[1] The point of time to determine whether part of each constituent part of the applied trademark or pre-registered trademark has no or lacks distinctiveness of the goods of the other trademark (=the time of application)

[2] The case holding that UBI QMN " is not similar because it differs in terms of QMN's appearance, name, and concept, the registered trademark " QMN"

[1] Generally, the similarity of the registered trademark and the prior registered trademark should be determined on the basis of the time of application of the applied trademark. As such, the point of time to determine whether some of the constituent parts of the applied trademark or prior registered trademark lacks or lacks distinctiveness of the goods of the other trademark should be determined on the basis of the time of application.

[2] The case holding that the trademark applied for registration is not similar in terms of its appearance, name, and concept when comparing the trademark applied for registration with QMN, since it is difficult for ordinary consumers to regard only the part " QIN" of the trademark applied for registration, and the part "UBI" of the trademark applied for registration (as of September 25, 2002, the term "UBI" means the reduced form of "an environment in which users can freely connect to the network without regard to the computer or network regardless of the place," and it cannot be recognized that it is a mark having no distinctive character in relation to the portable computer, etc. as it is used by many people

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

[1] Supreme Court Decision 99Hu2167 decided Nov. 12, 1999 (Gong1999Ha, 2514)

Samsung Electronic Co., Ltd. (Patent Attorney Ho-tae et al., Counsel for the defendant-appellant)

The Commissioner of the Korean Intellectual Property Office

January 27, 2005

1. The decision made by the Intellectual Property Tribunal on September 30, 2004 on the case No. 2004 Won621 shall be revoked;

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

The same shall apply to the order.

1. Details of the instant trial decision

A. On September 25, 2002, the Plaintiff filed an application for trademark registration with the Korean Intellectual Property Office as to the trademark of this case as follows.

(1) Composition: UI QMN

(2) Application number: No. 2002-43959

(3) Designated goods: A physical attachment-type computer, portable computer, portable communications machinery and apparatus, personal portable device (PDA), recorded computer programs, type of ship, and chargers (Class 9 of the classification of goods).

B. On January 15, 2004, the Korean Intellectual Property Office rendered a decision of refusal for registration on the ground that the trademark of this case is identical to the physical attachment-type computer, portable computer, portable telecommunications equipment, personal portable device (PD), and recorded computer program among the designated goods on March 15, 2004 on the ground that the trademark of this case falls under Article 7 (1) 7 of the Trademark Act and thus, the trademark of this case cannot be registered on the ground that the trademark of this case falls under Article 7 (1) 7 of the Trademark Act and Article 7 (1) 7 of the Trademark Act.

C. The plaintiff filed a petition for an appeal against the decision of refusal with the Intellectual Property Tribunal in response to the above decision of refusal, but the Intellectual Property Tribunal tried to do so with the case No. 2004 won621, and on September 30, 2004, "UBI" or "UB Q Q" means that construction exists in the front part of the applied trademark at any time in the beginning, "UBI" or "UBU" is the same as the front part of the "UBPUUUUUUUUU.U.S.," and "UBU.S.," and "UBU.U.M." or "UBU.U.U.U.U.U.U.U.S." or "U.U.U.U.U.U.U.U.U.S." can be separated from the original part of "U.M." or "UBU.U.U.U.U.U.U.U.U.U.P." or "U.U.P.".M.M.

[Evidence] Evidence Nos. 1 to 4, Eul's Evidence No. 1, and the purport of the whole pleadings

2. Determination on the legitimacy of the instant trial decision

A. Summary of the grounds for revocation of the Plaintiff’s trial decision

The term "UBI" portion of the applied trademark of this case is recognized as a axis form of "UBI QUOUS" for general consumers, and it cannot be said that there is no distinctive character in relation to the designated goods. The term " QMN" portion is connected with the remaining goods without being kept in the same letter as the remaining parts, and it does not have any meaning in itself and does not indicate any special relation with the designated goods. Since there is no difficulty in referring to the overall term of the applied trademark of this case as a whole because the total volume of the applied trademark of this case is too large, and thus, the trademark of this case should be referred to as the whole concept and protection, and in such a case, the trademark of this case is not similar to the prior registered trademark.

