Trademark Similarity Case: IBK

2009 Heo 504 Trademark registration invalidation

The registered mark consists of English letters. The earlier service mark combines the Korean company name with “IBK Capital Corporation” in two lines. These elements can be observed separately without creating an unnatural commercial impression. “Capital” and “Corporation” have little or no distinctiveness for the financial services, so the earlier mark may be perceived and pronounced as “IBK” alone. In that form, its pronunciation is identical to the registered mark, and the marks are similar overall.

The registered service mark covers business and organizational consulting, personnel-management consulting, employment and staff placement, professional business consulting, business-management assistance, business information and data services, job-information and recruitment services, temporary staffing, personnel consulting, data processing, advertising planning and agency services, distribution of advertising materials, advertising brokerage, corporate publicity, advertising design, marketing and marketing research. The earlier mark covers development and international finance, investment arrangement, guarantees, new-technology business finance, lending, capital investment, mortgage finance, bond purchasing and collection, investment finance, factoring and installment financing. The former services concern business management and personnel, whereas the latter are financial services. They differ in business scope and in providers: the financial services are subject to qualifications, conditions and financial supervision not applicable in the same way to the other services. The court found no likelihood of confusion as to the business provider and held that the designated services were not identical or similar.

Although the marks themselves are similar, their designated services are not. The court therefore found no conflicting similarity between the service marks for those services.