Trademark Similarity: Sooryehan Biyun versus Biyunjin

2008 Heo 13275 Trademark registration invalidation

A composite mark need not always be perceived through every component. A distinctive component may be considered separately unless the components are inseparably combined.

Even if there is a similar part between the contrasting trademarks, it cannot be called a similar trademark if it is unlikely to be segregated by itself or if it can be clearly avoided by observing the source as a whole.

The registered mark combines the Korean wording “Sooryehan”, followed after a space by “Biyun” and its Chinese-character form “飛潤” in parentheses. The earlier-filed mark consists of the Korean wording “Biyunjin” in a Gothic typeface. The marks therefore differ in appearance.

In the registered mark, “Sooryehan” functions as an adjective modifying “Biyun”, so the latter may be perceived separately. By contrast, “Biyunjin” is written continuously in matching type, and “Biyun” is not a familiar expression whose meaning would naturally encourage separation. The marks are therefore perceived as “Biyun” and “Biyunjin”, with different pronunciations and concepts.

The marks differ in appearance, pronunciation and concept. The court found them dissimilar.