Trademark Similarity Case: NOVATEX

2012 Heo 5394 Trademark refusal

Trademark similarity is assessed objectively and as a whole through appearance, pronunciation and concept. A distinctive component may be considered separately unless the components are inseparably combined. The question is whether consumers may confuse the source of the goods.

Goods are similar where use of identical or similar marks could suggest a common producer or seller. The assessment considers their quality, form, purpose, producers, sales channels and consumers in actual trade.

[Earlier registered mark]

Designated goods: gasoline, fuel oil, kerosene, diesel and industrial gasoline, among other goods.

Applied-for trademark

Designated goods: natural gas, including gas condensate and liquefied natural gas.

1) Comparison of appearance

The applied-for mark combines Russian and Latin lettering in two widely spaced lines, using blue lettering. These features distinguish its appearance from the earlier mark.

2) Comparison of pronunciation

The Russian and Latin elements are clearly separated and create no inseparable new concept. “NOVATEK” is distinctive for the designated goods and may be perceived on its own. Its Korean pronunciation “novatek” is very close to “novateks”, the pronunciation of the earlier mark “NOVATEX”, because the final additional syllable is weakly pronounced.

3) Comparison of concepts

Neither coined expression has a definite meaning, so their concepts cannot be compared.

Although natural gas and gasoline differ in production and physical properties, both are hydrocarbon fuels used in homes, transport, factories and power generation. Their consumers overlap, making the goods highly similar in trade.

Despite their different appearances, the marks have very similar pronunciations and designate highly similar goods. Use together could cause confusion as to source, so the court found the marks similar.