Introduction
The Korean Trademark Act was amended to reflect provisions of the recently ratified Free Trade Agreement (FTA) with the United States. The amendment came into force on March 15, 2012. On that same date, an additional amendment was introduced in the Trademark Act regarding the lack of intent to use. Additional legislative changes concerning the official fee system and expedited examinations have been adopted as of April 1, 2012.
Protection of Sound and Scent Marks
It is now possible to protect sound and scent marks in Korea as long as they are capable of visual representation (e.g., by way of a sign, character or figure). According to the examination guidelines set by the Korean Intellectual Property Office (KIPO), applicants need to show that the sound or scent has acquired a secondary meaning due to extensive use over a long period of time in Korea in order to be registered. Further, the sound or scent mark should not be functional for the designated goods/services.
The followings should be included when filing an application for:
Sound mark: (i) description of sound (such as characteristics of the sound, duration of the sound, how the sound is performed or made, etc.); and (ii) electronic file containing the sound (in a common audio file format such as MP3, WAV, WMA, which is not exceeding 3MB).
Scent mark: (i) detailed description of scent (including characteristics of the scent); and (ii) specimen of scent in the form of either a) 3 sealed containers where each holds liquid substance of more than 30 ml, or b) 30 sheets of scent patch whereon the scent substance of more than 3 mg is applied.
Recognition of Certification Marks
It is also now possible to apply for and obtain certification marks in Korea. A 'certification mark' is a mark (i) owned by an entity which carries on the business of certifying the characteristics of goods or services (e.g., quality, origin and method of production); and (ii) used by business entities other than the owner for the purpose of certifying that their goods or services satisfy such characteristics.
As a certification mark is used to certify the characteristics of the goods or services of others, it cannot be registered if the owner plans to use the mark for its own goods or services. Furthermore, the owner of a registration or an application for a trademark, service mark, collective mark or business emblem is prohibited from registering a certification mark for an identical or similar mark designating identical or similar goods or services.
For filing of a certification mark, (i) articles of incorporation or corporate regulation; and (ii) documents proving the capability to run and control the proposed certification program should be submitted.
Recordation of Exclusive Licenses No Longer Required
The amended Trademark Act abolishes the recordation requirement for exclusive licenses. Previously, the act stated that an exclusive license should be recorded in order to be valid and that only an exclusive licensee could grant a sub-license to another party. In this regard, the Supreme Court had ruled that trademark use by a sub-licensee of a non-registered exclusive licensee was not deemed to be valid use in the context of a non-use cancellation action. Many foreign trademark owners have struggled with recordation issues in the context of non-use cancellation actions where a non-recorded master licensee had granted a sub-license in Korea, and the sub-licensee had been the only party to have used the registered mark in Korea. The amended act resolves this problematic issue.
Adopting Statutory Damages
The amended act implements a system of statutory damages, whereby a trademark owner can claim damages of up to KRW 50 million (approximately USD 50,000) instead of claiming actual damages.
The provision concerning statutory damages will apply only in cases where the infringer uses a mark that is identical to, or substantially indistinguishable from (but not merely similar to), another party's registered mark in connection with goods that are identical to, or substantially indistinguishable from (but not merely similar to), the goods covered by the registered mark.
New Rejection Ground Based on Lack of Intent to Use
The amended act provides a new ground for rejecting or invalidating a trademark registration based on a lack of intent to use.
Under KIPO's guideline, the examiner may request evidence of use or a declaration in support of use and/or intent to use (i.e., printed materials, product photographs, invoices, declaration describing plans for use, etc.) when there is a doubt as to the intent to use. It is unclear at this stage how strictly this amendment will be interpreted and applied by KIPO, but the guideline further exemplifies that there is a doubt as to the intent to use if (i) one application covers goods/services in more than five Int'l Classes, (ii) various numbers of unrelated goods/services are claimed irrespective of number of classes, (iii) it is prohibited by law for the applicant to be engaged in a business for the designated goods/services, (iv) an individual files an application for services which requires large facilities and/or substantial capital such as banking services, and air transportation services.
Revision of Regulation Regarding the Official Fee System
For applications/renewals filed from April 1, 2012, an additional fee of KRW 2,000 (about USD 2) is incurred for each designated good/service in excess of 20 items per class. This change applies only for local applications.
Revision of Examination Guideline Regarding Expedited Examination
The examination period can be shortened to two to four months upon an applicant's request of expedited examination, which is allowed (i) if the applicant is using or planning on using the mark in connection with all of the designated goods/services under the pending application, (ii) if a third party is using a mark identical or similar to the applied-for mark without any justifiable reason, or (iii) if an application is filed by a successful petitioner of a non-use cancellation action within the six-month priority period.
A third party may also request an expedited examination of a trademark application, if he/she receives a warning letter regarding his/her use of an identical or similar mark to the applied-for mark.
The revised examination guideline (effective as of April 1, 2012) provides that, with regards to (i) above, if an applicant can prove use or his/her intent to use one of the designated goods/services, similar goods/services will be considered to be in use or to be used for the purpose of requesting an expedited examination.
