2005 Heo 8159 Trademark registration invalidation
[Legal]
- Trademark similarity is assessed as a whole, objectively and at separate times, considering appearance, pronunciation, concept and the likelihood of source confusion. Naturally separable dominant elements may be considered.
- Goods and services are compared by their relationship, providers, purposes, sales locations and consumers, and whether use of similar marks could create an assumption of common source.
[Service mark at issue]
vs
Mark | Designated Goods | |
Earlier registered Trademark 1 |  | Class 14: diamonds, coral, crystals, sapphires, imitation gemstones, tiger's-eye stones, gold, silver and platinum articles, and aluminum gold |
The Earlier registered Trademark 2 |  | Class 14: diamonds, coral, crystals, sapphires, imitation gemstones, tiger's-eye stones, gold, silver and platinum articles, and aluminum gold |
The Earlier registered Trademark 3 |  | Former Class 44 before the February 23, 1998 amendment: diamonds, coral, crystals, sapphires, imitation gemstones, tiger's-eye stones, gold, silver and platinum articles, and aluminum gold |
Earlier registered Trademark 4 |  | Former Class 44: pearls, rubies, imitation gemstones, emeralds, jade, star sapphires, gold-alloy plating, silver-alloy bullion, platinum-alloy bullion and platinum foil |
Earlier registered Trademark 5 |  | Former Class 44: diamonds, pearls, crystals, emeralds, sapphires, imitation gemstones, gold articles, gold plating, silver articles and platinum articles |
Earlier registered Trademark 6 |  | Former Class 44: diamonds, pearls, crystals, emeralds, sapphires, imitation gemstones, gold articles, gold plating, silver articles and platinum articles |
[Similarity of the marks]
The service mark at issue:
combines three gem-shaped graphics with SAMSUNG, GEMOLOGICAL LABORATORY and SGL on three lines. These elements are separable. GEMOLOGICAL LABORATORY is descriptive of the appraisal services, allowing identification by SAMSUNG or SGL. When identified by SAMSUNG, the mark shares the earlier marks' pronunciation and concept and is similar overall.
combines three gem-shaped graphics with SAMSUNG, GEMOLOGICAL LABORATORY and SGL on three lines. These elements are separable. GEMOLOGICAL LABORATORY is descriptive of the appraisal services, allowing identification by SAMSUNG or SGL. When identified by SAMSUNG, the mark shares the earlier marks' pronunciation and concept and is similar overall.[Similarity of goods and services]
Gem grading evaluates the quality of gemstones. Appraisal and jewelry sales commonly share businesses, premises and consumers, creating a close relationship between the services and the goods.
[Decisions]
The marks and their respective goods and services were similar. The service registration therefore fell under former Article 7(1)(7) and was subject to invalidation under Article 71(1)(1) of the Trademark Act.
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