2002Hu352 Voidance of a Registration(Sang)

by Supreme Court of Korea

Justices Son Ji-yol (Presiding Justice), Cho Moo-jeh, Yoo Ji-dam (Justice in charge), Kang Shin-wook

Main Issues

1. Whether the trademark "CD" with "Christian Daniel," written in double parallel layers, is similar to the conflicting trademark "Christian Dior"(negative)
2. Whether the trademark "CD" with "Christian Daniel," written in double parallel layers, is similar to the conflicting trademark "Christian Dior"(negative), and whether the trademark "CD" with "Christian Daniel," written in double parallel layers, constitutes a consumer deceiving trademark(negative)

Summary of Decision

1. The term "Christian," appearing in the "CD" and the beginning parts of the trademark "Christian Daniel," written in double parallel layers, and the conflicting trademark "Christian Dior," is used ordinarily as referring to christians in general by domestic consumers or transactional partners; so, its capacity to distinguish product origins as a symbol is diluted; and, the latter parts of trademarks, "Daniel" and "Dior," are conspicuously different from each other. In conclusion, we hold the view that the trademark of this case and the conflicting trademark No.1, as a whole, are difficult to be seen as similar to each other, and it is hard to find similarities as a whole between two trademarks to the extent that they trigger consumer misconception ∙ confusion as to their product origins even if their appearances and concepts are additionally considered.
2. Because the "CD" merely juxtaposes two alphabets, is simple and universally used, and thus, its distinction capacity as a symbol cannot be acknowledged, the trademark "CD" with "Christian Daniel," written in double parallel layers, cannot be found to be the same as or similar to the conflicting trademark "Christian Dior" because of the "CD" part. Further, even in case of comparison by the remaining parts, it is hard to find a similarity between two trademarks. Moreover, as of the date of a trademark registration decision, the defendant's trademark could not be found as widely known to the extent that the "CD" part was recognized as the defendant's trademark.

Reference Provisions

1. Article 7 (1) 7 of the Trademark Act
2. Article 7 (1) 11 of the Trademark Act

Article 7 of the Trademark Act (Unregistrable Trademark)

(1) Notwithstanding Article 6, a trademark falling under any of the following subparagraphs shall be unregistrable:

7. Trademarks identical, or similar to another person's registered trademark whose registration was applied for prior to the filing date of the trademark applications concerned and which are to be used on goods identical, or similar to the designated goods;

11.Trademarks which are liable to mislead or deceive the consumers as to the quality of the goods;

Reference Cases

Supreme Court Decision 2001Hu1808 delivered on December 14, 2001(2002Sang, 321), Supreme Court Decision 2001Hu3132 delivered on October 22, 2002(2002Ha, 2904)

[Plaintiff, Appellant] Kang Ki-won (Patent Law Firm Ajoo, Patent Attorney Chung Eun-sub and 1 other, Attorney Chang Woo-kun, Counsel for plaintiff-appellant)

[Defendant, Appellee] CHRISTIAN DIOR COUTURE (Attorney Yang Young-jun and 2 others, Counsel for defendant-appellee)

[Judgment of the court below] Patent Court 2001Huh4807 delivered on January 25, 2002

[Disposition] The judgment of the court below is reversed and the case is remanded to the Patent Court.

