On March 29, 2018, the Supreme Court held that in determining similarity between the following marks, the figure parts each representing the profile of a dog should not be considered as the main part exhibiting their own distinctiveness, but should be compared as a whole.  Accordingly, the Supreme Court reversed the Patent Court of Korea’s original judgment in which each figure part was considered as the main part and the marks were thus found to be similar.

However, recently, the Patent Court of Korea held that the above holding of the Supreme Court does not “deny the distinctiveness of the figure parts,” but simply corresponds to a limited interpretation that “in determining similarity between the two marks, comparing the figure part of the mark representing the dog separately is inappropriate, and the marks should be observed as a whole.”

Even though the Patent Court of Korea determined that the figure part representing the dog is not considered as the main part in the above ruling of the Supreme Court, the registered mark with the composition shown below was previously found not to be a widely used figure, and the parts of the figure representing the dog were found to each be creatively designed and distinctively expressed, so that the overall appearance would attract consumers.  The mark was considered to have distinctiveness in view of the appearance, and no grounds for finding the trademark not to have distinctiveness for a specific producer’s goods or in terms of socially accepted idea, or for finding it inappropriate in view of the public interest to grant an exclusive trademark right for it to a specific person were presented (Patent Court of Korea Decision No. 2018 Heo 9466 rendered on August 29, 2019).

In the above decision of the Patent Court of Korea, the basic legal principle that when an overall constitution of a device mark includes creative elements, it should be considered to have distinctiveness was reconfirmed.  Also, a new legal principle that “in determining similarity between marks, whether observation as a whole would cause confusion should be determined in principle, and the issue of whether a figure part can be observed as the main part or not should not be equated with the issue of whether a figure part has distinctiveness” seems to have been established.