Should Korean Words in Trademarks Be Considered As Graphical Elements?

283463Amorepacific Corporation submitted Israel Trademark Application No. 283463 (stylized) on the basis of an International Trademark Application submitted under the Madrid Protocol on 30 November 2015. The mark is shown alongside.

The mark was submitted for a very wide range of goods including Milk sugar for pharmaceutical purposes; lacteal flour for babies; mineral food supplements; vitamin preparations; capsules for medicines; pharmaceutical preparations for skin care; pharmaceutical preparations for treating and preventing skin and nail diseases; pharmaceutical preparations for health care; pharmaceutical preparations for skin protection for animals; pharmaceutical products for skin care for animals; pharmaceutical preparations for treating halitosis; veterinary preparations for treatment of intestinal bacteria; dietetic food and substances for medical or veterinary purposes; nutritional supplements; calcium supplements; microorganisms for medical purposes; first-aid boxes, filled; bracelets for medical purposes; menstruation bandages; breast-nursing pads; adhesive plasters for medical purposes; material for stopping teeth; babies’ napkins, diapers; medicated diapers; mothproof paper; food for babies; herbal tea for medicinal purposes in class 5, Food products made primarily from fruits; health functional foods based on fruit extracts; processed ginseng (for use as vegetables); health functional foods based on ginseng extracts; processed vegetable products; health functional foods based on vegetable extracts; health functional foods based on red ginseng extracts; health functional foods based on camellia extracts; bean processed foodstuffs, excluding bean curds (tofu) and their processed foodstuffs; health functional foods based on beans extracts; processed egg foodstuffs; processed meat products; processed dairy products; health functional foods based on milk extracts; food products made from oil and fat; health functional foods based on camellia seed oil; health supplement food based on seaweed; health functional foods based on seaweed extracts; health functional foods based on fish and shellfish extracts in class 29, Health functional foods based on cereals; processed cereals; malt for human consumption; confectionery; sugar for food; food flavorings, other than essential oils; ginseng tea; tea; red ginseng tea; tea substitutes; black tea, English tea; green tea; lime tea; iced tea; tea leaves; health functional foods based on green tea; processed coffee; tea-based beverages; milk tea; red ginseng concentrates; red ginseng powders; red ginseng jelly in class 30, and Soda water; non-alcoholic cinnamon punch with dried persimmon (Sujeonggwa); preparations for beverages; syrups for beverages; powders for effervescing beverages; ginseng powders for beverages; red ginseng powders for beverages; fruit powders for beverages; fruit extracts for beverages; fruit syrups for beverages; red ginseng extracts for beverages; ginseng extracts for beverages; non-alcoholic fruit extracts; pastilles for effervescing beverages; beverages made from processed vegetables or fruits; waters, beverages; aerated water; fruit beverages; non-alcoholic beverages in class 32.

The Korean mark includes a Korean symbol pronounced Sul-Wa and a second symbol pronounced Su, and a transliteration  Sulwhasoo into English.

231476

In an Office Action dated 21 June 2017, an Examiner noted that the pending mark was confusingly similar to registered trademark no. 231476 in class 32, for beers which is shown alongside. This mark is the Sul-Wa symbol included in the pending mark.

The Examiner informed the Applicant that a condition for the mark to be registered would be to write to the owner of registered trademark no. 251677. In a response sent on 26 July 2018, the Applicant denied any similarity to the 231476 mark, and authorized sending a notification to the owner of the 251677 mark.

In a second Office Action from 18 October 2018, the Examiner wrote that despite the Applicant’s contentions, she still maintained that there was a confusing similarity. On 14 February 2018, the Applicant requested a hearing and on 6 June 2018, a hearing was held before the IP Adjudicator Ms Yaara Shoshani Caspi and the Applicant submitted their summation on 27 June 2018.

Applicant’s Claims

In an Office Action dated 21 June 2017, an Examiner noted that the pending mark was confusingly similar to registered trademark no. 231476 in class 32, for beers which is shown alongside. This mark is the Sul-Wa symbol included in the pending mark.

