Introduction
Class 09 software descriptions
Non-traditional trademarks
Foreign language trademarks
Other changes


Introduction

The Korean Intellectual Property Office (KIPO) recently updated:

  • the Trademark Examination Guidelines;
  • the Similar Goods Examination Guidelines; and
  • the Trademark Act Enforcement Rules.

The updates took effect from January or February 2021. The most noteworthy changes are summarised below.

Class 09 software descriptions

This update to the Similar Goods Examination Guidelines took effect on 1 January 2021.

Previously, KIPO allowed the designation of broad terms (eg, 'software' or 'application software for smart phones') in Class 09. However, given that the purpose or scope of most software is quite limited, allowing such broad coverage has resulted in a crowded register, with new applications for software marks often being blocked by existing marks which are used for software with a different purpose.

For this reason, and considering industry opinion and examination guidelines of other jurisdictions (eg, the United States), applications in Class 09 filed on or after 1 January 2021 must specify the software function.

Software descriptions will be broadly classified as:

  • system software;
  • game software; or
  • application software.

To determine the similarity between different software types, game software will be considered different from system and application software. The similarity of system and application software will be decided on a case-by-case basis.

Software may also be deemed similar to directly related services, although this will apply only when the marks are identical or very similar. For example, an application for 'software for screen golf games' under Class 09 would be deemed similar to an identical or very similar mark that covers 'operation of screen golf facilities' under Class 41, but not to a mark covering the more general 'leisure sport services' under Class 41.

Non-traditional trademarks

Reflecting an increase in trademark applications for various kinds of trade dress, the updated Trademark Examination Guidelines contain several notable revisions relating to non-traditional trademarks, which took effect on 1 January 2021. These revisions aim to improve the quality of non-traditional trademark examination.

3D trademarks
The following changes have been made in relation to 3D trademark registration:

  • The updated guidelines formally recognise that solid and dashed or dotted lines can be used to indicate claimed and non-claimed parts of a 3D trademark.
  • The updated guidelines classify store design trademarks (ie, "interior/exterior of a place at which goods are sold or services are provided") as a distinct 3D trademark type. Specific guidelines pertaining to their examination have been included for the first time. Incidental parts of a store design in which an applicant does not wish to claim rights (eg, windows or other building materials) may be indicated with dashed or dotted lines, as long as the overall appearance is consistent. Like other 3D trademarks (eg, for product packaging), store design trademarks will be considered to have weak distinctiveness. Therefore, applicants must evidence acquired distinctiveness to register such trademarks.
  • The updated guidelines require non-traditional trademarks, particularly 3D trademarks, to be examined more strictly for functionality to avoid granting potentially unlimited trademark rights for elements which should be protected under a patent. This will comprise examination of:
    • whether relevant patent or utility models exist;
    • whether ads have referenced the product's functionality; and
    • whether alternative forms exist and, if so, the ease and economic feasibility of such alternative forms.

Position and colour trademarks
The definition of a position trademark has been expanded from "shapes/figures which have acquired distinctiveness when used in a particular position on a product" to include colours that are used in a particular position. This may enable the registration of marks where the use of a specific colour in a specific location acts as a source identifier. Some well-known examples of such registrations in other jurisdictions include the Christian Louboutin red-soled shoe (US Trademark 3361597) and the Prada red tab sneakers (EU Trademark 001027747).

Figure 1: Christian Louboutin red-soled shoe and Prada red tab sneakers

The description of the specific shade for colour and position marks has also been expanded from Pantone colour codes to Hex, RAL, RGB, CMYK and KS A 0062 colour codes, among others.

Foreign language trademarks

This update to the Trademark Examination Guidelines took effect on 1 January 2021.

Previously, foreign language text (ie, text that is not Korean) in trademarks was treated as a readable word part if represented using only the English alphabet, Chinese characters or Japanese hiragana or katakana. Such parts could be compared with existing marks in terms of pronunciation. Text in other languages or scripts was treated as a graphical symbol or device for examination purposes.

The updated guidelines clarify this list as follows:

  • English;
  • languages using the Latin alphabet (eg, French, German or Spanish);
  • Chinese (traditional or simplified); and
  • Japanese (hiragana or katakana).

A further exception has been added to include text in any other language if the pronunciation or meaning is well known among consumers.

Other changes

Updates to the Trademark Act Enforcement Rules took effect on 1 February 2021. The following updates are likely to be of most interest to foreign applicants:

  • The number of drawings or photographs which applicants must submit when applying to register a 3D trademark has been amended from between two and five to between one and five. Applicants may submit a single drawing or photograph if it clearly represents the mark. This update aligns South Korea with other jurisdictions (eg, the United States, the European Union and Japan). Applicants must still submit between two and five drawings or photographs for movement and hologram trademark applications, as these include a change in form which cannot be shown in a single drawing or photograph.
  • The period for submission of files or samples for international registrations of sound and smell trademarks that designate South Korea has been extended from one month to three months in consideration of delays that are attributable to international posting.
  • Registered trademarks may now be indicated using a barcode or QR code which directs the user to a website that presents the trademark's registration number and status. Previously, registered trademarks had to be indicated via the registration number itself or a URL of a website that presented the registration number and status.

For further information on this topic please contact Jonathan Masters or Sung-Yeon Cho at NAM & NAM by telephone (+82 2 753 5477) or email ([email protected] or [email protected]). The NAM & NAM website can be accessed at www.nampat.co.kr.