Republic of Korea

【Main Issues and Holdings】

[1] Method of determining the similarity of combined trademarks consisting of two or more letters or figures in cases where a trademark contains an essential part

Whether a component of a trademark that has no or a weak distinctiveness may be deemed an essential part (negative)

[2] Method of determining whether a component of a combined trademark exhibits distinctiveness to function as an essential part

[3] In the case where Trademark Holder A of the first-to-file trademark “ ” brought a claim for registration invalidation adjudication against Service Mark Holder B, a foreign entity, of the registered service mark “ ,” of which the designated services fall under the category of “retail services for a variety of goods in the field of metal and nonmetal accessories, bags, apparel, footwear, caps, and hats,” on the ground that the registered service mark shares a similarity with the first-to-file trademark, designated services or designated goods, the case holding that the lower court erred by misapprehending the legal doctrine on the similarity of service marks in determining otherwise when, in fact, the figure depicting the left side shape of a dog ( ) of the registered service mark cannot be deemed an essential part exhibiting independent distinctiveness

【Summary of Decision】

[1] As a matter of principle, the similarity of combined trademarks consisting of two or more letters or figures shall be determined based on the overall appearance of their constituent parts, names, and conceptions. However, if a trademark contains an essential part, namely, a part of the trademark that independently, standing alone, carries out the function of indicating the origin of goods by leaving an impression of the trademark on ordinary consumers or by inducing them to remember or associate with the trademark, then it is necessary to compare and determine the similarity of trademarks based on their essential parts as a means of reaching an appropriate conclusion of the overall observation.

The essential part of a trademark serves as the basis of comparison in determining its similarity with another trademark, by virtue of its independent, stand-alone distinctiveness apart from other components of the trademark, which makes the trademark prominently recognizable to ordinary consumers. As such, a component of a trademark that has no or a weak distinctiveness cannot be deemed an essential part.

[2] Determination as to whether a component of a combined trademark exhibits distinctiveness to function as an essential part ought to be made by comprehensively taking into account the following: (i) whether combined trademarks related to a product that is identical or similar to a designated product have been registered on multiple occasions or applications have been published; (ii) number of trademarks registered or publication of applications; (iii) number of applicants or trademark holders; (iv) level of inherent distinctiveness of the relevant constituent part and relationship with the designated product; and (v) circumstances deeming that granting exclusivity to a specific person from a public interest standpoint is inappropriate.

[3] In the case where Trademark Holder A of the first-to-file trademark “ ” brought a claim for registration invalidation adjudication against Service Mark Holder B, a foreign entity, of the registered service mark “ ,” of which the designated services fall under the category of “retail services for a variety of goods in the field of metal and nonmetal accessories, bags, apparel, footwear, caps, and hats,” on the ground that the registered service mark shares a similarity with the first-to-file trademark, designated services or designated goods, the Court held as follows: (a) both the registered service mark and the first-to-file trademark include a figure depicting the “left side shape of a standing dog”; (b) however, with regard to the services that share an identicalness or a similarity with the designated services prior to the date of filing for application of the instant registered service mark; (c) in view of circumstances, such as the fact that a number of service marks consisting of a figure similar to that of the instant registered service mark are registered under different service mark holders; (d) the figure depicting the left side shape of a standing dog ( ) of the registered service mark cannot be deemed an essential part exhibiting independent distinctiveness, inasmuch as acknowledging the distinctiveness of said figure is difficult or granting exclusivity of the same to a specific person from a public interest standpoint is inappropriate; (e) nonetheless, the lower court deemed otherwise and held that the registered service mark shared a similarity with the first-to-file trademark; and (f) in so doing, it erred by misapprehending the legal doctrine on the similarity of service marks.

【Reference Provision】[1] Article 34(1)7 of the Trademark Act / [2] Article 34(1)7 of the Trademark Act / [3] Article 34(1)7 of the Trademark Act

Article 34 of the Trademark Act (Trademarks Ineligible for Trademark Registration)

(1) Notwithstanding Article 33, none of the following trademarks shall be registered:

7. Any trademark used for goods identical or similar to the designated goods, which is identical or similar to the registered trademark of another person (excluding any registered collective mark with geographical indication) based on first to file[.]

