2003 Heo 168 Trademark registration invalidation
[General principles of similarity assessment]
The provision applied in this case required an identical or similar earlier-filed registered mark used for identical or similar goods. Mark similarity is assessed objectively and as a whole through appearance, pronunciation and concept.
Cited mark | Registered mark at issue | |
Mark |  |  |
Designated Goods | Central nervous system medicine, peripheral nervous system medicine | |
[Similarity assessment]
1. Whether “PRO” can be separated from the cited mark
“PRO” may suggest professional quality but does not directly describe the relevant medicines. Although many pharmaceutical marks containing “PRO” coexist and the element may be weakly distinctive, both marks are continuous coined expressions without a definite meaning. It would therefore be inappropriate to separate “PROGRAF” and consider only “GRAF”.
2. Appearance and concept
Both marks have seven uppercase letters and share several letters, but differ in the third and final letters: A/O and N/F. The familiar “PRO” opening of the cited mark contributes to a different visual impression. Neither coined mark has a definite concept for comparison.
3. Pronunciation
The Korean pronunciations of “PRAGRAN” and “PROGRAF” differ at the opening and ending. The final F is ordinarily pronounced with a distinct Korean “peu” syllable, while the familiar “PRO” opening also stands out. Considering the tendency to emphasize a mark's beginning, the court found the overall pronunciations dissimilar.
[Decisions]
The marks differ in appearance and pronunciation and are unlikely to cause confusion. The registered mark was therefore not barred by the earlier mark under the provision applied in this case.
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