Jan 12, 2024 (Newsletter Issue 1/24)Expedited Examination of TM Applications More DifficultSince January 1, 2024, the Korean Intellectual Property Office (KIPO) no longer accepts a prior trademark search conducted through a specialty agency designated by KIPO as a basis for expedited examination.
Consequently, it has become more difficult for those who need to promptly secure trademark rights in Korea but encounter difficulty in meeting the other criteria for requesting expedited examination, making it even more essential to carefully plan suitable filing strategies.
For more details click here.Source: www.ip.kimchang.com May 01, 2023 (Newsletter Issue 5/23)
Partial Rejection and Re-Examination System Effective
On February 4, 2023, the amendments to the Korean Trademark Act promulgated on February 3, 2022 finally took effect.
Partial rejections and a re-examination are now possible. These amendments are expected to make the registration process more convenient for applicants and to enhance their chances of properly securing their rights.
New Partial Rejection System
Prior to the amendment, if any designated goods of an application were preliminarily rejected by the Korean Intellectual Property Office (KIPO), the applicant was required to overcome each and every rejection ground, or else KIPO would issue a final rejection of the entire application, even if not all of the designated goods were originally rejected. The only ways to get such non-rejected goods allowed were either to appeal to the Intellectual Property Trial and Appeal Board (IPTAB) to limit the application, or to file a new application designating only the non-rejected goods.
Under the amended Trademark Act, however, KIPO will issue a final rejection only as to the specific goods that have been rejected, such that the remaining goods can simply be registered by the applicant without need for further proceedings.
Establishment of a Re-Examination System
Under the newly established re-examination system, where KIPO issues a final rejection, if the rejection grounds can be overcome simply by amending the designated goods, the applicant is now permitted to submit such an amendment together with a request for re-examination to KIPO, instead of having to go through a trial proceeding at the IPTAB.
A request for re-examination may be filed before the deadline to appeal the final rejection to the IPTAB (i.e., within 3 months from the date of receipt of the Notice of Final Rejection), and if the re-examination request is filed, the final rejection will be deemed revoked. A re-examination request may only be submitted once per application, and no re-examination may be requested once an IPTAB appeal has been filed. In addition, this system does not apply to applications filed under the Madrid Protocol.
Source: https://www.ip.kimchang.com/
Oct 20, 2022 (Newsletter Issue 15/22)Virtual Goods Examination Guidelines PublishedThe Korea Intellectual Property Office (KIPO) has adopted the "Virtual Goods Examination Guidelines" that went into effect on 14 July 2022.
The Guidelines indicate that virtual goods are presumptively different from real world goods and virtual goods previously described as downloadable image files. Thus, KIPO will not automatically reject applications for virtual goods based on trademarks for real world goods or trademarks for downloadable image files. Trademark owners might need to consider applying for virtual goods corresponding to their goods/services in the real world as soon as possible before the trademarks are registered by a third party. The key points of the Virtual Goods Examination Guidelines are as follows:
1. Virtual Goods Description Requirements
The broad description of "virtual goods" by itself will not be accepted. Instead, the product type must be specified, for example, "downloadable virtual apparel," "virtual shoes," etc.
2. Classification of Virtual Goods
Virtual goods generally belong to International Classification 9. Further, KIPO has added new Similarity Codes specifically for virtual goods as a way to help distinguish and examine virtual goods.
3. Determination of Similarity
The Virtual Goods Guidelines provide that when comparing virtual goods, they will be presumed similar if the corresponding real world products are similar. However, virtual goods falling within the same Similarity Code may still be found dissimilar depending on the characteristics of the goods. Notably, trademarks for virtual goods will be presumed dissimilar to their real world counterpart goods until a court precedent establishes otherwise.
For more information, please click here Source: www.ip.kimchang.com Jul 14, 2022 (Newsletter Issue 9/22)Japan-China-Korea Concordance List of Similar Group Codes PublishedTh Japanese Patent Office (JPO) published the Japan-China-Korea Concordance List of Similar Group Codes corresponding to Nice Classification, 11th edition, version 2022 (NCL11-2022).
The Japan Patent Office (JPO), the China Intellectual Property Office (CNIPA), and the Korean Intellectual Property Office (KIPO) have been working to establish a concordance lists showing the corresponding relationships between the respective similar group codes used for trademark examination at the JPO, the CNIPA, and the KIPO, based on a trilateral agreement signed by the three offices.
Similar group codes are the codes assigned to goods and services that are presumed to be similar to each other in trademark examination. The project aims to improve the predictability of examination results, by encouraging users who file trademark applications with the JPO, the CNIPA or the KIPO to utilize the concordance lists when searching for the existence of already registered trademarks.
For information, please check JPO's website here Source: www.jpo.go.jp Jul 14, 2022 (Newsletter Issue 9/22)Amended Trademark Act and Design Protection Act in ForceThe Korean Trademark Act (TMA) and the Design Protection Act (DPA) were amended and became effective on April 20, 2022. In addition, the Guidelines for Trademark Examination (Guidelines) were revised and also took effect on the same date. The main amendments are described below.
Response to final rejection now due in 3 months
Trademark and design applicants now have three months to file an appeal, request for reconsideration, and/or divisional/converted application in response to a final rejection notice. Previously, it was 30 days.
Relaxed requirements for restoration of trademark/design rights
In the amended Acts, the term "reasons not imputable to a person" has been relaxed to simply "reasonable reasons," in order to more broadly protect applicants from losing rights due to circumstances out of their control.
