Republic of Korea: amendments to the Trademark Act
Amendments to the South Korean Trademark Act were adopted by the National Assembly and took effect on September 1, 2016.
Brief overview of the amendments is represented below.
Examination on relative grounds
Previously in the frame of substantive examination, when determining relative grounds for refusal, trademarks valid at the filing date of the examined trademark were taken into account. Under the amended law only trademarks valid at the date of examination are considered. Such change in examination rules increases chances for registering a junior trademark as the prior mark may be cancelled, abandoned or purchased by the applicant during examination and will not prevent registration of a new trademark.
Registration of identical/similar trademarks
According to the previous revision of the law registration of a mark identical/similar to a lapsed trademark was not possible within one year of expiration of a senior trademark. This limitation is removed in the amended Trademark Act.
Scope confirmation trial
The amended Act allows filing scope confirmation actions for a limited number of classes instead of filing an action for all classes in which a trademark is registered, potentially reducing cost of such action, which is calculated based on a number of classes considered.
Non-use cancellation trial
According to the previous revision of the Trademark Act, an applicant in non-use cancellation proceedings was required to prove its legal interest in the action (for example engagement in the same area of business as a trademark holder or trademark rights to an application confusingly similar with the challenged trademark). The amendments to the Trademark Act remove the above-mentioned requirements, making it possible for any person to file a request for non-use cancellation of a trademark.
Besides previously an unused trademark was deemed cancelled from the date of final decision on its cancellation. Starting from September 1, 2016, an unused trademark is cancelled retroactively, i.e. from the date of filing a cancellation action.
Electronic use
In accordance with the revised law, electronic use of trademarks (e.g. in the frame of e-commerce or other electronic services) is recognized as a form of genuine trademark use.
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Author: Lynda Miller