2008 Heo 8723 Trademark refusal
[Principles of Judgment]
Trademark similarity is assessed as a whole from the perspective of ordinary consumers and traders, considering appearance, pronunciation and concept. A distinctive element of a composite mark may be considered separately unless its components are inseparably combined.
| Earlier registered mark | Applied for trademark | |
| Mark |  |  |
| Designated Goods | Golf shoes and nine other goods in former Class 27 under the Trademark Act Enforcement Rules before amendment by Ministry of Trade and Industry Ordinance No. 83 of 23 February 1998. | Class 25: women's golf outfits, golf trousers, golf shorts, golf skirts, golf vests, golf jackets, golf caps, golf socks, golf shoes and women's golf shirts. |
[Similarity of the marks]
The applied-for mark
combines “birdie”, meaning a small bird or a golf score of one under par, with a bird device at the upper right. The earlier mark
" With You "
combines a device with the words “Blue Birdie” above it. The marks differ in appearance.
combines “birdie”, meaning a small bird or a golf score of one under par, with a bird device at the upper right. The earlier mark" With You "combines a device with the words “Blue Birdie” above it. The marks differ in appearance.In both marks, the wording can be observed separately from the device, as the combination does not create an inseparable new concept. In the earlier mark, “Birdie” can also be considered separately from “Blue”, which has relatively weak distinctiveness.
Both marks may be referred to by the common element “birdie” or “Birdie”. In that form their pronunciation and concept are identical, making the marks similar.
[Similarity of the designated goods]
The parties did not dispute that both marks designate golf shoes.
[Decisions]
The marks are similar and their designated golf shoes are identical.
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