The Korean National Assembly has adopted a bill which will make important changes to the Korean Trademark Act (the "Trademark Act"). Amendments to the Trademark Act were signed into law on February 29, 2016 and will take effect on September 1, 2016 (the "Revised Act"). The key changes contained in the Revised Act are outlined below.
(1) Anyone may file a cancellation trial against a trademark right based on non-use.
Currently, the Trademark Act provides that only "interested parties" may bring a cancellation trial based on non-use against the holder of a trademark.
However, Article 119(5) of the Revised Act has no restrictions and provides that "anyone" may file a cancellation trial against a trademark right based on non-use, regardless of legal interest or standing.
(2) Final cancellation trial decision applied retroactively.
Under the Trademark Act, where a cancellation trial decision based on non-use becomes final, the trademark right is extinguished on the date that the decision is finalized.
However, pursuant to Article 119(6) of the Revised Act, a final non-use cancellation decision extinguishes the trademark right as of the filing date of the cancellation trial.
(3) Time period to consider unregistrable grounds is expanded.
The examiner of the Korean Intellectual Property Office (KIPO) may refuse to register a trademark on numerous unregistrable grounds. Under the current Trademark Act, an examiner is permitted to consider evidence of such unregistrable grounds if they existed from the time that the trademark applicant filed the trademark.
However, Article 34(2) of the Revised Act expands the discretion of the KIPO. Under this amendment, an examiner is able to consider evidence not the time when a trademark was filed but the time when the examiner determines as to the registration of a trademark. Please note that there are some exceptions to this general rule.
(4) Waiting period to file trademark that is identical or similar to extinguished mark is shortened.
The current Trademark Act provides that when a registered trademark is extinguished, a period of one year must lapse before another person is able to file a trademark that is identical or similar to the extinguished trademark.
However, the Revised Act eliminates the one year waiting period by deleting Article 7(1)(viii) and provides that a person may apply to register an identical or similar trademark the day after the original trademark has been extinguished.
Copyright ⓒ BOOK CHON, 2016