Trademark law reform in South Korea as of the 1st of September 2016

5On February 29, 2016, the National Assembly of the Republic of Korea adopted a bill which significantly amended the Korean Trademark Act. The revised Act will come into effect on September 1st, 2016.

The reform is the result of several proposals made by the Korean Intellectual Property Office to amend legislation relating to trademarks. The new law also incorporates all and any amendments made since 1990.

The main objective is to shorten the trademark registration process and to facilitate trademark filing applications. Where a court decides on the cancellation of a trademark registration based on non-use, the decision may be taken into consideration when an application for the registration of a new trademark (which is identical or similar to the cancelled trademark) is under examination. It will then not be necessary to file a new registration application for the same trademark. Furthermore, an applicant can now file arguments against a notification of rejection of trademark registration application from the Office, beyond the original set time limit and may also ask that the procedure be continued.

Definition of a “trademark” under the revised provisions

Firstly, the definition of a “trademark” has been simplified. Article 2(1)(i) defines a trademark as “either of the following that is used on goods related to the business of a person who conducts business activities, such as producing, processing, certifying or selling such goods, to distinguish them from the goods of others; a) a sign, a character, a figure, a three-dimensional shape or any combination of these; or b) other visually-recognisable constructs.”

Henceforth, a registered trademark is “a trademark used to identify and distinguish between the goods of one person and those of another”, irrespective of the type of trademark.

More admissibility for cancellation cases based on non-use: removal of the legal standing requirement

A Korean trademark may be cancelled if it has not been in use for three consecutive years prior to the cancellation application.

Article 73(6) of the existing Act, allowed an “interested party” to apply for cancellation of a mark based on non-use, during the three consecutive years prior to the cancellation application, either by the trademark owner or holder of an exclusive or non-exclusive license on the trademark. Article 119(5) of the revised Act removes the requirement of legal standing and therefore, any person may request cancellation of a non-used registered mark without having to justify the locus standi.

Previously, pursuant to Article 73(7), where a cancellation trial decision became final, the trademark right would be extinguished on the date that the decision was finalised. This date is now amended by Article 119(6) which makes a final non-use cancellation decision retroactive as of the filing date of the cancellation trial.

The reform aims to relieve the workload of the courts, that of trademark registrars and also accelerate current procedures. Indeed, for the year 2014, the Korean Intellectual Property Office reports 150,266 trademark applications and 3,823 trademark trial applications including 1,449 cancellation applications. Out of these cancellation applications, 1,396 rulings were issued.

The reform will also allow courts to focus primarily on the issue of cancellation without addressing the locus standi of the applicant.

In addition, it should be noted that Article 8 removes the mandatory six-month term imposed on the applicant when filing a cancellation claim for non-use. Filing a trademark application 6 months prior to the cancellation action is no longer required; the only subsisting criterion is that the application for registration should be made before filing the cancellation application.

Change in the examination procedure of a trademark in cases of identical or similar registered trademarks

A trademark similar or identical to a prior registered trademark cannot be registered under Korean law.

According to Article 7(1)(vii), an examiner will need to assess whether such identical or similar trademark existed on the date of the trademark registration application. Yet, if the registered trademark were to be invalidated, cancelled, abandoned or assigned after filing the application, it would not affect the registration of the new trademark: the examiner would go on to reject such a registration because it was identical or similar to the registered trademark at the time of filing the trademark application. Regardless of what happens after the filing, the petitioner would still benefit from the outcome.

It is for this reason that Article 34(2) of the revised Act changes the examination of identical or similar trademarks with the new trademark to the examination date of a registred trademark. If appropriate, any decision revoking, invalidating, abandoning or assigning a trademark will be taken into account during that examination and the examiner will thus be able to accept the registration of this new trademark.

The revised Act has also repealed Article 7(1)(viii) which required a person to wait for one year following a trial decision cancelling the trademark registration, before applying to register a trademark identical or similar to the extinguished one.

The Article sought to avoid confusion between two trademarks in the customers’ minds. However, it did not prevent confusion in cases where the registered trademark was assigned to two different persons through a license (this is made possible by Article 54). The Article was therefore removed in order to shorten the application procedure for registering a trademark.

The reform initially expected in 2015 by professionals active in the field of trademark law and by the Korean Intellectual Property Office, seems to have achieved its objectives. Despite this one-year delay, the reform is consistent with the proposals made by the Office in 2012 and contributes to enhance and balance trademark law in Korea, for trademark applicants.