The Examiner informed the Applicant that a condition for the mark to be registered would be to write to the owner of registered trademark no. 251677. In a response sent on 26 July 2018, the Applicant denied any similarity to the 231476 mark, and authorized sending a notification to the owner of the 251677 mark.

In a second Office Action from 18 October 2018, the Examiner wrote that despite the Applicant’s contentions, she still maintained that there was a confusing similarity. On 14 February 2018, the Applicant requested a hearing and on 6 June 2018, a hearing was held before the IP Adjudicator Ms Yaara Shoshani Caspi and the Applicant submitted their summation on 27 June 2018.

RULING

Firstly, it is noted that registration gives a unique right of usage to the mark owners, which prevents others from using the mark. The removal of a mark from the public domain and its exclusive usage by the owner gives the public certainty regarding the source of goods which can be searched for and identified by the mark. Thus trademark registration serves two purposes. Firstly, it enables the mark owner to protect his reputation against competitors’ products, and secondly, enables the public to identify the source of goods and to avoid confusion regarding the supplier.  These are the two main purposes that underpin trademark registration.  There are competing interests such as freedom of occupation and freedom of speech. The Trademark Ordinance balances between these purposes. (See Appeal 3559/02 The Toto Zahav Club vs. The Authority for Regulating Sports Gambling, pp.d. 49(1) 8732004. When giving a ruling in this matter, the interests of the Applicant and that of the public are considered.

In this instance, one has to consider Section 11(9) of the Ordinance which states that:

  1. The following marks are not eligible for registration: ….
    (9) a mark identical with one belonging to a different proprietor which is already on the register in respect of the same goods or description of goods, or so nearly resembling such a mark as to be calculated to deceive;

Consequently an applied-for mark will be rejected and will not be registered if it is identical to a registered mark or if it is confusingly similar, so long as the marks are in the same category in the sense of the Law.

When considering the similarity between marks, if it is considered that a registered mark and a pending mark share the same dominant features, the pending mark will be rejected. Section 11(9) establishes a rebuttable assumption that such a common dominant feature creates a likelihood of confusion.

Where we are dealing with identical marks used for the same or similar types of goods, there is a prima facie assumption that the public may be misled. This is the case considered by Section 11(9) of the Ordinance which prevents identical marks being registered. Essentially Section 11(9) includes the assumption that registering the applied-for mark that is identical to that registered, has a danger of misleading the public. In evidence of this, when Section 11(9) was legislated, the legislator did not require examination of misleading, but merely of similarity between an applied for mark and a registered one. (see Decision concerning 163798 and 163799,oppositions to 166319, Applications 169048-53, 170889, 180345, 193259-67, 197036-8, 199980-3, Shefa Franchise vs. Aroma Holdings ltd, 25 February 2013).

As to the confusing similarity between the marks, this is determined by application of the triple test (see Appeal 5454/02 Teva Taam(1988) Tivoli vs. Ambrosia Superb ltd 4 February 2003, pages 451-453 and Appeal 1427/05 MB Glatt Off Mehadrin ltd vs,. Ministry of Patents from 25 June 2007. It is a general rule that similarity between marks is performed by consideration of the marks in their entirety whilst considering the dominant elements and the imperfect recall of the public.

From the General to the Particular

The Adjudicator rejects the Applicant’s assertion that the issued and the Applied-for mark relate to goods of different types. The Applied-for mark is for goods in classes 5, 29, 30 and 32 and a long list of foods that are found in corner shops and supermarkets is specified. The criteria in the case-law establishes that the goods covered by the registered mark in class 32 are commercially similar to the goods covered by the applied mark and are considered “within the same boundary” in the sense of the Law. See Opposition to Registration of 259179 and 259178 Laboratoire HRA Pharma vs. Dr Shapira Eyal ltd., from 28 December 2017.