Automatic recognition of priority for divisional applications
The amended Acts provide that as long as priority is properly claimed in the original parent application, the same priority is automatically recognized for any divisional application filed from that parent application.
Introduction of new ex-officio re-examination procedure
The amendment provides for a new ex officio re-examination system, under which an examiner who determines that there are obvious refusal grounds for an application after the application is allowed, but before the application is registered, may withdraw the decision to grant a registration and reopen the examination of the application.
Non-exclusive licenses to trademark/design co-owners after transfer of such rights
The amended Acts now provide that co-owner of a trademark/design right who do not consent to a court conduct an auction to sell the trademark or design right in its entirety to a third party are granted a non-exclusive license, if they were already using the concerned registered trademark or using a design identical or similar to the concerned registered design prior to the filing of the auction request. In the case of a trademark right, the license is granted only for uses with goods in connection with the trademark prior to the filing of the request.
Broadening of acceptable evidence of intent to use
The amended trademark examination guidelines recognize intent to use the mark by another entity that can be controlled and directed by the applicant as valid evidence of intent to use, consistent with Article 19 of the TRIPS Agreement. Accordingly, applicants are now able to submit license agreements as evidence of intent to use their mark. In such cases, however, the examiner may still find lack of intent to use if it is objectively impossible for the applicant to control and manage the use of the mark by the license, e.g., if the licensor is legally incompetent.
For more information, please check here and here. Please also check our previous post here Source: www.ip.kimchang.com Mar 31, 2022 (Newsletter Issue 4/22)Amendments to Trademark ActOn February 3, 2022, the National Assembly promulgated amendments to the Trademark Act which introduces an expansion of the ways to prove “use” of registered trademarks, as well as the possibility of partial rejection and re-examination. The expanded scope of trademark use will take effect from August 4, 2022, while the introduction of partial rejection and re-examination from February 4, 2023. Amendments are the following:
Definition of "use of a trademark" expanded to cover online distribution of "digital goods"
The amended Trademark Act includes the provision of trademarked goods via a telecommunications network. Type of use may include uploading or providing subscription services for trademarked computer programs, transmitting e-books and digital files, and providing apps, e-coupons or emoticons via app stores.
Introduction of partial rejection
The amended Act permits partial rejection of applications. Examiners may refuse some of the designated goods/services while granting the registration of the application for the remaining specification. Further, applicants will be able to file an appeal with the IP Trial and Appeal Board (IPTAB) with respect only to the refused goods/services (as a whole, or in part), as opposed to the entire specification of designated goods/services.
Establishment of a re-examination
The revised Act introduces a re-examination system, where in straightforward cases applicants may request re-examination and simultaneously file an amendment to cure the rejection grounds. In this way, trial proceedings before the IPTAB can be avoided. A re-examination request needs to be filed within three months from the date of receipt of the rejection notice.
For more information, please see here Source: www.ip.kimchang.com May 06, 2021 (Newsletter Issue 9/21)Amendments to Trademark Act The Korean National Assembly has passed additional legislation to strengthen the protection of IP rights. The new legislation includes amendments to the Trademark Act, the Patent Act, the Design Protection Act, and the UCPA Act (Unfair Competition Prevention and Trade Secret Protection), introducing punitive damages for infringement and idea theft.
The amendments to the Trademark Act, Patent Act, and Design Protection Act became effective on October 20, 2020, and the UCPA amendments on April 21, 2021. All of the amendments apply to infringing acts or thefts arising after this date.
The Trademark Act underwent the following amendments:
- Introduction of treble damages for intentional acts of trademark infringement
Courts can now award up to triple the confirmed damages if intentional acts of trademark infringement (Article 110(7)).
- “Reasonably expected” royalties as basis for damages computation
The amendment altered the “ordinarily expected” standard to a “reasonably expected” standard, allowing courts to properly reflect the market reality when calculating royalty-based damages (Article 110(4)). This revision should allow trademark holders to receive higher damages awards.
- Increased maximum statutory awards
The maximum award of statutory damages for trademark infringement is now KRW 100 million and KRW 300 million in case of intentional or willful infringement (Article 111(1)). Previously the statutory damages were up to KRW 50 million.
For more information, please check hereSource: www.leeko.com May 06, 2021 (Newsletter Issue 9/21)
Examination Guidelines on Similarity of Goods Changed
Recently, the Korea Intellectual Property Office (KIPO) amended its Examination Guidelines on Similarity of Goods (Guidelines). A notable change under this amendment relates to an adjustment to the scope of similarity between goods and services relating to software. The amendments to the Guidelines are effective for all trademark applications filed on or after January 1, 2021.
KIPO utilizes "Similarity Codes" to define categories of broadly similar goods and services. Goods designated under the same Similarity Code are similar for trademark registration purposes.
Formerly, all software-related goods shared the same Similarity Code. Now, the Examiners must consider several factors such as the "type" and "usage" of the software on a case-by-case basis when determining the similarity between software-related goods and services.
The amended Guidelines intend to reflect the increasing complexity and diversity of software-related products more adequately.
Source: www.ip.kimchang.com
Apr 08, 2021 (Newsletter Issue 7/21)
Revised Enforcement Rules Improve Applicants' Convenience
According to KIPO, the revision to the Enforcement Rules of the Korean Trademark Law has taken effect on February 1, 2021, to improve the convenience of an applicant of a trademark application and to reflect the changing transaction modes. The revision includes easing the restriction to the number of drawings in a three-dimensional trademark sample.
