Significant Trademark Act amendment in force from July 1
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An amendment to the Korean Trademark Act came into force on January 3 2007. However, major revisions will be effective only as of July 1 2007. The major aspects of the amendment are as follows:
- Stronger protection of well-known marks: One main purpose of the amendment is to make constructive efforts to put an end to the registration of imitation marks by lowering the standard of fame that is required to prevent registration of an imitation mark.
The amendment applies to trademark applications filed after July 1 2007.
The first-to-file principle applies under the current registration system. Although this allows for protection of similar trademarks that are famous or well known but have not obtained prior registration in Korea, the standard of evidence required to show the fame or well-known status of a mark is extremely high. Thus, in most cases, the Korean Intellectual Property Office (KIPO) examiners allow registration even for marks that are identical to another's unique mark if the prior user of the mark cannot produce a convincing amount of evidence showing the fame or well-known status of its mark.
In order to address this issue, the amendment has lowered the standard of fame by deleting the word 'easily' from the current Article 7.1.12 of the act, which states as follows:
"Trademarks that are identical or similar to a trademark easily recognized in Korea or outside Korea as a source identifier of another person, and which are used to obtain unjust profits or to inflict harm on the person shall not be registered."
- Right to use a mark based on prior use: The Korean system does not generally recognize any trademark rights based on prior use except where the mark has achieved the level of well-known status. In order to protect a prior user's business and interests, the recent amendment provides a prior user with the right to use its mark without infringing the trademark rights of a registered mark, which is identical or similar to the prior user's mark, if the following conditions are met:
- The prior user had been using its mark before the registered mark was filed without the bad-faith intent of committing an unfair competitive act; and
- The prior user's mark is recognized as being a source identifier of the user to Korean consumers as a consequence of such prior use in Korea.
- Recognition of non-traditional marks: To accommodate the current developments in technology and industry, KIPO has decided to expand the types of signs that can be registered as trademarks. Thus, under the recent amendment (which applies to applications filed after July 1 2007), non-conventional marks, such as motion, hologram and colour marks can also be registered, so long as such marks are visually recognizable.
- Extension of opposition period to two months: In order to provide more time to trademark owners that wish to file an opposition against a published mark, the current opposition period of 30 days from the publication date is increased to two months from the publication date.
An opposition period of 30 days still applies for applications filed before July 1 2007, regardless of the publication date.
- Extension of priority filing period to six months after non-use cancellation: If a registered trademark is not used (without justifiable reason) by its holder nor by an exclusive or non-exclusive licensee for a period of three consecutive years, an interested party may bring a cause of action against the holder and/or the licensee. One important effect of winning a cancellation action is that the petitioner has a priority period to apply for registration of a trademark identical or similar to the trademark that was cancelled due to the non-use cancellation action. As a result of the amendment, the priority period given to the petitioner is extended from three months to six months from the date on which the cancellation decision becomes final. However, if the cancellation action is filed before July 1 2007, the priority period remains three months.
- Required specification of rejection grounds for each product/service: Under prior practice, KIPO examiners tend not to specify the grounds of rejection of trademark applications in connection with designated goods/services and, accordingly, it is very difficult to respond to such office actions without having an interview with the KIPO examiners in many cases, especially when the application designates substantial numbers of goods/services.
In order to assist applicants, the amendment now requires that the grounds of rejection must be specified in connection with each of the designated goods/services.
- Broadening of the subject of conversion of trademark applications: The amendment allows for the conversion of applications between trademarks, service marks and collective marks. Previously, conversions only between service marks and trademarks were possible. Further, the amendment allows for the conversion of applications into fresh applications from goods-addition applications or renewal applications.
- Extinguishing of trademark rights in case of liquidation: Under the act, where the transfer of the registration of a trademark is not recorded with KIPO by a successor within three years following the death of the original trademark owner, the trademark right shall be extinguished. This clause can be applied only to a natural person, and not to a legal person. Further, there was no separate provision stipulating the extinguishing of a trademark right, when a trademark-owning corporation is liquidated. Accordingly, there are many valid trademark registrations, which are not owned by any entity, but which prevent other parties from registering a trademark that is identical or similar to the registered marks.
In order to help remedy these issues, the amendment stipulates that a trademark registration owned by a corporation in liquidation shall be extinguished one day after the date on which the termination by liquidation is recorded with the commercial registry if a transfer of the trademark registration is not recorded with KIPO before that day.
- Recovery of filing fee: If a trademark registration applicant withdraws or abandons its application within one month from the filing date, KIPO will return the filing fee to the applicant.
- Notification of rejection grounds for Madrid applications: If a KIPO examiner finds a ground of rejection for an international application filed in accordance with the Madrid Protocol during the examination process, KIPO previously sent its office action to the applicant for the international application as well as to the World Intellectual Property Organization (WIPO).
However, KIPO has concluded that it is unnecessary and ineffective to send an office action directly to the applicant and that such practice is not common in other jurisdictions. Therefore, the amendment has made it clear that the office action for an international application filed in accordance with the Madrid Protocol can be sent only to WIPO.
This right to use applies only against third-party registrations filed after July 1 2007.
Jay Young-June Yang, Kim & Chang, Seoul
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