Amendments crack down on imitation marks by lowering the bar for fame

A series of draft amendments to the Korean Trademark Act have now been announced. The main objectives of the amendments, which are expected to go into effect in July 1 2007, are being reviewed by the Ministry of Legislation.

First, to accommodate the current developments in technology and industry, the Korean Intellectual Property Office (KIPO) has decided to expand the types of signs that can be registered as trademarks. Thus, the amended act will provide for protection of non-conventional marks as trademarks, such as marks in motion, hologram marks and colour marks.

In addition, the amendments attempt to put an end to the registration of imitation marks by lowering the standard of evidence required to demonstrate that a mark is well known. Under the current act the first-to-file principle applies, which allows a party to register a mark that imitates another party's trademark if the mark is not well known domestically or overseas. Although the current law allows for protection of similar trademarks that are famous or well known but have not obtained prior registration in Korea, the standard of evidence required to show the fame or well-known status of a mark is extremely high. Thus, in most cases, KIPO examiners allow registration even for marks that are identical to another's unique mark if the prior user of the mark cannot produce a convincing amount of evidence to show the fame or well-known status of its mark.

In order to address this, the amendments would lower the standard of fame by deleting the word 'easily' from Article 7(1)(12) of the Trademark Act, which is the most frequently used provision to seek the protection of famous foreign marks and which states:

"Trademarks that are identical or similar to a trademark easily recognized in Korea or outside of Korea as a source identifier of another person, and which are used to obtain unjust profits or to inflict harm on the person shall not be registered."

In order to protect properly a prior user's business and interest under the registration system, the amendments provide a prior user with the right to use continuously its mark without infringing the trademark rights of a registered mark, which is identical or similar to the prior user's mark, provided that (i) the prior user had been using its mark before the application date of the registered mark, without the bad-faith intent of committing an unfair competitive act; and (ii) the prior user's mark is recognized as identifying the user to Korean consumers as a consequence of such prior use in Korea.

In order to give more time to trademark owners that wish to file an opposition against a published mark, the amendments will lengthen the current opposition period of 30 days from the publication date to two months from the publication date.

For the applicant's convenience, the proposed amendments allow conversion of applications among trademarks, service marks and collective marks, while the current act allows the conversion only between service marks and trademarks. Further, the amendments also allow conversion of applications into fresh applications from goods-addition applications or renewal applications.

Sung-Nam Kim and Alex Hyon Cho, Kim & Chang, Seoul