In 2016, Korea has been substantially re-shaping its IP system. One such change is the Trade Mark Act, which has been comprehensively re-drafted. One of the main changes in trade mark is the non-use cancellation of the registered mark. When a registered trade mark has not been used in Korea for three consecutive years, third parties can seek to cancel it on the grounds of non-use. According to the existing Act, only an interested party can request cancellation of a non-used mark. However, under the new system, legal standing is no longer required; therefore, any person may request cancellation of a non-used registered mark. The new system is expected to accelerate the procedure and give more opportunity to those who actually intend to use the mark by remedying weaknesses in the registration system.
As in many jurisdictions, a trade mark similar or identical to a prior registration or application cannot be registered in Korea. At present, this evaluation is made at the time of filing. Therefore, even if the prior registration or application is subsequently removed after the filing of a trade mark, an application would still be rejected because there was a conflicting prior trade mark at the time of filing. The new law resolves this situation, which seemed to have overly restricted the applicant's right of choosing a trade mark, by moving the evaluation of the existence of a conflicting prior mark from "at the time of filing" to "at the time of determining registrability".
A similar change in terms of broadening the applicable trade mark pool is the elimination of the one-year bar period against registering marks similar to already expunged marks. As the trade mark law allows change of ownership, the effectiveness of preventing others from registering the same mark for one year in order to minimise confusion was in question, and the new law addresses this issue effectively by removing the one-year bar.
Reflecting global business transaction trends, the new Act also codifies electronic use of trade marks on the internet or in e-commerce as a type of recognised use of a trade mark. The Korean court has already recognised such electronic uses of trade marks in selected judicial precedents, but the new law stipulates it as a type of statutory use of a trade mark.
At present, a registered trade mark cannot be enforced against a mark that uses a person's name or trade name, etc "in a common way". So far, the Korean court has tended to interpret "in a common way" quite narrowly, which may be overly restrictive to users' rights. The new Act changes the wording of this provision to "according to a customary practices". It is expected that the expression "customary practices" will embrace or reflect the situation in the market more realistically and allow users more freedom to use their names, etc in the market.
The new Act also fortifies the protection of trade mark owners in an agency relationship. Now, "an agent or representative" of a party that owns a trade mark in a treaty member state may not register a similar or identical mark in Korea within one year of the termination of the agency relationship. The new Act expands this agency relationship to "a contractual or business relationship such as a partnership or employment, or other relationship" and deletes the one-year time limit. "Further, the trademark owner can file invalidation actions at any time under the new law. This greatly differs from the current law as it requires filing the action within the five years from the registration date of the agent's trademark."
In addition to the above, the amended Act includes other changes which, taken together, make the current revision one of the most extensive revisions of the Trade Mark Act since the previous 1990 Trade Mark Act. The revised 2016 Act, which will come into effect as of September 1 2016, is expected to create a more fair and reasonable trade mark infrastructure in Korea.
Min Son
Partner, Hanol IP & Law
HANOL Intellectual Property & Law
6th Floor, 163, Yang Jae Cheon-Ro, Gang Nam-Gu
Seoul 06302, Republic of Korea
Tel: +82 2 942 1100
Fax: +82 2 942 2600
