2009 Heo 2074 Trademark refusal
[Principles of Judgment]
Trademark similarity is assessed objectively and as a whole, considering appearance, pronunciation and concept as consumers encounter the marks separately. A composite word mark may be perceived through a distinctive component unless its elements are inseparably combined. A non-distinctive or weakly distinctive element generally cannot be the dominant element on its own.
| Earlier registered Trademark 1 | The Earlier registered Trademark 2 | Applied for trademark | |
| Mark |  |  |  |
| Designated Goods | Class 2: fire-resistant, disinfectant, aluminum, anti-fouling, fireproof, anti-rust, zinc-rich, mold-resistant, chemical-resistant, oil-resistant, heat-resistant, anti-condensation, anti-poster and anti-slip paints, among others. | Former Class 13 under the Trademark Act Enforcement Rules before amendment by Ordinance No. 26 of 30 December 1995: shampoo, toilet soap, hair conditioner, powdered soap, beauty soap, cream soap, toothpaste, toothbrushes and toothbrush cases. | Class 2: chemical-resistant coatings, fire-resistant paints, varnishes, asbestos paints, water-based coatings, aluminum paints, enamels, anti-fouling paints and synthetic-resin coatings, among others. Class 3: nourishing cream, lavender perfume, liquid rouge, lipstick, massage gel, nail polish, hair oil, hair dye, bath oil, cosmetic sun lotion and skin milk, among others. |
[Similarity of the marks]
1. Appearance
The applied-for mark 
combines the coined element “ORGA” with “SOL”, which describes a chemical property of the goods. Earlier registered mark 1 
is also a coined mark without a particular meaning. Earlier registered mark 2 
combines “OLGA”, a coined term or common English-language female name, with its Korean transliteration. The marks differ in letter count and in whether Korean lettering is present, so their appearances differ.
combines the coined element “ORGA” with “SOL”, which describes a chemical property of the goods. Earlier registered mark 1 is also a coined mark without a particular meaning. Earlier registered mark 2 combines “OLGA”, a coined term or common English-language female name, with its Korean transliteration. The marks differ in letter count and in whether Korean lettering is present, so their appearances differ.2. Pronunciation
Applied-for mark 
“SOL” refers to a fluid colloidal dispersion and describes a chemical characteristic of the goods. The mark may therefore be separated into the distinctive “ORGA” and the weakly distinctive “SOL”. Consumers may shorten it to “ORGA”, pronounced in Korean as “oreuga” or “olga”, making its pronunciation identical to earlier mark 1. 
Compared with earlier registered mark 2, 
the Korean pronunciation is identical or very similar.
“SOL” refers to a fluid colloidal dispersion and describes a chemical characteristic of the goods. The mark may therefore be separated into the distinctive “ORGA” and the weakly distinctive “SOL”. Consumers may shorten it to “ORGA”, pronounced in Korean as “oreuga” or “olga”, making its pronunciation identical to earlier mark 1. Compared with earlier registered mark 2, the Korean pronunciation is identical or very similar.3. Concept
Conceptual similarity concerns whether the meanings of marks suggest a common source. Because “ORGASOL” combines the meaningless coined element “ORGA” with the descriptive “SOL” and has no definite overall concept, a conceptual comparison with the earlier marks is not possible.
[Designated goods]
The applied-for mark covers Class 2 paints and coatings and Class 3 cosmetics. These goods are identical or similar to earlier mark 1's paints and earlier mark 2's shampoo, soaps, conditioner, toothpaste, toothbrushes and toothbrush cases.
[Decisions]
Despite their different appearances, the marks have identical or very similar pronunciations when the applied-for mark is referred to by its dominant element “ORGA”. Their goods are also identical or similar. The court found a likelihood of confusion and held the marks similar.
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