Changes to Trademark Examination Guideline introduced
Changes to the Trademark Examination Guideline, which is used by examiners at the Korean Intellectual Property Office when reviewing trademark applications, came into effect on January 1 2014. Some of the key changes are discussed below:
- Two-letter marks - Article 6(1)(vi) of the Korean Trademark Act prohibits the registration of marks that are “simple and common”. Under the previous guideline, marks consisting of two alphabet letters were considered to fall within this provision and, therefore, applications for such marks were rejected unless the applicants were able to prove that the marks had acquired secondary meaning. However, the revised guideline now allows the registration of two-letter marks if they are perceived as a source identifier for the goods/services of a particular entity in the marketplace (eg, LG and HP would be recognised as distinctive under the revised guideline). Acquired distinctiveness does not have to be established for such marks.
- Secondary meaning - the revised guideline simplifies the standard for proving that a trademark has acquired secondary meaning. The amendment clarifies that the standard for acquired distinctiveness based on use does not have to rise to the level of a famous or well-known mark; rather, it is now sufficient to prove that the mark is recognised as a source identifier for a specific entity in the marketplace for the designated goods/services. For certain type of goods, such recognition can even be limited to a particular region.
KIPO has been very strict in the past with respect to what type of evidence could be submitted to prove the acquisition of secondary meaning. The mark as used had to be identical to the mark for which the acquisition of secondary meaning was claimed, and the products/services in connection with which the mark was used had to be identical to the designated goods/services. In its revised guideline, KIPO indicates that it will adopt a more flexible approach and accept evidence of the mark as used or of the products/services used with the mark even if they are not exactly identical to the claimed mark or associated designated goods/services, as long as they are nearly identical.
- Imitation marks - the guideline now specifically prevents the registration of marks that incorporate words or names made famous by or through the media, which includes the Internet. For example, marks that include the names of celebrities, musicians or athletes will be denied registration. This ground for rejection also applies to marks that consist of catch phrases or slang made popular by or through the media, as well as words confusingly similar to the names of television and broadcast shows and the like.
The guideline also indicates that, where a trademark application imitates a famous mark or a mark incorporating famous words, even if the goods/services applied for are not closely related to the cited goods/services covered by the imitated mark, the examiner will review the relationship between the compared goods/services broadly if the cited mark is a coined mark or is substantially similar or identical to the application. This amendment is based on the assumption that the applicant must have been aware of the existence of the earlier mark.
- Trademark information - previously, only obvious errors in the description of the goods/services covered by a mark could be corrected by the applicant. However, the guideline has been revised to permit the correction of obvious errors in the mark itself. For example, a mark that erroneously includes a state flag or international organisation emblem may be modified.
- Agents or representatives of trademark owners - according to the Trademark Act, an ‘agent’ or ‘representative’ of an entity which owns a mark protected in a foreign country (which is a member of an international treaty such as the Paris Convention and the Madrid Protocol) is not allowed to register a mark identical or similar to that entity's mark within one year of the termination of the agency relationship. The guideline has been amended to extend the notion of ‘agent’ and ‘representative’, as it is not uncommon for former agents and representatives to try to circumvent this rule.
Under the revised guideline, if an applicant for an identical or similar mark has a business relationship with a former agent or representative, KIPO will be able to reject the application (or cancel the registration) pursuant to this rule. Therefore, an application filed by an employee of a former agent will be treated as if it had been filed by the agent itself and may be rejected for that reason. Similarly, if an application is filed by another company owned by a former agent or represented by the former agent, the application may also be rejected for that reason.
- Intent to use - in March 2013, a lack of intent to use was added as a possible rejection ground under the Trademark Act. Initially, KIPO had indicated in its guideline that it would generally require the submission of proof of intent to use where an application designated more than five classes (as well as in certain other situations). However, this created a loophole because applicants would avoid the required submissions simply by dividing their applications so that each filed application designated less than five classes. In view of the ineffectiveness of this particular rule, KIPO has decided to delete it from the list of examples of cases when evidence of intent to use should be submitted.
Young Joo Song and Nayoung Kim, Kim & Chang, Seoul
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