The major content of the revision to the Enforcement Rules of the Korean Trademark Law is as follows:
- When an applicant files an application for a three-dimensional trademark or a location trademark, the revised Enforcement Rules have been simplified making it possible to submit only one sheet of a drawing to clearly describe the features of a sample. Previously, the applicant had the hassle to submit a number of drawings.
- Under the revised Rules, all of the amendments to an international trademark application can now be made in the Korean national phase through an amendment to the Korean application.
- Regarding the trademark-related procedures, when identity verification is required, it is possible to use the seal or signature registered when a patent client number was issued, without submitting any separate seal certificate.
- A method of indicating a registered trademark has been revised to be flexibly defined, by expecting that a method of indicating a registered trademark (for example an electronic indication such as barcode, QR code) will be diversified according to the technology development.
Source: www.pkkim.com
Mar 11, 2021 (Newsletter Issue 5/21)
Artificial Intelligence to Examinations Introduced
From February 15, 2021, the service has been started using artificial intelligence (AI) technology for trademark and design examination and trial purposes according to the Korea Intellectual Property Office (KIPO).
With the launch of the system, the existing method of searching thousands of images per examination with the ‘naked eye’ has been revolutionized for the trademark and design examiner, greatly reducing the time required for examination and improving examination accuracy.
The main function of the image search system is to compare an applied image with previously registered images and then show the results in order of similarity. It is noteworthy that it is possible to search by recognizing a partial image among images in which multiple parts are combined.
Source: www.pkkim.com
Dec 03, 2020 (Newsletter Issue 20/20)Japan-China-Korea Concordance List of Similar Group Codes PublishedOn November 16, 2020, the Japanese Patent Office (JPO) informs about the publication of the Japan-China-Korea Concordance List of Similar Group Codes corresponding to Nice Classification, 11th edition, Version 2020 (NCL(11-2020)).
The compilation of the Concordance List of Similar Group Codes is a cooperative project between the Japanese Patent Office (JPO), the Chinese National Intellectual Property Administration (CNIPA), and the Korean Intellectual Property Office (KIPO), indicating the corresponding relationships among the respective similar group codes used for trademark examination at the JPO, the CNIPA and the KIPO.
Similar group codes are the codes assigned to goods and services that are presumed to be similar to each other in trademark examination. The project aims to improve the predictability of examination results, by encouraging users who file trademark applications with the JPO, the CNIPA or the KIPO to utilize the concordance lists when searching for the existence of already registered trademarks.
The concordance list is available as an Excel table on the JPO website hereSource: www.jpo.go.jp Nov 19, 2020 (Newsletter Issue 19/20)
Online Counterfeit Product Prevention Measures Planned
The Korean Intellectual Property Office (KIPO) announced ‘online counterfeit product prevention measures’ at a meeting of the COVID-19 Central Disaster and Safety Countermeasure Headquarters.
KIPO prepares current measures to efficiently block the rapidly increasing online distributions of counterfeited products and to minimize consumer damages by the limited crackdown manpower.
The Office plans to preemptively block consumer damage. Experts of KIPO will temporarily be involved in online monitoring, to expand and conduct the measures of restraining sales by deleting the relevant posts and closing the relevant sites, focusing on the areas threatening the public health and safety.
In addition, as to the relevant mass distributors and regular sellers, the trademark special judicial police will intensively investigate and block the distribution of counterfeit products. In the mid to long term, the investigation manpower will be reinforced and the advancement of investigation techniques, such as digital forensics, etc., will be carried forward in preparation for a continuous increase of online distribution.
Moreover, KIPO plans to improve the effectives of consumer damage relief by the cooperation of the trademark owner and online platform company. Furthermore, an amendment to the Trademark Law has been taken forward to impose to make the product seller responsible for preventing trademark infringement.
Source: www.pkkim.com
Apr 30, 2020 (Newsletter Issue 6/20)Mobile-Filing of Trademark Application IntroducedKIPO has re-organised the “특허로” portal to start a mobile service for filing trademark applications. The portal is available on the Korean language Website www.patent.go.kr.
All customer services from filing a trademark application, receiving official notices, paying official fees, searching for the status of examination processing to issuing a certificate of registration are accessible via the newly organised portal using smartphones.Source: www.pkkim.com Sep 19, 2019 (Newsletter Issue 13/19)
No Joint Renewal Requests Required Soon
Beginning October 24, 2019, renewal requests for registered trademarks owned jointly by several owners can be filed by any one of the joint owners alone. This amendment to the Trademark Act (TMA) was published on April 23, 2019, and is meant to ease the burden of joint trademark owners, who are currently required to file such renewal requests jointly.
Source: www.kimchang.com
Sep 19, 2019 (Newsletter Issue 13/19)Design Protection Act Amendment SoonThe Korean Intellectual Property Office recently announced proposed changes to the Enforcement Regulation of Korean Design Protection Act ("Design Protection Act"), which are likely to go into effect in October 2019.
One of the proposed changes will enable design patent applicants/registrants to correct inventor information after receipt of the Notice of Allowance. Currently, once the Notice of Allowance is issued, it is not possible to amend the application in any way, including inventor information. This means that inventorship cannot be corrected once the Notice of Allowance is issued.
For more information, please click hereSource: www.kimchang.com Apr 24, 2019IP Office Will Not Accept Division or Merger Requests of Intl. Registration The Republic of Korea has notified WIPO in accordance with new Rules 27ter(2)(b) and 40(6) of the Common Regulations, which entered into force on February 1, 2019.