Having established that the type of goods and distribution channels are similar, the remaining question is whether the marks are similar or identical. Both the registered and the pending mark include the “Sulwha” element in Korean which means flower and snow. In the opinion of the Adjudicator, this is the dominant element of both marks. The fact that the mark is transliterated into English as Sulwha and includes the additional syllable Soo emphasizes that the applied-for mark includes Sulwha and is thus similar.  Consequently Section 11(9) is relevant and the Applicant has not succeeded in destroying the prima facie similarity, despite the various claims raised.

big-deal-store

This conclusion reflects the purpose of the Trademark Laws which is to provide a monopoly to the registered mark owner for his mark.  Were the Adjudicator to come to a different conclusion, applicants registering marks in foreign languages would be discriminated against since no one argues that registration of a mark in Hebrew may prevent registration of a mark having a similar element. See for example, Appeal 6860=01-17 H.A.B. trading ltd vs. Yediot Internet, 30 October 2017 where the court ruled that YNET BIG DEAL could not be registered since BIG DEAL has already been registered.

Note: even where the marks considered as not identical but merely similar, this would not help the Applicant as explained below.

The Sight and Sound Test

The sight and sound of the mark is the main test (see re Ambrosia page 451). As to the sight of the mark, the Applied-for mark includes the registered mark in its entirety. However, the Applicant claims that the relevant consumer group is the Israeli population as a whole which is not familiar with Korean, and so the mark is transparent and non-confusing. As already explained in the hearing, the Adjudicator is unwilling to accept this claim.

Let’s assume, for the sake of argument, that the Korean word is simply a graphic element; it is undeniable that the applied-for mark includes the registered graphic element.  It may well be that most Israeli consumers will view the Korean writing in this manner. Once there is a transliteration into English letters, the consumer will know how the mark is to be read.  The consumer will connect the wording in English with the graphic element and on seeing the graphic element alone will still be confused.

On the other hand, if we relate to the element in Korean as being a word having a meaning, there is still a likelihood of confusion. Since for the minority of Korean- reading Israelis, the two marks are practically identical, with the only difference being the suffix Su, and so the marks are still confusingly similar.

In addition, the only difference between the Applied-for mark and the registered mark is the element Soo which is simply laudatory and thus cannot make the applied-for mark be considered distinctive.

The Type of Goods and Clients

Both the registered and the pending mark under examination cover goods in class 32 – non-alcoholic beverages. As stated above, the list of goods in classes 5, 29, 30 and 32 are all foodstuffs and are all considered as being the same general type of goods which are not far from each other. The amendment suggested by the Applicant does not change this conclusion. The consumer group is identical, since these are consumables sold in the same shops and supermarkets. The Adjudicator also rejects the alleged but unsubstantiated difference that they are not sold on the same shelf.

Other Considerations

The argument that the Trademark Registry includes loads of marks in Oriental languages does nothing to reduce the similarity of the two marks [As one of the partners of the law firm handling the case – Soroker Agmon – is a Chinese speaker, I am surprised they make this rather odd argument – MF]. Registered marks are examined properly and there is a rebuttable assumption that they are not confusingly similar to previously registered marks. Even if this were not the case, this assertion is not a reasonable basis to register marks contrary to the Ordinance.

The Applicant has not shown that this Korean word has become so common that it is like an English word such as Broadway and is essentially generic.  He hasn’t clearly made such a claim and certainly has not proven it.

The Applicant’s request to amend the registration is strange, as they have not requested a specific amendment. The Trademark Office does not generally provide provisional pre-rulings, although this is a possibility that could be allowed with appropriate legislation. The Applicant requested a hearing which was granted. The Adjudicator can, therefore now give a final ruling.

Pending Israel Trademark No. 283463 is identical to that registered, or at least confusingly similar for goods in the same class, and therefore cannot be registered.

Ruling re Registerability of Application 283463 by Ms Shoshani Caspi, 29 July 2018

COMMENT

I suspect that any 2 by 2 array of Korean symbols is apparently similar to the average Israeli, regardless of pronunciation, which is not something that any significant number of Israelis would know.

The not-on-same-shelf argument, is, of course, spurious. Different foodstuffs are found on different shelves, but customers can assume a common supplier and quality for different foods bearing the same logo.



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