The most recent amendments to the Trademark Act came into force on September 1 2016. One significant proposed change – the adoption of a consent system – was unfortunately not included in the final round of amendments.
This update summarises some of the major changes.
Previously, a party needed to have legal standing in order to petition for cancellation of a mark due to non-use. Standing could be established by showing, for example, that the party conducted business in the same industry as the designated goods or services of the challenged mark, or that they owned an application that was similar or identical to the challenged trademark.
By eliminating this standing requirement, this amendment is expected to make it easier to cancel unused marks and thereby create a larger pool of available trademarks for new market entrants. On the other hand, brand owners are encouraged to review their portfolios and take appropriate measures if they own registered marks that are not in use in South Korea.
Previously, the Korean Intellectual Property Office would issue an office action against a pending application if there was a similar or identical senior registration or application when the pending application was filed. Even if the senior registration was subsequently removed from the register, the examiner would still issue a rejection for the pending application because the senior mark existed as of the application date. The act has been amended to address this problem by providing that similarity to prior marks will be reviewed only when it is time to review the registrability of the applied-for mark, rather than on the application date.
Previously, potential applicants had to wait a year before registering a mark that was similar or identical to a registration that was expunged from the register. The intended purpose of this rule was to protect consumers from potential confusion. However, in order to give new market entrants more choices when selecting their trademarks, the amended act has eliminated this one-year bar. While all other revisions concerning the registrabillity of a mark apply to applications filed on or after the effective date (September 1 2016), this change applies to applications which are examined on or after the effective date.
The act previously provided that an agent or representative of a party that owned a registered mark in a treaty member state could not register a similar or identical mark in South Korea within one year of the termination of the agency relationship. If a similar or identical mark was nevertheless improperly registered, the trademark owner had to file a cancellation action within five years of the registration date of the agent's similar or identical mark.
The amended act expands this provision to prohibit "any party who was in a contractual or business relationship, such as a partnership or employment, or other relationship" from registering a similar or identical mark. This amendment also deletes the one-year limit and effectively removes the statute of limitations by providing that the trademark owner may file an invalidation action (rather than a cancellation action) at any time.
The act previously provided that a registered trademark right could not be enforced against a mark that solely indicated – "in a common way" – a person's name, appellation or trade name, portrait, signature, seal, famous pseudonym, professional name or pen name or a famous abbreviation of any of the above, unless the mark was used for unfair competitive purposes. However, this limitation has been construed narrowly by the courts, such that the stylisation of marks, variations in English transliterations and other minor differences have been interpreted as not being use "in a common way". The amended act changes this wording to "in accordance with customary practices", which will make it more challenging to assert a registration against a trade name being used in a stylised way.
For further information on this topic please contact Sung-Nam Kim or ?Angela Kim at Kim & Chang by telephone (+822 3703 1114) or email (email@example.com or firstname.lastname@example.org). The Kim & Chang website can be accessed at www.kimchang.com.
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