Reflecting the changes in the current market situation, it should be noted that recent Korean court cases have held that visual appearance is more important than sound in determining the similarity of trademarks.
Case Law to Determine Similarity of Trademarks
When determining the similarity of trademarks, as in other jurisdictions, Korean courts as well as the Korean Intellectual Property Office (KIPO) compare trademarks in their entirety, including the factors of appearance, sound and connotation.
Even if the marks share identical factors, but there is no likelihood of confusion as to the source of the goods for the marks, the marks would not be considered as potentially confusing with one another. Conversely, even if there are different factors, if the sound or appearance is similar and there is therefore a likelihood of confusion, the marks compared must be regarded as similar marks. In order to determine the likelihood of confusion due to the similarity of the marks, the commercial circumstances concerning the goods must be taken into account.
Sound – once the most important factor
Previously, Korean courts had held that “sound” was the most important factor in determining the similarity of marks given the business circumstances for advertising the marks and purchasing the products through voice media such as broadcast or the telephone (Supreme Court decisions 97Hu3050, February 25, 2000, 96Hu344, September 6, 1996).
This case law continued until recently, and the obstacles to registration were quite high for marks with the same or similar sounds, even when they had different factors in terms of appearance or connotation.
For example, Korean courts have ruled that the trademarks “Asrock” and “Slock”, “Alex Cosmetic & device” and “RX-1” in Korean transliteration, “Cartok” and “Katalk”, “The Ocean “and” Diocian “are similar to each other due to the similarity of sound (Supreme Court Decision 2006Hu626, June 2, 2006, Patent Court Rulings 2008Heo3391, June 27, 2008, 2017Heo5009, February 6, 2018, 2019Heo4468 , December 12, 2019).
Similarity test using Korean pronunciation
For trademarks in foreign terms other than Korean, the trademarks were compared to their phonetic equivalent in Korean. In Korean, “B” and “V” are written using the same Korean letter, although the actual sounds of these are slightly different. Likewise, the pairs ‘(soft) C’ and ‘S’, ‘F’ and ‘P’, and the initials ‘L’ and ‘R’ are often respectively written using the same Korean letters.
Therefore, in theory, “boys” and “voices” which have identical or nearly identical pronunciation in Korean can be considered as similar marks under Korean practice. In fact, the trademark “Pilar” (No. 1527556), registered by an American clothing and footwear company, was in fact rejected in Korea on the basis of similarity to the earlier marks “Fila” and “Fila in Korean. “. In this case, “Pilar” and “Fila” can be transcribed identically in Korean. The fact that the two brands have clearly different concepts was not reflected in the examination results.
Recent changes to the similarity criteria
Recently, the Korean Supreme Court overturned the original rulings of the KIPO Patent Court and Intellectual Property Tribunal and Appeals Board (IPTAB), and referred the case back to the lower court. In this case, the Supreme Court ruled that the mark “Urbansys” was different from “AVANCIS”, despite the identical Korean pronunciations of the marks, given their different appearances and meanings (Supreme Court decision 2020Hu10957, December 30, 2020) .
In the commentary on the Supreme Court judgment, the forensic researcher pointed out that case law that was valid at some point in the past may become far removed from reality, which requires caution when citing past case law. . Thus, rapid changes in market circumstances should be reflected in determining the similarity of trademarks.
Nowadays, compared to Supreme Court ruling 97Hu3050, there has been a significant increase in the importance of visual advertisements and transaction methods such as online stores, social media and YouTube, when they are accompanied by videos or images, and thus, it is necessary to take into account the importance of “visual factors” in determining the similarity of marks.
Therefore, although the importance of phonetic factors in word marks cannot be denied, they may not be absolute criteria. On the contrary, a similarity test must be carried out carefully taking into account all the factors taking into account the general perception of consumers, so that a reasonable decision can be made for the specific case. In particular, for brands using non-Korean words, in addition to simply comparing the transliterated sounds of brands as in Korean word marks, improving foreign language skills of Korean consumers in the context of a recently globalized society must also be taken into account.
Three remarkable cases giving more weight to the visual appearance
As noted above, in decision 2020Hu10957, the trademarks “Urbansys” and “AVANCIS”, which are pronounced the same in Korean, were found to be different due to differences in appearance and concept.
After Supreme Court decision 2020Hu10957, the Patent Court subsequently ruled that the trademarks for “Fowi & device” and “Poi Designs” and those for “Kaloom” and “Caroom & device” were different from each other. (Patent Court Decisions 2020Heo4297, May 13 2021, 2021Heo2267, July 2, 2021).
In the aforementioned cases, the Patent Court placed more weight on the visual appearance than on the identical sounds of their marks, given the recent channels of sale and purchase through visual aids, such as smartphones and tablets, given the widespread penetration of the Internet.
The above cases maintain the basic case law in determining similar marks, but clearly show the recent tendency to view visual appearance according to realistic consumer perceptions.
In line with the evolution of the similarity criteria in recent cases, it is expected that more reasonable and rational decisions will be made to determine the similarity of marks, reflecting the specific circumstances of the market. As a result, it is also expected that a greater number of trademark applications can be avoided from rejection on the basis of similarity of the marks.
Trademarks recognized as dissimilar
Brands found similar
Min Son, PhD
Managing Partner, Hanol IP & Law
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