Region: South Korea

Changes to the Trademark Examination Guideline, which is used by KIPO examiners when reviewing trademark applications, have recently come into effect. Among other things, the revised guideline simplifies the standard for proving that a mark has acquired secondary meaning, and specifically prevents the registration of marks that incorporate words or names made famous by or through the media, including the Internet.

28 April 2014

The Supreme Court has recognised for the first time the existence of a presumption of negligence on the part of infringers in cases of trademark infringement, thereby making it easier for plaintiffs to recover damages for infringement. Among other things, the court held that trademark registrations are public and that knowledge thereof is available to any person exercising ordinary care.

23 April 2014

KIPO has proposed a number of significant changes to the Trademark Act. Among other things, the proposed amendments would permit KIPO to accept letters of consent from a senior registrant so that a junior trademark applicant can obtain a registration for an existing mark. KIPO hopes that, if passed by the National Assembly, the proposed amendments will take effect on July 1 2015.

17 March 2014

In a case involving the domain name ‘www.nca.com’, the Supreme Court has confirmed that the lack of fame of a trademark in Korea could no longer be used as an excuse by cybersquatters in cases involving top-level domain names. The case shows that the fame of the mark abroad may be sufficient, especially if the registrant’s bad faith can clearly be established.

04 March 2014

In a case involving the bilingual mark CONTINENTAL (with its Korean transliteration), the Supreme Court has reversed a long-held position, holding that the use of only the English portion (or equally, only the Korean transliteration portion) of a registered English-Korean combination mark constituted use of the mark as registered.

12 December 2013

The Korean Intellectual Property Office has announced a plan for improving the quality of trademark and design examinations, in order to support the marketing efforts of businesses and enhance the competitiveness of companies through innovative brand and design creation. Among other things, KIPO plans to ease its strict examination standards regarding the distinctiveness of trademarks.

29 October 2013

Recent amendments to the Unfair Competition Prevention and Trade Secret Protection Act have recognised additional types of anti-competitive acts and introduced rewards for those who inform the authorities of such anti-competitive behaviour. The amendments will become effective early next year.

24 September 2013

The Korean National Assembly has adopted a bill introduced by KIPO, which will amend the Korean Trademark Act. One of KIPO's goals with this reform is to provide greater protection to the owners of small businesses in Korea. The amended act will be effective from October 6 2013.

28 May 2013

The Supreme Court has held that Audi AG's trademark AUDI A6, which is registered for clothing, was dissimilar to Netision.com’s A6 marks for clothing. Interestingly, the court took into consideration current automobile industry practice whereby the ‘A6’ portion of Audi’s mark would be regarded as the name of a particular model of Audi car.

14 February 2013

The Supreme Court has upheld a decision of the Patent Court in which the latter had found that the marks SP-II and SK-II, which both cover cosmetics-related goods in Class 3, were confusingly similar. Among other things, the Patent Court had held that the letters ‘P’ and ‘K’ - the only difference between the marks - would be pronounced weakly because they are located in the middle of the marks.

08 February 2013