2008 Heo 12821 Trademark refusal
[Principles of assessment]
Separate or dominant-element analysis assists the overall assessment; it does not replace it. Even if one aspect is similar, marks are dissimilar where their overall impressions clearly avoid confusion.
Applied for trademark | Applied-for service mark | |
Mark |  |  |
Designated Goods | Money belts, leather shoes, etc. | Advertising Planning, Commercial Information |
[Overall comparison]
1. Appearance and concept
The marks differ markedly in spelling, letter count, devices, capitalization and spacing. No meaningful conceptual comparison is possible.
2. Pronunciation
The applied-for mark is pronounced “Eryn Brinie”, while the earlier-filed mark is pronounced “ELIN”. Their overall pronunciations differ.
[Separate observation]
Even when “Eryn” is considered separately, its pronunciation is not sufficiently close to “ELIN” to cause confusion in this case. The court considered consumers' ability to distinguish the English R and L sounds.
[Decisions]
The applied-for mark was used and pronounced in full in advertising and trade after filing. Consumers increasingly recognized designers' full names as marks, including both given and family names; the court referred to Supreme Court case 2008Hu4783 of 9 April 2009. Separating the components was therefore unnatural in this context. Assessed as a whole, the marks differed in appearance and pronunciation and were dissimilar.
This article reflects the information available when it was published. Contact us to discuss your circumstances.