According to the said notification:
- new Rule 27bis(1) of the Common Regulations, providing for the possibility to file a request for division, is not compatible with the law of the Contracting Party and does not apply to it; and,
- the law of the Contracting Party does not provide for the merger of registrations of a mark.
As a result, the Office will not present to WIPO requests for the division of an international registration under new Rule 27bis(1) nor requests for the merger of international registrations resulting from division under new Rule 27ter(2)(a).
For further information, please refer to hereSource: www.wipo.int Feb 28, 2019 (Newsletter Issue 3/19)Trademark Examination Guidelines AmendedThe Korean Intellectual Property Office (KIPO) amended its trademark examination guidelines, effective as of January 1, 2019. The major amendments are summarized below.
- Stricter examination of non-owner marks on famous characters and character names
- No registrations for “buzzword” terms such as ‘K-POP’
- New restrictions on individuals applying for franchise marks in their own names
- Marks comprising a famous geographical name and ‘University’ can be distinctive
For further information, please check hereSource: www.kimchang.com Dec 13, 2018 (Newsletter Issue 21/18)
Electronic Exchange of Priority Certificate Documents for Design Applications with USPTO
The Korean Intellectual Property Office (KIPO) and US Patent and Trademark Office (USPTO) agreed to electronically exchange priority certificate documents for design applications starting December 1, 2018.
Source: www.pkkim.com
Mar 29, 2018 (Newsletter Issue 6/18)Trademark Examination Guidelines and Classification System AmendedThe Korean Intellectual Property Office (KIPO) recently amended its trademark examination guidelines and classification system, effective as of January 1, 2018. The amendments are summarized below.
1. Distinctiveness of 3D Trademarks
The guidelines previously stated that a 3D shape essentially functions as a design and not a source identifier, and that secondary meaning is required to obtain a trademark registration for a 3D shape unless it is combined with a distinctive element. Accordingly, KIPO examiners normally rejected applications for a 3D shape, even if the shape had no intrinsic connection to the designated goods or services.
The above guideline has been replaced with the following guidelines for determining the distinctiveness of 3D marks:
- If a 3D trademark is for the product configuration itself, the distinctiveness of such a mark cannot be admitted except in combination with a trademark element that is distinctive.
- However, if a 3D mark is not for the shape or form of the product itself, and the shape is not common but very unique for such products or services (e.g., a star-shaped bottle for wine), distinctiveness can be admitted.
2. Distinctiveness of University Names
The following guideline has been introduced for determining the distinctiveness of a university name:
A mark which consists only of a famous geographical indication and the term "university" is not distinctive. However, if the combination mark is recognized as a trademark which indicates a specific source in an "education related field," then depending on the length of time the mark has been in use, the extent to which it has been advertised, and the size and nature of the university, secondary meaning can be admitted. The new guideline also states that "education related field" covers not only the provision of lectures, but also other aspects of a university's operations, such as clothing sales, food sales, etc.
3. Change to the Goods Classification System
Some goods were reclassified into other classes to better reflect current market situations and international standards.
The most notable change is that "health functional foods" are now classified in class 5, which is in line with the Nice Classification system, while they were formerly classified based on their ingredients. (Note: This does not affect "health supplementing foods" which are categorized as "general foods" still classified based on their main ingredients.)
More information can be accessed hereSource: www.kimchang.com Mar 29, 2018 (Newsletter Issue 6/18)
Design Examination Guidelines Amended
The Korean Intellectual Property Office (KIPO) recently amended its design examination guidelines, effective January 1, 2018. The most noteworthy amendments are summarized below.
1. Expanding the Scope of Integrity of Partial Designs
If two or more parts which are physically separated in one partial design application are expressed, they are generally rejected as a violation of the "one design - one application" rule. However, if their creative integrity is recognized, the design application can be registered as one design. According to the amended guidelines, the intention of the creator is also considered when determining whether or not the parts physically separated in one partial design application constitute one design. Further, a design will be considered to have configurational integrity if the parts have relevance in being recognized as a single creative unit, and to have functional integrity if the parts have relevance in carrying out the same function.
2. "Fourth Industrial Revolution" Design Applications Are Now Allowed Expedited Examination
The examination of design applications generally takes around 7~9 months from the application filing date. An applicant can shorten the examination period by requesting expedited examination, which if granted takes around 2~4 months. However, expedited examination is only allowed in certain circumstances set forth in the Design Protection Act Enforcement Decree. Design applications directly related to the "fourth industrial revolution," such as artificial intelligence or Internet of Things, have been added as a subject for priority examination in the Design Protection Act Enforcement Decree, and the design examination guidelines have been amended accordingly.
3. Unclaimed Design Elements Must Be Registrable Even For Partial Designs
The amended guidelines now specify that when determining if a design is unregistrable, the unclaimed parts as well as the claimed parts of a partial design should be taken into account, and reference drawings should be considered. Thus, even if only otherwise-registrable portions of a design are being claimed as a partial design, if unclaimed portions are unregistrable (e.g., for offending public morals), the partial design cannot be registered.
Source: www.kimchang.com
Dec 05, 2017 (Newsletter Issue 21/17)Guidelines on Designation of Goods and Classification AmendedThe Guidelines for the Designation of Goods and Classification (Guidelines) were amended on June 29, 2017, and the changes became effective on July 5, 2017. The Guidelines set out what designations of goods and services are acceptable to the Korean Intellectual Property Office (KIPO).
