2003 Heo 4337 Judgment [Trademark registration invalidation]
[Legal]
Similarity is assessed as a whole, objectively and at separate times, considering appearance, pronunciation, concept and source confusion. A composite mark may be identified by a separable component where doing so is natural in trade.
Cited mark 1 | Cited mark 2 | Registered trademark |
Wise Brown | WISER | TIMEWISE |
[Judgment]
1. Whether TIMEWISE can be separated
TIMEWISE combines the familiar words TIME and WISE. Both are relatively weak, and the eight letters appear continuously in capitals without a space. Separating the mark into TIME and WISE would be unnatural in trade, so it should be assessed as a whole.
2. Comparison with cited mark 1, Wise Brown
1) Appearance
Both trademarks are written in English and contain the word “wise” in common, but since the first letter that appears to be noticed is markedly different and the number of letters is different, and the case registered trademarks are all capitalized without being marked, the cited trademark 1 is between “Wise” and “Brown”, and the whole trade is not similar, as both uppercase and lowercase letters are mixed.
2 Pronunciation
TIMEWISE would be pronounced as a whole. Wise Brown could be pronounced as a whole or by Wise or Brown separately. The syllable counts and overall sounds differ.
3) Concept
Compared to the case registered trademark with no special concept, the cited trademark 1 has the concept of “smart brown”, so it would be difficult to compare the concept of both.
④ TIMEWISE and Wise Brown differ in appearance and pronunciation, and their concepts do not provide a basis for similarity. They are dissimilar overall.
3. Comparison with cited mark 2, WISER
1) Appearance
This case registered trademark and the cited trademark 2 are both identical in that they are in English capital letters and contain “wise”, but the overall appearance will be different, since the first letters are different and the first letters are also different.
2 Pronunciation
TIMEWISE and WISER have different syllable counts and overall pronunciations.
3) Concept
TIMEWISE is a coined combination without a specific established concept, while WISER means more wise. The concepts do not support a finding of similarity.
④ TIMEWISE and WISER are therefore dissimilar overall.
4. Conclusion
TIMEWISE was dissimilar to the earlier-filed cited marks and did not fall within the bar under former Article 8(1) of the Trademark Act.
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