Lee International

In its recent decision (Supreme Court Case No. 2024Do8174), the Court clarified the standards for determining trademark similarity by: (i) reaffirming the criteria for applying the “principle of overall observation” and “dominant element analysis” in assessing composite marks; (ii) recognizing that multiple dominant elements may coexist where each component possesses distinctiveness; and (iii) elaborating the criteria for identifying dominant elements by taking into account consumers’ actual perception and the market conditions. 

In this case, The Able Lab Co., Ltd., a cosmetics manufacturer and distributor, and its representative were accused of trademark infringement for advertising lipsticks bearing the mark “누디즘 홀릭 매트 립스틱” (Korean transliteration of “Nudism Holic Matte Lipstick”), which was allegedly similar to Clio Co., Ltd.’s registered trademark “” (KR TM Reg. No. 40-1408607; hereinafter, the “Registered Mark”), under the indication of “CATALIC Narcisse Nudism Holic Matte Lipstick” (the “Subject Mark”) through open-market platforms between February and March 2020.

The lower court identified “CATALIC” as the dominant element of the Subject Mark and, upon comparison with the Registered Mark, concluded that the marks were neither identical nor similar, thereby acquitting the defendants of trademark infringement.  However, the Supreme Court held that not only “CATALIC,” but also “Nudism” and “Narcisse,” each constituted independently distinctive dominant elements.  In particular, the Court found that “Nudism,” as used in the Subject Mark, is distinguished from the term “nude,” is not a commonly used word, and does not directly suggest the quality, function, or purpose of color cosmetics such as lipsticks.  Accordingly, it was deemed to possess distinctiveness in relation to the goods at issue.

Furthermore, the Supreme Court noted that the Subject Mark was presented in four separate lines—“Narcisse,” “Nudism Holic,” “Matte Lipstick,” and “CATALIC”—and held that the mere use of uppercase letters for “CATALIC” was insufficient to conclude that this element alone would leave a strong impression on consumers.  On this basis, the Court determined that “Nudism,” as one of the dominant elements of the Subject Mark, is similar to the Registered Mark in terms of appearance and pronunciation.  Accordingly, the Court found that the lower court had misapplied the legal principles governing trademark infringement, and remanded the case.

While the lower court, consistent with prior precedents, emphasized the leading portion of the composite mark as leaving the strong impression on consumers and concluded that the marks at issue were dissimilar, this Supreme Court decision is noteworthy in that it recognized similarity based on components other than the leading element.  In particular, the Court considered the actual manner in which the mark was used and whether consumers would perceive specific components as source identifiers in light of market conditions.

This decision is expected to provide a basis for taking legal action against marks that incorporate the word elements of a registered trademark, either identical or with slight modifications, together with additional elements placed before or after such word terms.  Accordingly, trademark owners may consider more proactive strategies, such as filing oppositions at the examination stage to prevent the registration of similar composite marks and pursuing enforcement actions against infringing marks, thereby ensuring more effective protection of their trademarks.