Korea has adopted the Nice Agreement concerning the International Classification of goods and services for the purposes of the registration of marks. The eleventh edition became effective on January 1, 2017. In principle, KIPO examiners follow the general rules of the Nice Classification System, such as the class headings, explanatory notes and alphabetical list. However, not all goods and services designations in the alphabetical list of the Nice Classification have been included in the Guidelines.
With the recent amendments, the list of acceptable goods and services designations in the Guidelines has been significantly expanded. More than 4,000 goods and services designations have been newly added, some of which were adopted from the Nice Classification list, while others were adopted from the list of acceptable goods and services provided by the European Union Intellectual Property Office (EUIPO).
Particularly new goods and services have been introduced in the classes 5, 8, 10, 30, 38, 41, 42. For more information on designations, please click here
An applicant can still register a mark for goods and services which are not clearly listed in the Guidelines, as long as the applicant can satisfactorily explain to the examiner what the goods/services are and that they have been properly classified. However, with the introduction of the amended Guidelines' list of goods and services it should substantially get easier for applicants to obtain registrations for many goods and services, as well as registrations of a broader scope than before.
Source: www.kimchang.com Dec 05, 2017 (Newsletter Issue 21/17)Design Protection Act AmendedSeveral amendments to the Design Protection Act (DPA) went into effect on September 22, 2017.
The grace period for design applications has been extended from 6 months to one year. Further, proof of priority has been eased as the applicant is now allowed to submit other documents as confirmation of the details of the foreign priority application. Also, the penalties have been increased for various offenses.
More information on the recent amendments can be found in our previous news online and here
Source: www.kimchang.com May 31, 2017 (Newsletter Issue 10/17)
Design Protection Act Amended
Several amendments to the Design Protection Act were published on March 21, 2017. The amendments will come into effect on September 22, 2017.
Important changes are the following:
- Grace period for design applications extended
The amended act extends the six-month grace period to one year. The amendment also replaces the text "when filing a response to an office action issued by KIPO" with "until KIPO issues a final decision whether to grant a design registration". As such, an applicant will be able to claim the grace period at any time while the application is pending.
- Proof of priority eased
Under the existing act, in order to claim priority an application must include drawings that are substantially identical to the drawings in the foreign priority application and a copy of the priority application certified by the foreign government.
Under the amended act, KIPO will accept certain other documents to confirm the details of the foreign priority application.
- Increased penalties
Several fines will be increased such as the fine for perjury by a witness, expert witness or interpreter under oath before the Intellectual Property Trial and Appeal Board (IPTAB), the fine for falsely indicating that a design has been registered or applied and the fine for fraudulently obtaining a design registration or an IPTAB decision related to a design.
Source: www.kimchang.com
Mar 14, 2017 (Newsletter Issue 5/17)Registration of Minimalist Designs Easier Now The Korean Intellectual Property Office amended the Design Examination Guidelines, effective as of January 1, 2017. The most notable of the amendments is that the creativity threshold for design registrations has been substantially lowered.
Previously, examiners often found it easy to reject design applications without citing any prior art, if the design was composed of well-known shapes or patterns, such as basic 2D and 3D geometric shapes. As a result, minimalist designs (which are designs intentionally stripped of superfluous elements) usually have been held to be unregistrable under the Design Protection Act and therefore not protectable.
According to the amended Guidelines, if the product design is composed in a manner that has never been seen before in the relevant field, the design can be deemed as creative regardless of whether it is comprised of basic shapes or patterns. The amended Guidelines also require examiners to cite supporting evidence when refusing a design application due to lack of creativity. Only very common manners of creation or obvious forms of expression in the product field are now exempt from the evidence requirement, such as a generic car design for a car toy.
For further information, please see the news of Kim & Chang here
Source: Kim & Chang, South Korea Aug 30, 2016 (Newsletter Issue 15/16)Major Amendments to Trademark ActThe National Assembly has approved a major amendment to the Korean Trademark Act ("Act"), which will go into effect on September 1, 2016. This is the first comprehensive amendment to the Act in 26 years.
Important changes have been highlighted below:
- Legal standing no longer required to file non-use cancellation actions
- Delayed evaluation of similarity to senior marks
- Elimination of one year bar against registering marks similar to expunged marks
- Expanded restrictions against applications filed by agents
- Limitations on trademark rights clarified
- "Electronic use" of trademarks acknowledged as one of the recognised types of use.
- Confirmation of scope trials can be filed for a subset of designated goods
- Broader grounds for rejection of certification marks
For further information, please see the article of the law firm Kim & Chang here
Source: Kim & Chang, South Korea May 18, 2016 (Newsletter Issue 9/16)
Trademark Examination System Amended
The Korean Intellectual Property Office (KIPO) recently revised several aspects of the examination system for trademarks in order to improve the convenience of applicants. Some of the most important changes include the following:
- Expansion of the scope for amendments regarding product classes:
Under the previous regulations, it was not permitted to add an additional product class as this was regarded as a change of the original content of the application. For example, it was not permitted to add the class "business suits" to an already existing class "clothes" in order to specify the scope of protection. According to the new regulations, however, it is permitted to add additional product classes as long as these classes do not extend the scope of protection.
- Extension of the term for submitting statements of opinion:
Under the new examination standards, the time period for submitting a statement of opinion in response to office actions was extended from previously two months to four months calculated from the day of receipt of the office action.
Source: www.epo.org
May 18, 2016 (Newsletter Issue 9/16)
Trademark Act Amended
The Korean Trademark Act has been amended, effective from September 1, 2016. The main changes relate to non-use cancelations and unregistrable trademarks.
