Article 7(3) of the Trademark Act nullified by Constitutional Court
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Article 7(3) of the Trademark Act is no longer in effect pursuant to a decision of the Constitutional Court.
Article 7(3) of the act previously provided that Articles 7(1)(vii) (refusal on grounds of similarity to a prior registration) and 7(1)(viii) (refusal on grounds of similarity to a prior registration which was deregistered within one year of filing of the junior application) should apply even where the prior registration cited against the application had been invalidated.
Article 7(3) of the act previously provided that Articles 7(1)(vii) (refusal on grounds of similarity to a prior registration) and 7(1)(viii) (refusal on grounds of similarity to a prior registration which was deregistered within one year of filing of the junior application) should apply even where the prior registration cited against the application had been invalidated.
Based on Article 7(3), a junior trademark application could not overcome the rejection grounds stipulated in Article 7(1)(vii) even where the senior registration had subsequently been invalidated. On the other hand, a junior application could overcome the rejection grounds stipulated in Article 8(1) (similarity to an earlier application which is pending at the time of application and is registered, but then invalidated).
Further, under Article 7(1)(viii), a junior application had to be rejected or invalidated based on similarity to a prior registration which was invalidated within one year of the application for the junior mark, provided that there were no special circumstances which allowed for immediate filing. This provision had been criticized among trademark practitioners, as it contradicted the purported retroactive effect of invalidation decisions and the principle of judicial economy.
Further, under Article 7(1)(viii), a junior application had to be rejected or invalidated based on similarity to a prior registration which was invalidated within one year of the application for the junior mark, provided that there were no special circumstances which allowed for immediate filing. This provision had been criticized among trademark practitioners, as it contradicted the purported retroactive effect of invalidation decisions and the principle of judicial economy.
The Constitutional Court subsequently found that Article 7(3) of the act infringed the rightful junior applicant's property and occupational freedom without justifiable reason, while contributing little to the underlying goals of the act (ie, the prevention of consumer confusion over identical or similar marks). Pursuant to this decision, Article 7(3) is no longer in effect as of April 30 2009.
Accordingly, a pending junior trademark application or potential application can now be registered even where a senior trademark registration has been invalidated within one year prior to the filing of the junior application, or where a senior trademark registration was valid at the time of the application, but was invalidated thereafter.
Eun-Seol Na and Gavin Healy, Kim & Chang, Seoul
Eun-Seol Na and Gavin Healy, Kim & Chang, Seoul
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