Decision in ATELIER Case departs from established precedents

South Korea
The Korean Supreme Court has affirmed a decision of the Patent Court in which the latter had held that the trademark ATELIER (for which registration was sought) was not confusingly similar to the registered trademark SHU UEMURA ATELIER MADE (June 26 2008).
The Patent Court held that the word 'atelier' in the SHU UEMURA ATELIER MADE mark meant "an artist's studio or workshop". Therefore, the court held that the average consumer might perceive the mark as referring to the place where the designated goods (eg, perfume and soap) are manufactured. 
Further, the court reasoned that the 'atelier' part of the mark was less distinctive than the company name Shu Uemura. The court further stated that:
  • the word 'atelier' is the third of four words in the mark SHU UEMURA ATELIER MADE mark; and
  • the dominant element of the mark is thus SHU UEMURA, not ATELIER.
Based on the foregoing, the court held that the marks were not confusingly similar from a visual, aural and conceptual point of view. The Supreme Court affirmed the decision.
The decision of the Patent Court is noteworthy in that it departs from previous judgments on the similarity of marks.
Generally, the courts tend to assess similarity by comparing the dominant elements of the marks at issue. In other words, if the dominant elements of the marks are found to be identical or similar, the courts will conclude that the marks as a whole are similar. Where one of the marks contains a company name (like Shu Uemura), the courts compare the dominant elements of the mark without taking account of the company name. The courts also apply this criterion where a mark contains a company name that is well known worldwide, despite the fact that consumers are unlikely to be misled by a mark containing the name of a well-known company.
In the present case, the Patent Court did not apply this criterion mechanically and compared the marks as a whole. By concluding that SHU UEMURA was the dominant element of the mark SHU UEMURA ATELIER MADE, the court seems to have interpreted the word 'atelier' as a 'place' belonging to the company Shu Uemura. It will be interesting to see whether the court will apply a similar reasoning in future cases.
Cecil Su-Jung Kwon and Nayoung Kim, Kim & Chang, Seoul

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