Fundamental Changes to Korea’s Trademark Law
|
Background
Since its enactment in 1949, the Korean Trademark Act has been frequently amended to keep up with rapidly changing industrial and commercial environments. The end result, however, has been legislation that is oftentimes inefficient, inconsistent, and complicated.
The Korean Trademark Act was originally based on a rigid first-to-file rule.? The Korean Trademark Act has evolved to adopt some first-to-use elements in order to protect real trademark users from nominal trademark owners.
In the last couple of years, there have already been important revisions regarding “acquired distinctiveness through use” and “trademark dilution.” Now, Korea’s new trademark law includes all the past revisions in a more consistent and systematic order and reflects some additional fundamental shifts.
In contrast to expectations, however, the new trademark law did not include a provision that honors a letter of consent from the owner of a cited mark. Therefore, even under the new trademark law, trademark applicants will not be able to overcome the citation of a prior mark by submitting a letter of consent issued by the owner of the prior mark.
Korea’s new trademark law will be in force as of September 1, 2016.
Key Changes |
| 1. Shift of the time basis for determining a conflict with a prior mark.
|
Under the current law, the time basis for determining whether an applied-for mark conflicts with a prior mark is the filing date of the applied-for mark. That means, if a prior mark existed at the time of the applied-for mark being filed, even though the prior mark lapses at the time when the examiner makes a decision on the registrability of the applied-for mark, the applied-for mark is destined to be rejected.1
Furthermore, the current law has a unique provision (Article 7-1-8) that proscribes the registration of an applied-for mark which was filed within one year from the expiry date (6 months where the prior mark lapsed due to failure of renewal) of a prior mark.2 This complicated provision was eliminated in the new law. |
| Therefore, under the new law, applied-for marks filed in the period ①, ② and ③, which have been rejected under the current law will become eligible for registration. The new law will be applied to trademark applications filed after September 1, 2016. |
 |
 |
| 1There are a few exceptions, which typically applies where the prior mark is assigned to the applicant of the applied-for mark; or cancelled for non-use by the applicant of the applied-for mark. |
| 2There are a few exceptions, which typically applies where the prior mark is invalidated by the real owner of the well-known mark and the same owner applies for registration of the mark. |
|
| 2. Adjustment in non-use cancellation system
|
In October 2013, the Korean Trademark Act introduced a revision in the non-use cancellation system to improve efficiency and consistency.? If the applicant of an applied-for mark is successful in a non-use cancellation action against the prior mark which was cited against the applied-for mark, the applicant of the applied-for mark can overcome the citation, and thus does not need to re-file an application for the mark. In addition to the above revision, the new trademark law amendments contain two more revisions that make the non-use cancellation system in Korea easier and more rational. |
| (1) |
The Petitioner’s interest for standing is no longer required.
Currently, only an interested party may file a non-use cancellation action. Under the new law, anyone may file a non-use cancellation trial.
From the viewpoint of petitioners of non-use cancellation action, the new law is meant to enhance convenience and effectiveness. However, from the viewpoint of trademark registrants, the risk of non-use cancellation is increasing, and there is new potential that trademark registrants may suffer from unnecessary non-use cancellations filed for a vicious purpose. As the burden of proof lies in trademark registrants, it is costly for trademark registrants to defend against a non-use cancellation action.
Therefore, trademark registrants in Korea will need to pay more attention to maintain their trademark registrations and protect them from non-use cancellation. |
| (2) |
The effect of cancellation is predated to the date of filing the non-use cancellation action.
Currently, the cancellation of a trademark registration goes into effect on the date that a cancellation decision becomes conclusive. In other words, until the cancellation decision becomes conclusive, the trademark rights are still valid. If the trademark registrant commences use of the trademark after the non-use cancellation action was filed, such use cannot defend against non-use cancellation, but can expose the petitioner of a non-use cancellation action to criminal and/or civil liability. Some trademark registrants have used this loophole for a vicious purpose.
Under the new law, the registration will be treated as cancelled on the date the cancellation action was filed. Therefore, the aforementioned vicious trademark enforcement during the cancellation proceedings will be blocked. |
| 3. Fortification of the protection related to Article 6septies of the Paris Convention (Registration in the name of the agent or representative of the proprietor without the latter’s authorization) |
The Korean trademark law includes a provision honoring and corresponding to Article 6septies of the Paris Convention.? In Korea, a trademark shall be rejected where the trademark is identical or similar to a trademark registered in a country that is a party to a treaty and has been filed by a person who is an agent or a representative of the owner of the trademark, without the owner's authorization. And even if such a trademark was already registered, the trademark registration may be cancelled when the real owner files a cancellation trial within five years from the trademark's registration date.
Under the new law, “an agent or a representative of the owner of the trademark” is extended to a person who is in business relations with the owner of the trademark. Furthermore, such a fact will be grounds for invalidation, not for cancellation,3 and thus the trademark rights owned by such a person will be nullified retroactively from the point of the filing date. In addition, the time limit of five years will also be abolished in Korea.
|
|
| 3Under the Korean trademark law, cancellation of a trademark registration is completely different from invalidation of a trademark registration. Invalidation retroactively nullifies the registration of a mark that should not have been registered in the first place, whereas cancellation terminates the effect of a trademark registration from the point of cancellation for such reasons as non-use and false-use. |
|
|
|
|
|
|
|
|
|
|
|
|
|
|
