Amendments to Trademark Act take effect
Legal updates: case law analysis and intelligence
Amendments to the Korean Trademark Act were published on June 11 2014, effective immediately. The amendments, which apply to marks filed from June 11 2014, introduced the following changes:
- Secondary meaning is now easier to prove - the previous Trademark Act permitted the registration of a trademark lacking distinctiveness if the mark had acquired secondary meaning, but the applicant was required to show that consumers would easily recognise the trademark as a source identifier. The amendments lowered this standard by deleting the term ‘easily’ from the Trademark Act, in order to recognise the goodwill of trademarks that may already function as source identifiers in the marketplace.
- Marks that may cause dilution cannot be registered - it was already not possible to register trademarks that create consumer confusion with famous marks under the Trademark Act. However, the amendments now also prevent the registration of marks that may potentially dilute the distinctiveness and/or reputation of a famous mark.
- Unfair applications will be denied registration - the amendments specifically prevent the registration of a mark which is identical or similar to a third party's mark in connection with identical or similar goods, where the applicant was aware that the third party was using or planning to use the mark due to a partnership agreement, employment relationship, business transaction or other relationship.
- The Trademark Act now reflects changes in unfair competition law - as of January 31 2014, the Unfair Competition Prevention and Trade Secret Protection Act adopted a ‘catch-all’ provision designed to prevent a party from harming a third party's economic interest by using (through a method that contravenes fair trade practices or the rules of competition) that third party's product for business purposes without authorisation, where the third party's product was the result of considerable effort and investment. The amendments to the Trademark Act prevent the use of a registered mark by a registrant and/or licensee without the consent of the third party, if such use of the registered mark falls within the scope of the abovementioned ‘catch-all’ provision. Further, a registered mark can be cancelled within five years of its registration date for violating the ‘catch-all’ provision if a cancellation action is filed by the party whose economic interests are being harmed.
Sung-Nam Kim and Nayoung Kim, Kim & Chang, Seoul
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