South Korea: More emphasis on visual comparison in trademark similarity

Managing IP is part of Legal Benchmarking Limited, 1-2 Paris Gardens, London, SE1 8ND

Copyright © Legal Benchmarking Limited and its affiliated companies 2025

Accessibility | Terms of Use | Privacy Policy | Modern Slavery Statement

South Korea: More emphasis on visual comparison in trademark similarity

Sponsored by

hanolip-400px.png
edge2edge-media-uklneqrwaxy-unsplash.jpg

Min Son of Hanol IP & Law looks at the changing trend of how courts are determining the similarity of trademarks in South Korea

Reflecting the changes in the current market situation, it is noteworthy that Korean courts’ recent cases considered visual appearance more important than sound in determining the similarity of trademarks. 

Jurisprudence in determining similarity of trademarks

When determining the similarity of marks, similarly to in other jurisdictions, Korean courts as well as the Korean Intellectual Property Office (KIPO) compare the marks in their entirety, including appearance, sound, and connotation factors. 

Even if the marks share any identical factors, but there is no likelihood of confusion as to the source of goods for the marks, the marks would not be considered as confusingly similar to each other. Conversely, even if there are different factors, if the sound or appearance is similar, and thus, there exists likelihood of confusion, the marks compared should be considered as similar trademarks. In determining the likelihood of confusion due to the similarity of the marks, trading circumstances regarding the goods shall be considered. 

Sound - once the most important factor

Previously, Korean courts had ruled that ‘sound’ is the most important factor in determining the similarity of the marks considering the trading circumstances to advertise trademarks and purchase the goods through voice media such as broadcasting or telephone (Supreme Court Decisions 97Hu3050, February 25 2000, 96Hu344, September 6 1996). 

This jurisprudence continued until recently, and the hurdles in registration were quite high for trademarks with identical or similar sounds, even when they had dissimilar factors in appearance or connotation. 

As examples, Korean courts ruled that the trademarks for ‘Asrock’ and ‘Slock’, ‘Alex Cosmetic & device’ and ‘RX-1’ in Korean transliteration, ‘Cartok’ and ‘Katalk’, ‘The Ocean’ and ‘Diocian’ are similar to one another due to the similarity in sound (Supreme Court Decision 2006Hu626, June 2 2006, Patent Court Decisions 2008Heo3391, June 27 2008, 2017Heo5009, February 6 2018, 2019Heo4468, December 12 2019). 

Similarity test using Korean pronunciation

With regard to trademarks in foreign words other than Korean, the marks were compared with their phonetic equivalent in Korean. In Korean, ‘B’ and ‘V’ are written using the same Korean letter, even though the actual sounds thereof are slightly different. Likewise, the pairs ‘(soft) C’ and ‘S’, ‘F’ and ‘P’, and initial ‘L’ and ‘R’ are often respectively written using the same Korean letters. 

Therefore, in theory, ‘boys’ and ‘voice’ that have the same or nearly identical pronunciation in Korean, can be regarded as similar trademarks according to Korean practice. In fact, the trademark ‘Pilar’ (No.1527556), filed by a US company for clothing and footwear, was actually rejected in Korea on the basis of similarity with the prior marks ‘Fila’ and ‘Fila in Korean’. In that case, both ‘Pilar’ and ‘Fila’ can be transliterated identically in Korean. The fact that the two marks have clearly dissimilar concepts was not reflected in the examination results. 

Recent changes in similarity criteria

Recently, the Korean Supreme Court overturned the original decisions made by the Patent Court and the Intellectual Property Tribunal and Appeal Board (IPTAB) of KIPO, and remanded the case to the lower court. In that case, Supreme Court ruled that the trademark ‘Urbansys’ is dissimilar to ‘AVANCIS’, notwithstanding the identical Korean pronunciations of the marks, in view of dissimilar appearances and meanings thereof (Supreme Court Decision 2020Hu10957, December 30 2020).

In the Supreme Court judgment commentary, the judicial researcher commented that jurisprudence that was valid at some point in the past may become far removed from reality, necessitating caution when citing past jurisprudence. Thus, rapid changes in market circumstances shall be reflected in the determination of similarity of the marks. 

These days, compared to when Supreme Court decision 97Hu3050 is issued, there has been a significant increase in the importance of visual advertisements and methods of transaction such as online stores, social media, and YouTube, where these are accompanied by video or images, and thus, it is necessary to take into account the importance of ‘visual factors’ in determining of the similarity of the marks. 

Accordingly, although the importance of phonetic factors in word marks cannot be denied, these may not be absolute criteria. Rather, a similarity test should be made carefully taking all factors into account in view of the general consumers’ perception, so that a reasonable decision can be made for the specific case. In particular, for marks using non-Korean words, in addition to simply comparing the transliterated sounds of the marks as in Korean word marks, the improvement in foreign language skills of the Korean consumers as part of a recently globalised society shall also be considered. 

Three noteworthy cases giving more weight to visual appearance

As shown above, in the 2020Hu10957 decision, the trademarks ‘Urbansys’ and ‘AVANCIS’, which are pronounced the same in Korean, were judged to be dissimilar in consideration of differences in appearance and concept.

After the Supreme Court’s 2020Hu10957 decision, the Patent Court subsequently held that the trademarks for ‘Fowi & device’ and ‘Poi Designs’ and those for ‘Kaloom’ and ‘Caroom & device’ are dissimilar to each other (Patent Court Decisions 2020Heo4297, May 13 2021, 2021Heo2267, July 2 2021). 

In the above cases, the Patent Court assigned more importance to visual appearance than to the identical sounds of the marks thereof, in consideration of the recent sales and purchasing channels through visual media, such as smartphones and tablets, given the widespread internet penetration. 

The above cases maintain the basic jurisprudence in determination of the similar marks, but clearly show the recent trend toward considering the visual appearance in view of realistic consumer perceptions. 

In accordance with the development of similarity criteria in recent cases, it is expected that more reasonable and rational decisions will be made in determination of the similarity of the marks, reflecting specific market circumstances. Accordingly, it is also expected that more trademark applications may be saved from rejection on the basis of similarity of the marks. 

Trademarks found to be dissimilar

 

table

Trademarks found to be similar

 

hanol3

 

 

Min Son, PhD

Managing partner, Hanol IP & Law

E: minson@hanollawip.com

 

more from across site and SHARED ros bottom lb

More from across our site

Tim Gilman, who joined Kasowitz alongside three other partners, says he is excited to be part of the firm’s ‘elite’ litigation team
A backlash against a White House video promoting deportation and Casalonga opening a new office in Düsseldorf were also among the top talking points
The firm has brought on board two counsel and an associate to complement two previously revealed partner hires
Bradford Newman, who has joined the firm’s new Silicon Valley office as head of complex technology disputes, discusses plans to build the practice group and attract local talent
Managing IP summarises the highlights from the IP STARS rankings for copyright and IP transactions work, the final firm rankings release of the year
Developments included the first judgment from the Nordic Baltic division, an injunction covering the UK, and a new code of conduct
Alston & Bird acted for InterDigital, while Samsung was represented by Fish & Richardson, during the arbitration process
Powell Gilbert lawyers reveal how they navigated parallel EPO proceedings and collaborated with European peers to come out on top in the Nordic-Baltic Division’s first judgment
The firms posted increases in revenue and profit per equity partner, with both giving a nod to their IP expertise
EasyGroup, the owner of the easyJet airline, said in a press release that UK-based first-instance judges are “less experienced”, bringing a long-running debate back to the fore
Gift this article