Open Decision Ledger · IP, data & telecommunications
When a part of a combination trade mark is the essential part
Supreme Court, Aug. 30, 2018, 2017Hu981 (judgment)
No holding summary · checked against points at issue. The official text publishes no summary of the holding for this decision. The quotation and factors in this record are copied verbatim from the points at issue; the evidence for each axis is taken from the points at issue, the order and the reasons.
Case name: 거절결정(상)
Official text on the National Law Information Center
Question
In judging the similarity of a combination trade mark made of two or more characters or figures, when does one of its constituent parts count as an essential part that must be compared on its own, and where no such part exists, how is similarity judged?
Holding
A constituent part is an essential part only where that part alone leaves an impression on ordinary consumers or enables them to remember or associate the mark, and so independently performs the function of indicating the source of goods; where such a part exists, similarity must be compared using it. Where the mark has no part of that kind, the two marks must be compared as wholes under the principle of whole-observation. Whether a constituent part is the essential part is decided by weighing whether it is well known or famous, whether it leaves a strong impression on ordinary consumers, and whether it holds a large share in the whole mark, together with its relative distinctiveness against the other parts, the state and degree of its combination with them, the designated goods and trade usage.
Points at issue, verbatim
선등록상표에서 ‘’ 부분만이 독립하여 상품의 출처표시기능을 수행한다고 볼 수 없으므로, 출원상표는 선등록상표의 구성 부분 전체와 대비할 때 그와 유사하다고 볼 수 없는데도, 이와 달리 본 원심판단에 법리오해 등의 잘못이 있다고 한 사례
Unofficial English translation
Since the ‘’ part of the prior registered mark cannot be regarded as independently performing the function of indicating the source of goods, the applied-for mark cannot be regarded as similar to the prior registered mark when compared against the entirety of the components of the prior registered mark, yet the court below, in reaching a contrary conclusion, was found to have erred by misapprehension of legal principles, etc.
Disposition
Reversed and remanded Stated in the decision
원심판결을 파기하고, 사건을 특허법원에 환송한다.
Unofficial English translation
The judgment of the court below is reversed, and the case is remanded to the Patent Court.
Form of the test
Elements stated Stated in the decision
결합상표 중에서 일반 수요자에게 그 상표에 관한 인상을 심어주거나 기억·연상을 하게 함으로써 그 부분만으로 독립하여 상품의 출처표시기능을 수행하는 부분, 즉 요부가 있는 경우 적절한 전체관찰의 결론을 유도하기 위해서는 그 요부를 가지고 상표의 유사 여부를 대비·판단하는 것이 필요하다. 그러나 상표 중에서 요부라고 할 만한 것이 없다면 전체관찰의 원칙에 따라 상표를 전체로서 대비하여 유사 여부를 판단하여야 한다.
Unofficial English translation
In the case of a composite trademark, where there is a part that, by making an impression on general consumers or prompting their recollection and association with respect to the trademark, performs the function of indicating the source of goods independently, i.e., an essential part, in order to arrive at an appropriate conclusion through overall observation, it is necessary to compare and determine the similarity of the trademarks by reference to that essential part. However, if there is no part of the trademark that can be said to be essential, similarity must be determined by comparing the trademarks in their entireties in accordance with the principle of overall observation.
Factors
- 둘 이상의 문자 또는 도형의 조합으로 이루어진 결합상표의 유사 여부를 판단하는 방법
- 상표의 구성 부분이 요부인지 판단하는 방법
- 선등록상표에서 ‘’ 부분만이 독립하여 상품의 출처표시기능을 수행한다고 볼 수 없으므로
- 출원상표는 선등록상표의 구성 부분 전체와 대비할 때 그와 유사하다고 볼 수 없는데도
Unofficial English translation
• Method for determining the similarity of a composite trademark consisting of a combination of two or more characters or figures
• Method for determining whether a component of a trademark is an essential part
• Since the ‘’ part of the prior registered mark cannot be regarded as independently performing the function of indicating the source of goods,
• the applied-for mark cannot be regarded as similar to the prior registered mark when compared against the entirety of the components of the prior registered mark, yet
Relation to precedent
Follows earlier decisions Stated in the decision
대법원 2017. 2. 9. 선고 2015후1690 판결(공2017상, 591)
Unofficial English translation
Supreme Court Decision 2015Hu1690 decided February 9, 2017 (Gong 2017 Sang, 591)
Decisions referred to
[1] 대법원 2017. 2. 9. 선고 2015후1690 판결(공2017상, 591), 대법원 2017. 3. 15. 선고 2016후2447 판결, 대법원 2017. 7. 11. 선고 2014후2535 판결, 대법원 2018. 3. 29. 선고 2017후2697 판결(공2018상, 841), 대법원 2018. 7. 24. 선고 2017후2208 판결(공2018하, 1798)
Burden of proof
Not addressed Not in the decision
Open question and revisit condition
How much evidence of a part being used as an abbreviation in trade usage is needed before that part alone may be treated as performing the function of indicating the source of goods?
A later Supreme Court decision on when a part of a combination trade mark is the essential part would call for this entry to be read again, as would an amendment to Article 7(1)(vii) of the former Trademark Act or to the current Article 34(1)(vii). Material in the file showing how the mark was written, abbreviated or called at the relevant time would also change the weighing of trade usage.
Cross-family AI independent reading & axis check
7 of 8 axes matched GPT-6 Astra (OpenAI, codex CLI) · 2026-10-25
A reader from another model family (GPT-6 Astra), given the official text but not the primary reading, agreed on 7 of the 8 axes; the readings differed on axis 4 (form of the test).
