Lee International

The recent decision by the IP High Court, in which Lee International successfully represented a client, marks a significant departure from past precedent set by KIPO and the IPTAB.  In IP High Court Decision No. 2023 heo 11425 issued on December 6, 2023, the court ruled that, despite sharing a common element, two trademarks are dissimilar when considering their overall impressions, including actual usage in trade channels.  

In the past, combined marks with multiple words or device elements are often dissected into individual elements to be perceived by its major element, unless the mark is considered inseparable. Consequently, KIPO and the IPTAB have typically regarded marks sharing one or more element as similar. However, in this case, the IP High Court determined that when there is no basis to recognize one element to be a major element, the marks must be compared in their entirety.

[Summary of case and Patent Court’s ruling]

The applied-for mark “” (”Subject Mark”) was finally refused for being similar to the three prior-registered marks, namely, “” (“Cited Mark 1”), “” (“Cited Mark 2”) and “” (“Cited Mark 3”) due to the shared element “REIGN.”  Although the applicant appealed the final refusal with the IPTAB, the appeal was dismissed based on the same ground.  The applicant further appealed the IPTAB decision with the Patent Court, and succeeded on overturning the IPTAB decision on the basis that despite sharing a common element, the marks were dissimilar when considered in their entirety, based on the following:  

I ) If there is no basis that any element of a mark can be deemed as a major element, the mark should be compared in its entirety.

II ) It cannot be concluded that the word element “REIGN” of Cited Mark 2 “” is dominant.  It is found that the word element “ATLANTA REIGN” in its entirety of Cited Mark 2 “” has been used as the name of an e-sport team and that Cited Mark 2 in its entirety has been used on or in connection with the goods.  As such, there is no basis to consider the word element “REIGN” as a major element of Cited Mark 2 in trade channels.  

III ) While “ATLANTA” of Cited Mark 1 “” is a widely recognized geographical term, given its usage as the name of an e-sport team in trade channels, it can be concluded that the combination of ‘ATLANTA’ and ‘REIGN’ would create a new meaning independent of the original geographical association.

IV ) Evidence relating to Cited Mark 3 “” suggests that it had been consistently associated with computer game software.  Therefore, it is reasonable to conclude that Cited Mark 3 would be perceived in its entirety by general consumers within trade channels.

V ) Considering the above, the Subject Mark should be compared to Cited Marks 1-3 in their entirety.  Upon comparison, they are dissimilar in their overall appearances, pronunciations, and meanings.

[Significance of Patent Court’s ruling]

This ruling, which mandates the comparison of combined trademarks in their entirety when no major element can be identified, is expected to prompt a shift in the judgement standards of KIPO and the IPTAB.  Specifically, this change entails a departure from mechanically separating compared marks and instead emphasizing actual confusion in trade channels arising from the use of the combined trademarks.