- Non-Use Cancelation Trials:
Under the current Korean Trademark Act, only an interested party can file a non-use cancelation action. However, under the amended Korean Trademark Act, any person will be allowed to do this.
Under the current Act, an unused trademark right is extinguished from the date the non-use cancelation trial decision becomes final and conclusive (i.e., there is no retroactive effectiveness). However, under the amended Act, an unused trademark right shall be extinguished from the date the non-use cancelation action was filed with the Trial Board, which means there will be retroactive effectiveness.
- Unregistrable Trademarks:
Under the current Korean Trademark Act, whether a trademark application is confusingly similar to another person’s prior registered mark is determined on the basis of the date when the junior trademark application was filed. However, under the amended Korean Trademark Act, it shall be determined on the basis of the date when the junior trademark application is examined. This means that if the cited prior registration has been invalidated, canceled, abandoned, or assigned to the junior applicant, it will no longer be an obstacle.
Under the current Korean Trademark Act, an identical or similar trademark application should be filed, in principle, one year after another person’s prior registered mark has been extinguished. However, under the amended Korean Trademark Act, this requirement has been removed.
Source: INTA Bulletin, May 15, 2016, Vol. 71, No. 9
Contributor: Markkorea Patent and Law Firm, South Korea
Verifier: DK Choi & Partners, South Korea
May 02, 2016 (Newsletter Issue 8/16)
Accession to Singapore Treaty
WIPO has announced the accession to the Singapore Treaty on the Law of Trademarks by the Republic of Korea on April 1, 2016. The Treaty will enter into force on July 1, 2016.
Source: www.wipo.int
Jan 20, 2016 (Newsletter Issue 1/16)
Design Examination Guidelines Amended
The Korean Design Examination Guidelines ("Guidelines") have been amended effective October 1, 2015 to encourage examiners at the Korean Intellectual Property Office ("KIPO") to treat design applications with greater flexibility during examination. Some of the more notable amendments are outlined below.
1. Designs of Sets of Articles
Under the Design Protection Act ("DPA"), if two or more products are used together as a set (i.e., a set of utensils, a set of tea apparatus, and a set of smoking apparatus etc.), the design of the entire set may be registered as a single design as long as the set constitutes a coordinated whole. However, in practice, KIPO examiners usually did not grant registrations for sets of articles unless the set was one of those explicitly listed as an example in the Enforcement Decree of the DPA. The amended Guidelines eliminate this practice and specify that examiners should grant a registration for a set of products if the individual products genuinely constitute a set, the products are all used at the same time, and the set as a whole has a unified design.
2. Single Application for Single Design
This amendment makes clear that an article comprising several different parts that can be physically separated from each other still may be filed as a single design, as long as the entire article is traded in the market as one product.
3. Priority and Amended Drawings
In order to claim priority, the presented drawings must be identical to the drawings submitted in the original priority application. However, because Korea has a number of different formal requirements for drawings compared to other jurisdictions, KIPO often requires foreign applicants to amend the drawings in their design applications. Problems sometime arise in this regard because material amendments to the drawings in a Korean design application are not allowed after the application has been filed, and in practice whether an amendment is "material" has been determined by comparing the amended drawings with the drawings in the Korean design application as filed. As a result, foreign applicants who amend their drawings pursuant to a request from KIPO have often subsequently received an office action for making material amendments to the drawings. The amended Guidelines now recommend that examiners should consider the drawings in the original priority application as well as the drawings in the Korean application as filed when they decide whether or not material changes have been made.
4. Registrability of Screen Images
Under the amended Guidelines, neither the size nor location of a screen image (such as a graphical user interface or icon) is to be considered when determining similarity to other designs.
Further, the creativity of a screen image ordinarily is evaluated based on the claimed portions of the design only (which must be depicted in the drawings with solid lines), but under the amendment, the function or usage of other portions of the drawings (depicted with dotted lines) also can be considered if necessary to fairly evaluate such creativity.
Source: www.kimchang.com
Jun 16, 2015 (Newsletter Issue 9/15)Trademark Examination Guidelines Changed The newly amended Examination Guidelines ("Guidelines") of the Korean Intellectual Property Office ("KIPO") went into effect on January 1, 2015. The following are some of the more notable of the many changes made to the Guidelines.
1. Dilution as a new refusal ground
2. Consumer confusion as a basis for determining similarity
3. Applications filed by related applicants
4. Bad faith applications for imitation marks
5. Use of third party registered marks in the goods description
6. Registration of slogans
7. Miscellaneous
The new Guidelines make it easier for applicants to obtain a registration from KIPO by stating that priority claims may be accepted for applications even if they do not designate exactly the same goods/services as the previous application (previously, the marks and goods were required to be identical even if changes in one application were necessary to comply with the laws of other countries), and by permitting modifications to the trademark for "correction of obvious errors or size, [and] removal of minor portions."
The new Guidelines also provide protection not only for geographical indications ("GIs") currently protected under the Korea-European Union Free Trade Agreement, as well as GIs identified under the Korea-Canada Free Trade Agreement, which went into effect earlier this year.
For further information, please view the article of our contributors Ms Jee and Ms Kim from Kim & Chang here
Source: www.kimchang.com Nov 25, 2014 (Newsletter Issue 18/14)
Batch Examination Available
The Korean Intellectual Property Office (KIPO) recently announced that batch examination is now available for all types of IP application. Batch examination allows an applicant to pool together multiple IP applications related to a common product into one examination basket to be processed according to the applicant's designated timeline. Through batch examination, the applicant can seek the examination of multiple applications within a unified examination timeframe, which can be set according to the applicant's request. Applications that qualify for batch examination include trademark applications and design applications as well as patent and utility model applications.
