South Korea
Tags: International Trade The Act Providing Major Amendments to the Trademark Law (the Act) was passed by the National Assembly on February 4, 2016. The Act takes effect on September 1, 2016. This Act is significant because it is the first major revision to the law since 1990. The Act was passed to harmonise Korean trademark law with the international trademark system and to improve Korean citizens’ understanding of trademark laws.Primarily the Act focusses on simplifying the trademark filing process and making Korean trademark laws more like those found in the international community. It attempts to accomplish this by: concisely redefining essential trademark law terms in accordance with international trends; expanding who may request revocation of an unused trademark; and changing the filing standards for establishing a trademark right to enhance convenience.Currently, essential trademark law terms in Korea are vaguely defined and not well understood by ordinary citizens. To alleviate this problem the Act redefines these terms with specific examples so that Korean citizens can easily grasp the key concepts of trademark law. This method of specifically defining key terms of trademark law, such as distinctiveness and source marking, has been widely used in the United States and Europe. Furthermore, it provides greater latitude for a mark to be qualified as a trademark by relaxing the standard. Under the Act, a mark may be qualified as a trademark so long as the mark effectively performs a trademark’s original function as a source indicator. Accordingly, in Korea a trademark will now be defined as a mark used to distinguish one’s products or services from another’s, and a mark will be defined as any token used to represent a product’s source, regardless of its composition or manner of expression. The Act also expands who may request that a trademark be revoked. Currently revocation may be claimed only by “an interested party”. Under the new law “anyone” can request a revocation trial. The purpose of this change is to increase the availability of active trademarks by eliminating unused trademarks, and to avoid delays in trademark revocation trials caused by disputes over whether the party seeking the revocation has a proper “interest” to request the revocation. Additionally, when the final judgment is made, the Act allows an unused trademark to be revoked retroactively to the filing date of a revocation trial request. These changes increase the number of available trademarks and expand trademark choices. Currently in Europe and Japan, anyone is permitted to request revocation of a trademark. Moreover, nominal use by the trademark holder is not sufficient to prove active usage. The Act follows these international trends. When the Act takes effect, the trademark revocation process for unused trademarks will be simplified and it will benefit individuals and corporations that wish to use these dormant trademarks. The Act also eliminates the one-year waiting period requirement after lapse of a pre-existing equivalent or similar trademark. It will allow a new mark to be registered as a trademark as soon as a pre-registered equivalent or similar mark lapses and loses its force as a trademark. That is a departure from the existing law which prohibited the registration of a new mark for one year in Korea if a pre-registered equivalent or similar mark had existed, even if it had lapsed. This modification will enable a trademark right to be swiftly established, saving time and expense in the filing process. Finally, the Act promotes greater transparency and knowledge about trademark registration status by requiring trademark registrations to be announced in the Trademark Gazette. Furthermore, by permitting a trademark examiner to correct trivial mistakes in registration documents on his/her own authority, and by extending the grace period for supplying missing registration materials from 14 days to two months, the Act makes the registration process more convenient for trademark applicants. These are welcome changes under the Act. They are expected to produce positive results that will significantly enhance the trademark filing process in Korea, for the benefit of both domestic and overseas corporations doing business in Korea. This is good news for the business community in Korea. –––––––––––––––– |
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Nicholas H. Park