【Reference Cases】[1] Supreme Court Decisions 2001Hu1080 decided Dec. 14, 2001; 2004Hu912 decided May 25, 2006 (Gong2006Ha, 1187); 2015Hu1690 decided Feb. 9, 2017 / [2] Supreme Court Decisions 95Hu1494 decided Mar. 22, 1996 (Gong1995Sang, 1404); 2008Hu5151 decided Apr. 23, 2009; 2015Hu932 decided Mar. 9, 2017 (Gong2017Sang, 662)

【Plaintiff-Appellant】Victoria’s Secret Stores Brand Management, Inc. (Attorneys Lee Hoe-gi et al., Counsel for the plaintiff-appellant)

【Defendant-Appellee】Defendant (Shin & Kim, Attorneys Park Gyo-seon et al., Counsel for the defendant-appellee)

【Judgment of the court below】Patent Court Decision 2017Heo1595 decided October 13, 2017

【Disposition】The lower judgment is reversed, and the case is remanded to the Patent Court.

【Reasoning】The grounds of final appeal are examined.

1. As a matter of principle, the similarity of combined trademarks consisting of two or more letters or figures shall be determined based on the overall appearance of their constituent parts, names, and conceptions. However, if a trademark contains an essential part, namely, a part of the trademark that independently, standing alone, carries out the function of indicating the origin of goods by leaving an impression of the trademark on ordinary consumers or by inducing them to remember or associate with the trademark, then it is necessary to compare and determine the similarity of trademarks based on their essential parts as a means of reaching an appropriate conclusion of the overall observation (see, e.g., Supreme Court Decision 2015Hu1690, Feb. 9, 2017).

The essential part of a trademark serves as the basis of comparison in determining its similarity with another trademark, by virtue of its independent, stand-alone distinctiveness apart from other components of the trademark, which makes the trademark prominently recognizable to ordinary consumers. As such, a component of a trademark that has no or a weak distinctiveness cannot be deemed an essential part (see, e.g., Supreme Court Decisions 2001Hu1808, Dec. 14, 2001; 2004Hu912, May 25, 2006).

Meanwhile, determination as to whether a component of a combined trademark exhibits distinctiveness to function as an essential part ought to be made by comprehensively taking into account the following: (i) whether combined trademarks related to a product that is identical or similar to a designated product have been registered on multiple occasions or applications have been published (see, e.g., Supreme Court Decisions 95Hu1494, Mar. 22, 1996; 2008Hu5151, Apr. 23, 2009); (ii) number of trademarks registered or publication of applications; (iii) number of applicants or trademark holders; (iv) level of inherent distinctiveness of the relevant constituent part and relationship with the designated product; and (v) circumstances deeming that granting exclusivity to a specific person from a public interest standpoint is inappropriate (see, e.g., Supreme Court Decision 2015Hu932, Mar. 9, 2017).

2. We examine the following in light of the aforementioned legal doctrine and record.

The Plaintiff’s instant registered service mark (Registration No. omitted), of which the designated services fall under the category of “retail services for skincare products, metal accessories, bags, apparel, and hats,” and the Defendant’s first-to-file trademark as indicated in the lower judgment, of which the designated services fall under the category of “suits, dress shirts, pajamas, ties, and socks,” both include a figure depicting the “left side shape of a standing dog” as shown in the diagram. However, with regard to the services identical or similar to the designated services prior to September 7, 2012, the date of filing application for registration of the instant service mark, acknowledging the distinctiveness of said figure is difficult or granting exclusivity of the same to a specific person from a public interest standpoint is inappropriate when taking into consideration that a number of service marks consisting of a figure similar to that of the instant registered service mark are registered under different service mark holders. Therefore, the figure depicting the left side of a standing dog ( ) cannot be deemed an essential part exhibiting independent distinctiveness.

Yet the lower court deemed said figure as an essential part of the instant registered service mark and thus determined that it shared a similarity with the first-to-file trademark. In so doing, the lower court erred by misapprehending the legal doctrine on the similarity of service marks, which led to the failure to exhaust all necessary deliberations, thereby adversely affecting the conclusion of the judgment.

3. Therefore, the lower judgment is reversed, and the case is remanded to the lower court for further proceedings consistent with this Opinion. It is so decided as per Disposition by the assent of all participating Justices on the bench.

Justices               Kim So-young (Presiding Justice)

Ko Young-han

Kwon Soon-il

Cho Jae-youn (Justice in charge)