Source: Kim & Chang Intellectual Property, South Korea
Oct 28, 2014 (Newsletter Issue 16/14)
Amendments to the Korean Trademark Act
Amendments to the Korean Trademark Act ("TMA") have been published on 11 June 2014, which are effective immediately. The amendments apply to marks filed on or after 11 June 2014.
1. Secondary meaning easier to prove
The previous TMA permitted registration of trademarks lacking distinctiveness if the mark had acquired secondary meaning, but the applicant was required to show that consumers would easily recognize the trademark as a source identifier. The amendment lowers this standard by deleting "easily" from the TMA, in order to respect the goodwill of trademarks that may already function as source identifiers in the marketplace.
2. Marks that may cause dilution are denied registration
Trademarks that create consumer confusion with famous marks already are not allowed to be registered under the TMA. However, the amendment further prevents the registration of marks that may potentially dilute the distinctiveness and/or reputation of a famous mark.
3. Unfair applications are denied registration
The amendment also specifically denies registrations for applications filed for a mark which is identical or similar to a third party's mark in connection with identical or similar goods, despite knowledge that the third party is using or planning to use the mark pursuant to a partnership agreement, employment relationship, business transaction, or other relationship.
4. Reflection of changes in unfair competition law
As of 31 January 2014, the Unfair Competition Prevention and Trade Secret Protection Act adopted a "catch-all" provision, designed to prevent a party from infringing a third party's economic interest by using (through a method that contravenes fair trade practice or competition order) that third party's product for business purposes without authorization, where the third party's product was the result of considerable effort and investment.
The amendment to the TMA prevents use of a registered mark by a registrant and/or licensee without consent of the third party, if use of the registered mark falls within the scope of the above UCPA "catch-all" provision. Further, the registered mark can be cancelled within five years from the registration date for violating the "catch-all" provision if a cancellation action is filed by the party whose economic interests are being infringed.
Source: Kim & Chang, South Korea
Apr 16, 2014 (Newsletter Issue 7/14)
Joins the Hague System
The Republic of Korea has deposited its instrument of accession to the Geneva Act of the Hague Agreement for the International Registration of Industrial Designs.
With its accession, which takes effect from 1 July 2014, the Republic of Korea joins the WIPO-administered Hague system for the International Registration of Industrial Designs. This will bring the membership of the system to 62.
The Hague system makes it possible for an applicant to register industrial designs in multiple countries by filing a single application with the International Bureau of WIPO. By allowing the filing of up to 100 different designs per application, the system offers significant opportunities for efficiency gains.
It also simplifies the process of multinational registration by reducing the requirement to file separate applications with the IP offices of each Hague member country/region in which protection is sought. The system also streamlines the subsequent management of the industrial design registration, since it is possible to record changes or to renew the registration through a single procedural step.
Source: www.wipo.int
Mar 04, 2014 (Newsletter Issue 4/14)
Official Fees Increased
The Korean Intellectual Property Office (KIPO) announced official fee increases for filing applications and Requests for Examination. The changes came into effect on 1 March 2014.
The official application fee is now KRW 72,000 (instead of KRW 66,000) for one class. The online application fee is now KWR 62,000 (instead of KRW 62,000) per class.
Source: Kim & Chang, South Korea
Jun 14, 2013 (Newsletter Issue 9/13)Amendments to Trademark Act IntroducedThe National Assembly recently adopted a bill introduced by the Korean Intellectual Property Office (KIPO) that will amend the Trademark Act. The amended provisions of the act will be effective from October 6 2013 and will include the following:
- Non-use cancellation actions
Non-use cancellation actions will have some limited retroactive effect under the amended bill. An application that is blocked by a senior conflicting mark will be able to overcome this issue if the senior mark is successfully cancelled by a non-use cancellation action.
- Prior use of trade names
Under the amended act, a party that uses its name, trade name or any other personal identifiers as a trademark without bad-faith intent, in accordance with customary practices, will be able to continue such use without risking trademark infringement claims from the owner of an identical or similar registered mark, provided that such use started before the application date of the identical or similar registered mark.
- Relief measures following failure to comply with filing deadline. The amendments also include relief measures for applicants that failed to file a response to an office action within the two-month deadline. Such applicants will be granted an additional two-month period from the deadline in which to file a request to reopen the examination of their applications. However, the response to the office action must be filed in combination with the request to reopen the examination.
For more information, please check the article of Kim & Chang here
Source: Kim & Chang, South Korea
Sep 02, 2012 (Newsletter Issue 13/12)
Announcement with respect to Examination Guideline
The Korean Intellectual Property Office (KIPO) announced amendments to the examination guideline on August 17, 2012. KIPO is not going to refuse a trademark application based on a similar prior service mark anymore unless the prior service mark owner files an opposition. Under the same rule, KIPO is not going to refuse a service mark application based on a similar prior trademark anymore unless the prior trademark owner files an opposition.
Before the announcement the Examiner refused trademark application based on a similar prior service mark and vice versa.
Source: Markkorea Patent and Law Firm, South Korea
Mar 27, 2012 (Newsletter Issue 5/12)
Official Fees Increased
The official fee system in trademark matters was recently amended. Under the new regulation, additional fees will be charged for trademark applications, registrations and renewal petitions designating over twenty goods/services in one class.
