Recent Amendments to the Korean Trademark Act were passed by the the National Assembly of Korea.
On February 3, 2022, the National Assembly published the Korean Trademark Act revisions. One major revision was the expansion of the meaning of “use of a trademark.” The revision should make the application process easier for applicants and expand the rights of those granted a trademark. IPG Legal welcomes these changes. Another article that may be of interest to the reader includes: Korean Intellectual Protection Global Strategies.
Extension of the Period to File an Appeal in Response to a Final Rejection by the Korean Intellectual Property Office (KIPO)
Trademark applications (including international trademark applications) that are served with a certified copy of the final rejection on or after April 20, 2022 can apply for an extension of time to file an appeal in response to a final rejection or a decision to refuse amendment(s). If the examiner’s final rejection is made before April 20, 2022, as long as a certified copy of the final rejection is received on or after April 20, the revised period of three months is applied.
Automatic Recognition of Priority Claims for Divisional Applications in Korea
The divisional application, in Korea, will automatically receive the same priority if it is filed from the original parent application that claimed priority. If the pertinent priority document was submitted in Korea with the original application, it is assumed that the divisional application has also done so. The priority claim, special exception request, etc. may be cancelled by the applicant within thirty days of the divisional application filing date if they choose not to claim priority or do not desire the special exception applicable to their case at the time of filing. Applications for divisions submitted on or after April 20, 2022 are subject to this modification.
Expansion of the Definition of “use of a trademark” in Korea
“Use of a trademark” is defined under the current Article 2(1)(xi) of the Trademark Act of Korea as any of the following acts, where “displaying a trademark” includes “displaying a trademark on information provided through a telecommunications network by electronic means”:
(a) Using a trademark to identify goods or packages of goods;
(b) transferring or delivering trademarked goods or packages of goods, or exhibiting, exporting, or importing such goods for the purpose of transferring or delivering;
(c) Displaying a trademark on advertisements, price tags, transaction documents, or other means, and exhibiting or giving extensive publicity to the trademark.
In recent years, the distribution of various downloadable “digital goods” has become increasingly common. Distributions involving such trademarks has been deemed to constitute use of the relevant trademarks by KIPO and the courts. Paragraph (b) above refers only to traditional types of distribution and does not reflect the changing trends in distribution. Thus, to clarify the statute to recognize that the distribution of trademarked digital goods is also use of the trademark, this paragraph has been amended to read: “Transferring, delivering, or providing via a telecommunications network goods or packages of goods bearing a trademark, or exhibiting, exporting, or importing such goods for any of the aforementioned purposes.” This amendment will come into effect from August 4, 2022.
Introduction of a Partial Rejection System in Korea
Under the current Korean Trademark Act, examiners at the KIPO are required to specify the rejection grounds for each designated good when issuing an Office Action. When issuing a final rejection, however, the examiner must reject the entire application unless each and every rejection ground has been overcome, even if only some of the designated goods have been rejected. This, obviously, posed issues.
After a final rejection, in order to obtain allowance of the application for the non-rejected goods, the applicant must either appeal to the Intellectual Property Trial and Appeal Board (“IPTAB”) to limit the application or file a new application designating only the non-rejected goods.
In order to make the registration process more convenient for applicants and to improve their chances of securing proper rights, the Amendments to the Korean Trademark Act introduces a partial rejection system, which requires KIPO to issue a final rejection only as to goods that have been rejected, such that the remaining goods can be registered without the need for additional steps by the applicant. This system will apply to applications filed on or after February 4, 2023.
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