2005 Heo 414 Trademark registration invalidation
Category | Mark | Designated Goods |
| Earlier registered Trademark 1 |  | Microprocessors: Class 9 (originally Class 39; reclassified on 7 June 2002). |
| Earlier registered trademark/service mark 2 |  | Computer hardware and other goods (Class 9); greeting cards and other goods (Class 16); providing information about computer technology via the internet and other services (Class 42). |
| The Earlier registered Trademark 3 |  | Electrical machinery, telecommunications apparatus, electronic equipment and electrical materials: former Class 39 under the classification before the amendment of February 23, 1998 by Ordinance No. 83. |
| Earlier registered Service Mark 3 |  | Class 35: catalog-based mail-order agency services offered online for computer hardware, software, networks, remote conferencing, and communications products and services. Class 41: online instruction through tutoring, lectures, advice, teaching methods, expert guidance and discussions concerning the purchase, use, protection, maintenance, upgrading, updating and configuration of those products and services. Class 42: providing multiple users with access to computer networks, among other services. |
| Earlier registered Trademark 4 |  | (a) 1997-10-14 / 1998-12-22 / No. 434755 / piggy banks and other goods (former Class 18) (b) 1997-10-14 / 1998-12-22 / No. 434756 / travel bags and other goods (former Class 25) (c) 1998-04-02 / 1999-02-10 / No. 441346 / teaching materials and teaching aids (Class 16) (d) 1997-10-14 / 1999-03-11 / No. 443872 / lapel pins and other goods (former Class 45) (e) 1997-10-14 / 1999-03-16 / No. 444391 / binders and other goods (former Class 22) (f) 1997-10-14 / 1999-04-16 / No. 446390 / umbrellas (former Class 27) (g) 1998-09-10 / 1999-04-16 / No. 446396 / key chains (Class 30) (h) 1998-09-10 / 1999-04-16 / No. 446399 / table clocks and other goods (Class 35) (i) 1998-09-10 / 1999-04-16 / No. 446402 / diamonds and other goods (Class 44) Item 10: 14 October 1997 / 12 July 1999 / Registration No. 450755 / fabric toys and other goods in former Class 43. |
| Earlier registered Trademark 5 |  | (a) 1995-07-26 / 1997-07-14 / No. 368688 / microprocessors and other goods (former Class 39) (b) 1995-07-26 / 1997-06-03 / No. 364023 / books about computer software and hardware (former Class 52) |
| Earlier registered Trademark 6 |  | Books, newspapers and other goods in former Class 52 |
| Earlier registered Trademark 7 |  | Computer operating system software and other goods in Class 9 |
| Earlier registered Trademark 8 |  | Computers, etc.(Product Category 9) |
| Earlier registered Service Mark 9 |  | Teaching services relating to computers and computer-related products (Class 41) |
| Comparison mark 10 |  | Semiconductors, microprocessors, integrated circuits (product classification 9) |
| Registered mark at issue |  | Class 7: dryers for seeds, plastics, vegetables, wood, leather, powdered products, flowers and food. Class 11: dehumidifiers; integrated environmental control systems for removing moisture; air dryers and compressed-air dryers; humidity and moisture controllers; chemical dryers; feed-drying apparatus; drying installations for chemical machinery; air conditioners and air-conditioning units; air-purifying apparatus and machines; air filters; air ionizers; air sterilizers; ionization apparatus for air treatment; air-cooling and air-drying apparatus; desiccant beds, rotors, fluted media and honeycomb structures. |
[Whether the marks are identical or similar]
1) Comparison with earlier registered mark 3
The registered mark is likely to be recognized either as the whole combination of lettering inside an oval or by “ECODRY” alone. Earlier registered mark 3 is likely to be recognized as an oval graphic or described as the Korean consonant ieung, an open oval border or an open oval. The marks therefore differ in appearance, pronunciation and concept.
2) Comparison with the remaining earlier trademarks and service marks
a) INSIDE is subordinate and non-distinctive for the registered goods, so the mark is perceived as a whole or by ECODRY.
When combined with “intel”, “inside” immediately suggests that an Intel chip is installed. It therefore lacks distinctiveness for goods and services related to computers, semiconductors and microprocessors. Even for unrelated goods and services, “intel” is a well-known business and product mark in Korea, while “inside” is perceived as supplementary wording. Korean language practice also tends to emphasize the first word in a compound expression. The earlier marks are consequently unlikely to be perceived separately by “inside” alone.
c) The registered mark as a whole or its dominant ECODRY element differs in appearance, pronunciation and concept from the earlier marks as a whole or their dominant elements: intel, intel pentium, Intel in Korean, intel xeon, journey and intel celeron.
d) The applicant argued that ECO derives from Ecology and DRY means drying, so ECODRY describes goods such as seed dryers, plastic dryers, environmental controls and air dryers. The court rejected this argument because ordinary Korean consumers or traders would not immediately understand Ecology in that way.
[Similarity of designated goods]
The goods and services do not coincide in form, purpose, producers, distribution channels or consumers. They are neither identical nor similar, and no economic connection between them was established.
[Decisions]
The registered mark is therefore neither identical nor similar to the earlier trademarks and service marks.
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