An additional fee of KRW 2,000.- (approx. EUR 1.40 ) will be incurred for each designated good/service in excess of twenty per one class. The amended regulation enters into force as of April 1, 2012.
Source: Kim & Chang Intellectual Property, Seoul, South Korea
Mar 27, 2012 (Newsletter Issue 5/12)Amendments to Trademark ActThe amendment to the Korean Trademark Act ("TMA") became effective as of March 15, 2012. Notable changes are as follows:
1. Protection of Sound and Scent Marks
Under the amended TMA, it is possible to protect sound or scent marks as long as they are capable of graphical representation (for example by way of a sign, character or figure).
2. Recognition of Certification Marks
It is also possible to apply for and obtain certification marks.
3. Abolishment of Recordation Requirement for Exclusive Licenses
Previously, an exclusive license was required to be recorded with KIPO to be effective. However, such requirement has been abolished as of March 15, 2012.
4. Statutory Damages for Trademark Infringement
The amended TMA implements a system of statutory damages, in which a trademark owner will be able to claim damages for up to KRW 50,000,000 instead of claiming actual damages.
For further information please also check the article of Kim & Chang Intellectual Property, South Korea here
Source: Kim & Chang Intellectual Property, Seoul, South Korea Aug 02, 2010 (Newsletter Issue 13/10)Fee Schedule RevisedThe Korean Intellectual Property Office (KIPO) has announced a new fee schedule, effective July 2010.
To access the list of fees please click here
Jun 01, 2010 (Newsletter Issue 11/10)New Installment Payment Changes Postponed til July, 2010The Korean Intellectual Property Office (KIPO) has postponed the new changes to the trademark fee payment until the end of July, 2010.
KIPO initially announced that the changes should be effective from June, 2010, as reported in the May Newsletter. For more information please click hereSource: www.ajupatent.com May 05, 2010 (Newsletter Issue 10/10)
Renewal Process/New Installment Payment Changed
Effective by June 2010, a registered trademark can be renewed without any separate examination.
Furthermore, a five-year installment payment of trademark registration fees will be introduced:
Ten years of trademark registration fees have currently been based on a lump-sum based payment. Starting June 2010, however, the introduction of this system will allow customers to pay the first portion of trademark registration fees at the time of registration and the second portion within five years before the term of trademark rights expires.
The legal basis is the Trademark Act, last amended on February 4, 2023, and said amendments became effective on the same date.
South Korea is a member of the Madrid Protocol.
Trademark protection is obtained by registration. Unregistered marks are generally not protected under the Trademark Act. However, the owner of a well-known or famous mark is given some protection under the Trademark Act by way of preventing others from obtaining a trademark registration for an identical or similar mark. South Korea follows the first-to-file system.
Although Korea has adopted the International Classification of Products and Services (“Nice Classification”) for all applications and renewals filed from March 1, 1998, and has dropped the former Korean National Classification of Goods/Services, Korea modified the NICE Classification by combining it with the former local classification of goods and services. The Korean Version contains the same class headings as those of the Nice Classification in description through all the classes. However, some goods and services listed in the NICE Classification were omitted for the Korean Version. Instead, the Korean Version has inserted several goods or services with which Koreans are well accustomed, most of which were selected from the former local classification. For applications filed before March 1, 1998, the old classification of 53 goods and 12 service classes is still valid.
A trademark is conventionally defined as a sign, a character, a figure, a three-dimensional shape, or any combination of color with the preceding items. However, protectable trademarks are also color marks, 3-D marks, hologram marks, motion marks, sound marks, scent marks, and other marks to represent the source of goods regardless of their constitution or expression method.
The following trademark types are registrable: trademarks, including collective marks, certification marks, certified geographical indication marks, and geographical collective marks.
The service marks have been incorporated under "trademark" based on the amended Trademark Act effective as of September 1, 2016.
The application is filed at the Korean Intellectual Property Office (KIPO).
Multiple-class applications are possible.
Foreign applicants need a local agent.
Local agents require a power of attorney (POA), specific or general, to prosecute an application. A general POA is valid for all future applications as well once it is registered at KIPO. It is possible to restrict a general POA.
Foreign applicants do not need a domestic domicile.
The application process includes a formal examination, an examination of distinctiveness, and a search for prior trademarks.
The processing time from first filing to registration or first office action is approx. 9 to 12 months.
The trademark application is published in the Trademark Gazette prior to registration.
Korea recently adopted a system of partial rejection against some of the designated goods/services of an application, so the remaining items can proceed to registration.
Korea recently extended the appeal deadline against final rejections to 3 months from 30 days.
Protection begins from the date of registration. Trademark registration is valid for 10 years from the date of registration. The registration is renewable for periods of 10 years.
The official fee for filing a trademark application is KRW 62,000 for one class. The online application fee is KRW 52,000 per class. An additional KRW 2,000 will incur for each designated good/service over ten per one class.
Registration fees can be paid either via two installment payments or on a lump-sum basis. The installment payments are KRW 122,000 for each installment and KRW 122,000 per classification for multiple-class applications. The fee via the lump sum is KRW 201,000 and another KRW 201,000 per classification for multiple-class applications.
For each designated good/service over ten per one class, an additional fee via the installment payment is KRW 1,000, and the additional fee via the lump sum is KRW 2,000.
The renewal fees can be paid either via two installment payments or on a lump-sum basis. The fee via the installment payments is KRW 184,000 for each installment per classification. The fee via the lump sum is KRW 300,000 per classification.
A surtax of KRW 9,120 incurs when conducting mark registration or mark renewal of a trademark.
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