Lee International

Recently, the Intellectual Property High Court (“IPHC") issued a highly significant ruling, where the IPHC held that when accessing the similarity of marks comprising a combination of two or more elements (hereafter “Combined Mark(s)”), the comparison should encompass the entirety of the Combined Marks. This approach takes into account how the mark is actually being used and perceived in trade channel (i.e., status of use of mark). In the decision, it was determined that when comparing the relevant marks in this manner, the marks are dissimilar despite the shared element (Intellectual Property High Court Decision 2002 heo3199 ruled on March 10, 2023). This ruling holds particular significance as it represents a departure from the conventional stances upheld by the Korean Intellectual Property Office (KIPO) and Intellectual Property Trial and Appeal Board (IPTAB). These bodies traditionally advocated to dissect the Combined Marks into its constituent elements and examined based on the separable element, which is prominent in the marks. This decision was successfully advocated by our firm, Lee International IP & Law.

In determining the similarity of the Combined Marks, KIPO tends to separate the marks into individual elements and compare them based on the shared elements, unless elements in the marks are inseparably. This method of comparison often leads to the determination that, despite the difference of other elements in the compared marks, the coexistence of the marks would cause confusion or misconception as to the source of the parties’ respective goods/services due to the shared elements. In the subject case, however, the IPHC ruled that whether the Combined Marks are similar should be determined considering the overall composition and the status of use of the marks in trade channels, unless there is a substantiated grounds to conclude that the shared element is deemed a dominant element of the marks.

Case Summary and Intellectual Property High Court Decision

In the case at hand, the mark “” (“Filed Mark”) was finally refused by KIPO on the basis that the Filed Mark shares the dominant element “SHEPHERD” with the prior-registered mark “” (“Prior-Registered Mark”). Following the KIPO decision, an applicant proceeded to appeal to the IPTAB. Regrettably, the IPTAB upheld the KIPO’s final refusal of the Filed Mark on the basis that it is confusingly similar to the Prior Mark due to the shared element, which is a dominant element of the marks.

Nonetheless, the applicant filed an appeal with the IPHC. Subsequently, the IPHC ruled that it is unreasonable to conclude that a one particular word in the Combined Mark is a dominant element thereof, and consequently reversed the IPTAB decision. The rationale for the reversal is outlined as follows:

-        The Filed Mark is comprised of words “” in the same font and size, without any conspicuousness.

-        Given that the element “UNDERCOVER” of the Filed Mark conveys the meaning of “clandestinely” or “in secret,” it is difficult to conclude that this element is indistinctive in connection with the designated goods.

-        The element “SHEPHERD” of the Filed Mark is being used as product names for various apparel products, such as “HUGO BOSS SHEPHERD Jacket”, “Anderson and shepherd jacket,” and more. In view of these instances, it is difficult to conclude that the element “SHEPHERD” has a high distinctiveness.

-        The applicant employs the complete Filed Mark “” as its entirety, and there is no evidence to conclude that the Filed Mark is perceived or pronounced by the element “SHEPHERD” alone.

-        There are no grounds to conclude that the Prior-Registered Mark “” is recognized by the element “SHEPHERD” alone in Korea.

Signification of Intellectual Property High Court Decision

This decision underscores the importance of assessing the similarity of the Combined Marks in their entirety, rather than focusing solely on separable or dominant element alone, unless there is a compelling reason to conclude that the Combined Mark is perceived by its separable element. Traditionally, if the Combined Mark shares a separable or dominant element with a prior-registered mark, it is deemed similar to the prior-registered mark due to the shared element, leading to rejections based on the shared element. In contrast to this conventional practice, this decision is significant in that it evaluates the similarity of the Combined Marks considering their entirety and the status of use of marks in trade channel.

In light of this case, it is anticipated that determining the registrability of a Combined Mark would necessitate a thorough analysis, including determining whether a word, which is separable from the mark, is commonly used in the relevant trade market, whether the separable word possesses a distinctiveness in connection with designated goods, among other considerations.