2006 Hu 954 Judgment [Trademark refusal]
[Legal]
A foreign-language mark is generally pronounced as most Korean traders or ordinary consumers would naturally read it without particular difficulty. Specific circumstances, such as widespread actual recognition of one particular pronunciation, may be considered, but must be clearly established by evidence.
Category | Earlier registered mark | Applied-for mark |
Mark | Elecom | ELOCOM |
Designated Goods | Artificial Sweeteners, Organic Halogens, Vitamins, Amino Acids, Metabolic Drugs, Pharmaceuticals for the Central Nervous System, Pharmaceuticals for the Peripheral Nervous System, Glucose Injections, Medicinal Musks | Agricultural, livestock and fish-based weaning foods; lactose; infant formula; corticosteroid preparations; medical hormones; veterinary medicines; medicines for sensory organs; calomel; tonics; dog dewormers; fungicides for dry rot; oral contraceptives; gummed taffeta plasters; slug-control preparations; oral disinfectants and breath fresheners; anthelmintics; Goulard water; bronchodilators; antiparasitic preparations and carbolineum for that purpose; eyewashes; tobacco-free medicinal cigarettes; cod-liver oil; metabolic medicines; liniments; poisons; animal medicines; chilblain remedies; digitalin; narcotics; anesthetics; peripheral nervous system medicines; oils against horseflies; menthol; immunomodulators; mosquito coils; medicines for treating physical disorders; and other goods. |
[Judgment]
Articles 50–52 of the Pharmaceutical Affairs Act and Article 80 of its Enforcement Rules require the Korean Pharmacopoeia name, or otherwise the generic name, to be stated in Korean on medicine containers or packaging, while allowing Chinese characters or a foreign language of the same size alongside it. They do not require a fixed Korean transliteration of a foreign trademark on every designated good. Those provisions therefore do not prove that ELOCOM is always accompanied by “Erokom”. Nor does the practice of registering and using Korean and foreign-language marks together, the applicant’s separate Erokom registration and use on some products, or an affiliate’s earlier use of ELOCYN with Erosin establish that most Korean traders or consumers recognize the applied-for mark only by the particular pronunciation “Erokeom”.
Korean consumers could naturally pronounce ELOCOM as “Ellokom,” “Ellokeom,” “Erokom” or “Erokeom.” The first two pronunciations were similar to Elecom, creating a risk of source confusion on identical or similar goods.
[Decisions]
The marks were therefore considered similar.
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