 through 12, 22, 44, 47 through 52, and 61 (including various numbers), the plaintiff used the "Korea Gold Exchange" as a business mark since 2007 with the trade name "Korea Exchange of Stock Companies", and changed the trade name on August 17, 2009 into the "Korea Gold Exchange". ② The plaintiff or the plaintiff's subsidiary (State) Korea Gold Exchange, as the plaintiff or the plaintiff's subsidiary, had been participating in the event free of charge during the period from 2012 to 2014; around March 2013, the plaintiff's trademark was sold Gabd, etc. through the National Bank; ③ the plaintiff or the plaintiff's subsidiary from 2014 to 2014 to 2014 to 204.

However, as seen earlier, the “Korea Gold Exchange” may be perceived as referring to a special law related to gold transactions, anywhere where gold and any transaction related thereto is conducted in the Republic of Korea, or as referring to a special law related to gold transactions. As such, in order for the Korea Gold Exchange to be recognized as an identification mark of the Plaintiff’s goods or service business, a large number of ordinary consumers should have the word “Korea Gold Exchange” to the extent that they can be able to see the Plaintiff when they appear to have the word “Korea Gold Exchange.” However, solely on the ground that the Plaintiff engaged in the aforementioned business activities in the precious metal trading industry, it is difficult to recognize that the part “Korea Gold Exchange” is widely known to general consumers or customers as referring to the Plaintiff’s precious metal trading

Therefore, we cannot accept the plaintiff's above argument.

2) Whether the plaintiff trademark and the defendant trademark are similar

Ultimately, the Plaintiff’s trademark should be determined on the basis of the overall appearance, name, and concept of its composition as to whether it is similar to the Defendant’s mark. Although the Plaintiff’s trademark includes the same Korean language as that of the Plaintiff’s trademark, other letters combined with the Plaintiff’s trademark include the same kind of characters, or the degree of creativity. As such, it is obvious that the Defendant’s mark is distinguishable from the Defendant’s trademark in appearance.

In addition, customers of precious metal goods and services related thereto are most of adults with social knowledge above a certain level, especially middle-aged people with considerable economic capacity, and such consumers confirm their source by paying a careful attention in trading high-priced precious metals. Thus, if the marks having the above-mentioned external differences are made, they would not cause confusion about source.

Therefore, the Plaintiff’s trademarks and the Defendant’s marks are not similar.

(iii) arranging the results of the review;

Thus, the defendant mark cannot be seen as similar to the plaintiff mark, and the remaining issues are not examined, and the plaintiff's above assertion is without merit.

B. Judgment on the assertion based on the Unfair Competition Prevention Act

As seen earlier, the Plaintiff’s trademark or the same type of Plaintiff’s business mark cannot be deemed identical or similar to the Defendant’s mark. As such, the Defendant’s use of the Defendant’s mark for its own goods or business is unlikely to cause confusion with the Plaintiff’s goods or business. Thus, it does not constitute an unfair competition act under Article 2 subparag. 1(a) or (b) of the Unfair Competition Prevention Act

Therefore, the plaintiff's above assertion is without merit.

4. Conclusion

Therefore, all of the plaintiff's claims shall be dismissed as it is without merit, and the judgment of the court of first instance shall be just, and the plaintiff's appeal shall be dismissed as it is without merit. It is so decided as per Disposition.

[Attachment]

Judges Kim Kim-Excellent (Presiding Judge) and Lee Ho-san