The Patent Court of Korea has held that trademark applications filed before the coming into force of the amended Article 7(1)(iv) of the Trademark Act will be examined under the amended law (Case 2008 hur 8945, October 10 2008).
On January 3 2007 the National Assembly enacted an amendment to Article 7(1)(iv) of the Trademark Act. Previously, this provision prohibited the registration of “a trademark which is susceptible to corrupt public order or morality”. Following the amendment, Article 7(1)(iv) prohibits the registration of “a trademark whose meaning and details are perceived by users as being liable to harm public order or contravene the morality of the general public”.
As the amended Trademark Act did not provide for transitional measures with regard to the applicability of Article 7(1)(iv), there was uncertainty as to whether trademark applications filed before the entry into force of the amendment were to be examined under the old or the new law.
On October 10 2008 the Patent Court held that as the act does not provide for transitional measures, trademark applications filed before the entry into force of the amendment should be examined under the amended act.
In the case at hand, the applicant had filed an application to register a trademark that was similar to that of the opponent before the date of entry into force of the amendment. However, the court did not require that the opponent demonstrate that its trademark was well known in Korea and decided the case based on the new Article 7(1)(iv). The parties did not appeal to the Supreme Court and the decision is thus final.
Yoon Bae Kim, Kims and Lees, Seoul
