Introduction of Precedent Related to Judgment of Similarity of a Combined Mark Including a Design
[Supreme Court Decision on March 29, 2018, 2017Hu2697]
The Patent Court has recognized that the registered service mark “ ” of the case in question is similar to the pre-registered mark “ ” and stated that the patent tribunal’s trial decision that the registered service mark of this case should be invalid within the scope of the goods which are in conflict between the two marks is legitimate. However, the Supreme Court has returned the original judgment on the grounds that both marks are not similar, so it is worthwhile to examine the grounds on which similarity of two marks is judged.
2. Judgment of Court
2-1. Judgment of Patent Court
2-1-1. The Patent Court stated that the registered service mark of this case is a mark in which a design part, in which a dog shape is combined in a laurel frame shape, is combined with the English letters “PINK” below the design; and if observing by separating these parts, it cannot be seen as being combined indivisibly such that the divided parts would be considered to be unnatural. They also stated that the English letters are a common name which indicates a color as the English word meaning the color pink, and the laurel shape in the design is a decorative design which is often used to emphasize other shapes or a mark and thus its discrimination is weak. On the other hand, they said that the dog shape can be regarded as a prominent part which performs the function of indicating the source of the designated services by itself because it is difficult to perceive the nature of the designated services from the dog shape or it is not considered to be closely related to the designated services.
2-1-2. Meanwhile, the Patent Court also stated that as the pre-registered mark is a mark in which a design of a dog shape on top and English letters below are combined, it cannot be seen as being combined indivisibly such that the divided parts would be considered to be unnatural, and both the design and the letters can be regarded as prominent parts which can each perform, respectively, the function of indicating the source of the designated services by itself because it is difficult to perceive the nature of the designated services with the design and the letters or they are not considered to be closely related to the designated services.
2-1-3. In conclusion, the defendant argued that the scope of similarity should be narrow since there are many cases in which design marks featuring a dog shape have been registered in relation to services or goods that are similar to those of the said two marks; however, the Patent Court has judged that the two marks are similar to each other overall because the similarity of the prominent parts of the designs of both marks can overwhelm the other factors to be considered.
2-2. Judgment of Supreme Court
The Supreme Court stated that, in consideration of the fact that a number of service marks including shapes which are similar to the design part of the mark have been registered before the filing date of the registered mark of this case with different owners of service marks in relation to the designated services, it is difficult to recognize discrimination of the design part or it is not appropriate to give a right to a certain person to monopolize it in the public interest. Therefore, the design part ( ) in the registered mark, being a dog’s side view in shape, cannot be regarded as a prominent part which expresses its own discrimination.
Nevertheless, as the Patent Court has regarded the prominent part of the registered mark to be a shape of a dog’s side view and judged that the mark is similar to the pre-registered mark, there is a mistake in the Patent Court’s judgment in that they have not completely fulfilled the trial requirements due to misunderstanding mark similarity and thus affecting the judgment.
3. Discussion and Implications
According to existing judgments, when judging whether there is discrimination in a component which can function as a prominent part of a combined mark, the case that a number of marks including the corresponding component have been registered in relation to goods which are the same or similar to designated goods or have been disclosed to the public can be considered. However, this precedent clarified that these considerations should be applied equally to the design parts, not just to the letters. Namely, a design that is commonly used in relation to corresponding goods should be considered to have low discrimination, and such should not be seen as a prominent part when judging similarity of marks.