Reasoning

1. Judgment of the court below

The court below decided that the trademark of this case "CD" with "Christian Daniel," written in double parallel layers, is similar to the conflicting trademark No.1 "Christian Dior," based on the following grounds: the trademark of this case is voiced as "Christian Daniel" referring to the part "Christian Daniel" and the conflicting trademark No.1 "Christian Dior" is voiced as "Christian Dior"; thus, both trademarks are pronounced with total seven syllables. Further, the court below found as follows: the first part "Christian" of both trademarks is identical to each other and the first syllables of their second parts are both " "; the last syllables are " " in both; sounds of both trademarks as a whole belong to the similar domain; thus, two trademarks sound similar to each other; thus, observed holistically, objectively, and from a distance, two trademarks are similar to each other. Accordingly, the court below ruled that trademark of this case was registered against Item 7 of Article 7(1) of the Trademark Law. Moreover, both the trademark of this case and the conflicting trademark No.3 "CD Christian Dior" can be identified as "CD" by relying partly on this part from the entire trademark, and in that case, both trademarks become identical to each other. On the other hand, if "Christian Daniel" is the trademark used in the registration application of this case and the conflicting trademark No.3 "CD Christian Dior" is identified merely as "Christian Dior," then sounds of both trademarks, as a whole, are similar to each other as mentioned in the above. Thus, observed holistically, objectively, and from a distance, two trademarks are similar to each other. And as of the registration decision date of this case, the conflicting trademarks No.3 and 4 were widely known to the extent that they were recognized by consumers and transaction partners as the defendant's trademark at least as to bags, wallets, and clothing in their ordinary domestic transactions. Although their product lines of bags as well as clothing marked by the conflicting trademarks Nos.3 and 4 are different from those products designated in a registration application of this case such as shoes, umbrellas, UV protection umbrellas, sticks, and cooling fans, their customers are composed of shared consumer base for diverse products bearing each trademark, and according to the rules of experience it is clear that at the time of the registration decision of this case, the trend was that one company produced diverse product lines, and such diverse products were sold in the same store as displayed side by side. And such so-called total fashion trend was ubiquitous in communities transacting these products. Therefore, the court acknowledged this case as the special circumstance that although the trademark of this case were used just for its designated products, it would provide ample grounds for consumer confusion that those products are made by the holder of the conflicting trademark to the extent or beyond as it would cause confusion if the trademark of this case were used for similar product lines such as bags or clothing, etc. Accordingly, the court below concluded that the registration of this case shall be voided on the ground that the registration was granted against Item 7 of Article 7(1) of the Trademark Law as the trademark of this case falls under the case where there are concerns of deceiving consumers by misconception ∙ confusion as to a product origin as if it were from the holder of the conflicting trademark Nos.3 and 4.

2. With respect to the ground for appeal No.1

However, the term "Christian" appearing in the beginning parts of both the trademark of this case "Christian Daniel" and the conflicting trademark No.1 "Christian Dior" is used ordinarily as referring to christians in general by domestic consumers or transactional partners; so, its capacity to distinguish product origins as a symbol is diluted; and, the latter parts of trademarks, "Daniel" and "Dior," are conspicuously different from each other. In conclusion, we hold the view that the trademark of this case and the conflicting trademark No.1, as a whole, are difficult to be seen as similar to each other, and it is hard to find similarities as a whole between two trademarks to the extent of finding that they trigger consumer misconception ∙ confusion as to their product origins even if we further take their appearances and concepts into consideration.

Nonetheless, the court below decided that the registration of this case shall be voided on the ground that the trademark of this case is similar to the conflicting trademark No.1 as a whole. Thus, in its decision, the court below erred in matters of law by misunderstanding legal principles as to similarities between trademarks as stipulated under Item 7 of Article 7(1) of the Trademark Law, which affected the conclusion of its judgment. We find the ground of appeal No.1 pointing this out as justified.

3. With respect to the ground for appeal No. 2

The court below found that the trademark of this case and the conflicting trademarks No.3 and 4, if they are identified by the "CD," which composes one part of each trademark, are identical to each other, and two trademarks are similar to each other even if they are identified only by the remaining part of their trademarks. However, because the "CD" merely juxtaposes two alphabets, is simple and universally used (see Supreme Court Decisions 2001Hu1808 delivered on December 14, 2001, 2001Hu3132 delivered on October 22, 2002), and thus, its distinction capacity as a symbol cannot be acknowledged, we do not hold the view that identification by means of each trademark is the same as or similar to each other in reliance on this part of each trademark. Further, even in case of comparison by the remaining parts, it is hard to find a similarity based on the reasons set out in the above section discussing the ground for appeal No.1. Moreover, based on their prior trademark registration, the court below found that, as of the registration decision date of the trademark of this case, the conflicting trademarks No.3 and 4 are widely known to the extent that they are recognized by consumers and transaction partners as the defendant's trademarks. However, upon the records, we found it hard to accept that the defendant's trademark was famous to the extent that the "CD" part was recognized as the defendant's trademark

Nonetheless, the court below concluded that since the trademark of this case was, as a whole, similar to the conflicting trademark Nos.3 and 4. there were concerns of deceiving consumers if both trademarks coexisted. Thus, in its decision, the court below erred in matters of law by misunderstanding legal principles as to consumer deceiving trademarks under Item 11 of Article 7(1) of the Trademark Law, which affected the conclusion of its judgment. We find the ground of appeal No.2 pointing this out as justified.

4. Therefore, the court below's decision is reversed, and the case is remanded for a new trial ∙ determination to the court below. It is decided as per Disposition by the assent of all Justices who heard the case.