(b) Markets:

(1) Whether the trademark of this case and the prior registered trademark are similar

(A) Criteria for determining similarity

In general, the similarity of trademarks shall be determined in terms of the appearance, name, and concept of two trademarks used for the same kind of goods, and whether there is a concern for misconception or confusion as to the source of goods in the trade at any time after observing in an objective, overall, and different aspects in terms of their appearance, name, and concept. The similarity of trademarks shall be determined in comparison with the essential part of each constituent part, unless the combination of each constituent part of letters, letters, or figures is necessarily a combination of the entire constituent part, but each constituent part of each constituent part is not a combination of names, concepts, but an indivisible part to such a degree that it is deemed natural if observed separately, it cannot be seen as natural if it is combined with each constituent part of each constituent part (see, e.g., Supreme Court Decision 96Hu2517, Sept. 26, 1997). In principle, if each constituent part is separated and observed separately, the similarity of trademarks shall be determined after comparing the whole constituent part of the two trademarks (see, e.g., Supreme Court Decision 96Hu2517, Sept. 26, 197).

(B) Whether it is possible to separate the applied trademark of this case into QMN

In this case, it is difficult to see that the trademark in this case is a character trademark whose 7 letters are continuously arranged without any special meaning and whose composition is not peculiar, and it does not have any characteristics compared to other parts, and it does not have any meaning in itself (see, e.g., evidence No. 5-1 to 5), and it is difficult to see that the trademark in this case is likely to be recognized as a whole as a part of the trademark in this case, and only ' Q&N', which is part of the trademark in this case, is recognizable separately from the remaining parts of the trademark in this case (see, e.g., the trademark in this case can be recognized by dividing it into 'UBI' or 'UBIP') in light of the fact that the 'MN' among the applied trademarks in this case is an easily English part).

In this regard, the defendant asserts to the effect that "UBI" among the applied trademarks of this case is a drug type of "UBI" "UBI" which means "the environment in which users can freely connect to a network without regard to a computer or network, regardless of the location of the computer or network. As can be seen in the evidence Nos. 3 through 17, as the information and communications technology of our country has developed to the extent that it can pursue such an environment, "UBI" and "UBI" are more frequently used by many people in various fields. Accordingly, "UBI" claims to the effect that "the designated goods are attached to a computer, portable computer, portable communication machine, personal portable device (PDA), computer program" and "computer program, etc., regardless of the location of the trademark of this case, the part of "goods" other than the designated goods in this case can be freely connected to the general consumers and thus, "UBI" is a technical mark indicating "goods" as the designated goods in this case.

Therefore, according to the evidence Nos. 2-1 and 2, "UBIS" is used as a word "information and communication environment in which users can freely access a network without regard to the network or computer, regardless of the place," but generally, the similarity of the applied trademark and the prior registered trademark should be determined at the time of application of the trademark. Thus, as a premise of determination, the point of time to determine whether some of the constituent parts of the applied trademark or the prior registered trademark has no or lacks distinctiveness of the other goods should be determined at the time of application (see Supreme Court Decision 9Hu2167 delivered on Nov. 12, 199). Each evidence of evidence Nos. 3 through 17 submitted by the defendant cannot be recognized as non-distinctive evidence of "OBS" as non-distinctive evidence related to the designated goods after September 25, 202, which is the date of application of the trademark in this case, or as non-distinctive evidence of "OBU" as non-distinctive evidence.

(C) Preparation for the applied trademark of this case and the prior registered trademark

First, in external appearance, the trademark of this case is composed of 7 English letters, whereas the prior registered trademark consists of 4 English letters, so both trademarks are not similar to their external appearance.

In the name and concept, the trademark of this case is referred to as "Bigle" or "Bigleman" as a whole and there is no particular concept, while the prior registered trademark is called as "Curman" and there is no concept, so both trademarks are not similar in terms of name and concept.

Therefore, the pending trademark and the pre-registered trademark of this case are not similar to each other in cases where overall, e.g., external, and objective observation is conducted.

(2) If so, the trademark applied in this case is not similar to the prior registered trademark, and it does not fall under Article 7 (1) 7 of the Trademark Act without examining the similarity of the designated goods. Thus, the decision rejecting the registration of the applied trademark in this case is unfair, and the decision of this case is otherwise unfair.

3. Conclusion

Therefore, the plaintiff's claim seeking the revocation of the trial decision of this case is reasonable, and it is decided as per Disposition with the assent of all participating Justices.

Judges Park Dong-dong (Presiding Judge)