Axis 4 (Form of the test): Primary “Elements stated” vs Independent “Circumstances weighed”
The standard form differs: the primary reading sets out requirements for an essential part, while the independent reading describes comprehensive consideration of several criteria.
상표의 구성 부분이 요부인지 판단하는 방법Raw responses and comparison record: Protocol · Blind readings (JSONL) · Axis comparison (JSONL) · SHA-256 (JSON)
Lower-court contrast & scope of application
Lower-court reading vs. Supreme Court holding
Lower-court context: The Patent Court, in its judgment of 31 March 2017 (2016Heo9868), treated one part of the earlier registered mark as its essential part, separated it from the rest and compared it with the applied-for mark, and held the two marks similar. On that basis it found that the ground for refusing registration under Article 7(1)(vii) of the former Trademark Act, the Act before its wholesale amendment by Act No. 14033 of 29 February 2016, referring to the current Article 34(1)(vii), was made out.
Supreme Court standard: The Supreme Court held that where no part of a combination mark independently performs the source-indication function, the applied-for mark must be compared with the whole of the earlier registered mark's constituent parts. On the record, the part the court below took as essential was not recognised as an abbreviation of 'Memorandum Of Understanding' or the like, the other parts carried no particular connotation, and there did not appear to be any superiority in relative distinctiveness between the two parts. Trade usage at the time of filing showed the mark was often given in Hangul at online shopping malls and the like, with no material showing it was abbreviated or called by the characters of that part, so that part could not hold a larger share than the rest. The Court reversed the judgment below and remanded the case to the Patent Court, in the unanimous opinion of the participating Justices.
Distinguishing conditions
- A combination trade mark in which one part alone leaves an impression on ordinary consumers and independently indicates the source of goods, since that part is the essential part and is compared on its own.
- A mark that is not a combination of two or more characters or figures, since the rule the Court stated addresses combination marks.
- A case where trade usage shows the part is how the mark is abbreviated or called, and that part has the higher relative distinctiveness or the larger share in the whole mark.
Record verification notes
Set out which part the court below took to be the essential part and test it against each element the Court listed: recognition and impression on ordinary consumers, share in the whole mark, relative distinctiveness against the other parts, the state and degree of combination, the designated goods and trade usage. Then check the file for material on how the mark was written, abbreviated and called at the time of filing, since the Court relied on the absence of any such material. Note that the official text does not render the marks, so the mark images must be identified from the file, and that the case was decided on Article 7(1)(vii) of the former Trademark Act, with the current Article 34(1)(vii) only referred to.
From the official text
Points at issue
[1] 둘 이상의 문자 또는 도형의 조합으로 이루어진 결합상표의 유사 여부를 판단하는 방법 / 상표의 구성 부분이 요부인지 판단하는 방법 [2] 갑 외국회사의 ‘의류’ 등을 지정상품으로 하는 출원상표 “”의 등록출원에 대하여 특허청이 출원상표가 선등록상표 “”과의 관계에서 구 상표법 제7조 제1항 제7호에 해당한다고 보아 출원상표의 등록을 거절하는 결정을 한 사안에서, 선등록상표에서 ‘’ 부분만이 독립하여 상품의 출처표시기능을 수행한다고 볼 수 없으므로, 출원상표는 선등록상표의 구성 부분 전체와 대비할 때 그와 유사하다고 볼 수 없는데도, 이와 달리 본 원심판단에 법리오해 등의 잘못이 있다고 한 사례
Unofficial English translation
[1] Method for determining the similarity of a composite trademark consisting of a combination of two or more characters or figures / Method for determining whether a component of a trademark is an essential part [2] A case where, in the matter of an application for registration of the applied-for mark "" designating "clothing," etc. as designated goods filed by a foreign company A, the Korean Intellectual Property Office rendered a decision refusing registration of the applied-for mark on the ground that, in relation to the prior registered mark "", the applied-for mark falls under Article 7(1) 7 of the former Trademark Act, where, since the ‘’ part of the prior registered mark cannot be regarded as independently performing the function of indicating the source of goods, the applied-for mark cannot be regarded as similar to the prior registered mark when compared against the entirety of the components of the prior registered mark, yet the court below, in reaching a contrary conclusion, was found to have erred by misapprehension of legal principles, etc.
Summary of the holding
The official text publishes no summary of the holding for this decision. The quotation and factors in this record are copied verbatim from the points at issue; the evidence for each axis is taken from the points at issue, the order and the reasons.
Order
원심판결을 파기하고, 사건을 특허법원에 환송한다.
Unofficial English translation
The judgment of the court below is reversed, and the case is remanded to the Patent Court.
Provisions referred to
[1] 구 상표법(2016. 2. 29. 법률 제14033호로 전부 개정되기 전의 것) 제7조 제1항 제7호(현행 제34조 제1항 제7호 참조) [2] 구 상표법(2016. 2. 29. 법률 제14033호로 전부 개정되기 전의 것) 제7조 제1항 제7호(현행 제34조 제1항 제7호 참조)
Read 2026-10-25 · Cross-read 2026-10-25. All quotes matched against the official text. The Chinese-character placeholders the court used for anonymised parties are given in their Korean readings, and parenthetical Chinese-character glosses are omitted.
Every entry is published only after all quotes have been matched character by character against the official text, and audited by an independent second reading from a different model family across all eight axes. Both agreed axes and text-grounded interpretive divergences are recorded openly. The ledger is a research record, not an assessment of the court or advice on any matter.
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