KIPO announced on June 4, 2012 the proposed amendment to the Trademark Act which is purported to expand the scope of exemptions to trademark infringement to alleviate conflicts between trade names and trademarks reflecting the realities of the commercial practices. The amendment also offers a faster dispute resolution process including an improvement in the cancellation procedure for non-use.
There are two key amendments to the Trademark Act:
- One of the proposed amendments to the Trademark Act is to expand the scope of exemptions to trademark infringement.
Prior to the proposed amendment, Article 51 of the Trademark Act enumerated specific circumstances to which the effect of trademark rights would not extend. For example, a trademark owner could not enforce his/her rights against the bona fide use of a personal name, common name for a product, well-known pseudonym, etc as a trade name by a third party. However, the current Trademark Act did not reflect the fact that trade names, in actual commercial usage, are often used in association with designs or figures. Under the current law and the interpretation by the Korean Supreme Court, while the use of a personal name or a common name for a product as a trade name was exempted from trademark infringement, the use of a design or a figure in association of such trade name was not offered an exemption. As a result, KIPO proposed the present amendment as it opined that the current law did not adequately address the real-world commercial practice. Through the proposed amendment, KIPO hopes to expand the scope of exemptions to protect the bona fide use of a trade name by small businesses while not overly restricting the rights of trademark owners.
- The second proposed amendment to the Trademark Act changes the trademark cancellation related procedure thereby shortening the time for obtaining registration of a trademark.
At present, the existence of a prior registered mark that is identical or similar to a mark under application was examined at the time of application. As such, even if a prior registered mark is canceled via cancelation action brought by the applicant, said applicant could not obtain registration of its mark due to the valid existence of the now cancelled mark at the time of the application. Under such practice, said applicant would need to file a new application subsequent to the cancellation of the prior registered mark. Obviously, this practice delayed the registration process. The proposed amendment provides that when the applicant for a trademark registration is identical to the claimant in a cancellation action, KIPO will postpone the time to examine the existence of an identical or similar until the time of registration (as opposed to conducting such examination at the time of application). Therefore, in this case, if the prior registered mark is canceled, then such canceled mark will not prevent the new mark from being registered thereby reducing the time for obtaining a trademark registration.