September 2016

 
Print

MAJOR AMENDMENTS TO THE KOREAN TRADEMARK ACT

Jin Hwan Kim, MAPS IP Law Firm (Korea)

New amendments to the Korean Trademark Act ("KTA") were published on February 29, 2016 and took effect as of September 1, 2016. This is the first comprehensive amendments to the KTA in twenty-six (26) years. Some of the more important changes are set out below.

Legal standing no longer required for non-use cancellation actions

Under the current KTA, a non-use cancellation action can only be filed by an interested party, who is doing business in the same industry as the trademark registrant or owning an application that is similar or confusingly identical to the challenged trademark.

However, according to the amended KTA, the standing requirement is eliminated and any party can file a non-use cancellation action. Therefore, it will be easier for new market entrants to file non-use cancellation actions and secure their marks.

A pending trademark can be registered when another party’s conflicting mark expired during the examination stage of the pending trademark

Currently, a pending trademark that is identical or confusingly similar to another party’s prior-registered mark that expired during the examination stage of the pending trademark cannot be registered. This is because the prior-registered mark was effective at the time the pending application was filed.

However, according to the amended KTA, such pending trademark may be registered if there is no other basis for rejection.

Elimination of one year bar against registering marks similar to expunged marks

Currently, an application to register a mark that is identical or confusingly similar to another party’s prior-registered mark can be granted, if it is filed one year after the expiration of the prior-registered mark. The intended purpose of this rule is to protect consumers from potential confusion.

However, the amended KTA has eliminated this one year bar in order to give new market entrants more choices when selecting their desired trademarks.

Recognition of "electronic use" of a trademark

The amended KTA explicitly includes "use in an electronic manner" as one of the statutory types of trademark use. Given the development of e-commerce and other electronic services, a number of precedents already have recognized trademark use on the internet or other similar platforms even though they are not included in the current law, and this is now codified in the amended KTA.

 

All rights reserved. This email message and any linked materials including our newsletters are for informational purposes only and do not contain any legal advice. Transmission of this message is not considered to create, and receipt hereof does not establish, an attorney-client relationship. Legal advice of any nature should be sought from legal counsel.  
www.apaaonline.org