Amendments to Trademark Act to come into force later this year

South Korea

The Korean National Assembly has adopted a bill introduced by the Korean Intellectual Property Office (KIPO), which will amend the Korean Trademark Act. The amended provisions of the act, detailed below, will be effective from October 6 2013.

First, under the current Trademark Act, non-use cancellation actions have no retroactive effect. In other words, an application filed before an earlier conflicting mark is successfully cancelled through a non-use cancellation action will remain blocked by this earlier mark. Successful petitioners in non-use cancellation actions are instead granted an exclusive six-month period to file an application for a mark that is identical or similar to the cancelled mark.

Under the amended bill, non-use cancellation actions will have some limited retroactive effect: an applicant blocked by an earlier conflicting mark will be able to overcome this citation if the earlier mark is successfully cancelled through a non-use cancellation action.

However, the amended Trademark Act will remove the exclusive six-month period. Therefore, once the amendments enter into force, petitioners will have to file an application for registration of their marks as early as possible, even before filing a non-use cancellation action, to avoid any risk of a third party filing an application for an identical or similar mark while the action is pending.

Second, under the amended Trademark Act, a party which, without any bad-faith intent, uses as a trademark its name, trade name or any other personal identifiers, in accordance with customary practices, will be able to continue such use without risking trademark infringement claims by the owner of an identical or similar registered mark, as long as such use started before the date of application of the identical/similar registered mark.

One of KIPO's goals with this reform of the Trademark Act is to give greater protection to the owners of small businesses in Korea. Previous interpretations of the law had reduced the possibility for small business owners to protect themselves against attacks by trademark owners and had forced many of them to modify their trade names as a consequence. With this amendment, KIPO is hoping that small business owners in Korea will be able to continue making fair use of their trade name without interference from owners of later trademarks.

Third, the amendments include relief measures for applicants who have failed to file a response to an office action within the two-month deadline. Such applicants will be granted an additional two-month period from the expiry of the deadline to file a request to re-open the examination of their applications. The response to the office action will have to be filed in combination with the request to re-open the examination.

Alexandra Bélec and Won Joong Kim, Kim & Chang, Seoul

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