According to data recently published by the Korean Intellectual Property Office, the number of non-use cancellation actions filed in South Korea has significantly increased in recent years, resulting in nearly double the number of registrations cancelled in 2017 compared to previous years (between 2013 and 2015, roughly 1,046 marks were cancelled per year, but in 2017, 2,172 registrations were expunged from the registry following the filing of cancellation actions).

It appears likely that the increase is due to the amendment to the Trademark Act which became effective on 1 September 2016. This amendment made it possible for any party to file non-use cancellation actions, whereas previously only interested parties could file non-use cancellation actions. The government's stated purpose for the amendment was to clear the Trademark Registry of non-used marks and it appears that the amendment has succeeded in this purpose.

Under South Korean practice, registered marks that have not been used for a three-year period are vulnerable to such cancellation actions. Further, the owner of a registration that has been cancelled cannot obtain a registration for marks identical or similar to the cancelled mark in connection with the same or similar goods or services as a result of any application filed while the cancellation action was pending or within three years after the cancellation decision becomes final. This can be particularly problematic if the challenged mark includes a separable portion (eg, a house brand) that may need to be filed as part of other combination marks in South Korea.

Trademark owners with portfolios which include any marks not currently active in South Korea should seek legal advice to determine the most effective strategy for protecting their trademark rights.

For further information on this topic please contact Ann Nam-Yeon Kwon or Alexandra Bélec at Kim & Chang by telephone (+822 3703 1114) or email (nykwon@kimchang.com or abelec@kimchang.com). The Kim & Chang website can be accessed at www.kimchang.com.

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