KIPO proposes Amendments to Trademark Act

The Korean Intellectual Property Office (KIPO) has recently proposed a number of significant changes. The Amended Trademark Act will take effect on July 1 2015. The table below gives a brief detail about those few amended acts.

Current Law

New law

Article 2(1)(vi), the actions that may be considered use of a Trademark under the act Does not include electronic use. The act will explicitly include ‘use in an electronic manner’ as one of the statutory types of trademark use.
Permits registration of a trademark that lacks distinctiveness if the mark has acquired secondary meaning, but only if the applicant can show that consumers can easily recognize the trademark as a source identifier. Act Lower this standard by deleting the word ‘easily’ from the language of the act, thereby showing greater respect for the goodwill of trademarks that already function as source identifiers in the marketplace.
Applicants must wait one year before registering a mark that is similar or identical to a registration that has recently been expunged from the register. Eliminate this one-year wait.
If multiple applications are filed on the same day for the same mark, if the applicants cannot agree among themselves which application has priority, a lottery will be held to decide the issue. Grants priority to the applicant that first used the subject mark before conducting a lottery.
Does not permit a junior trademark applicant to obtain a registration for an existing mark Recognizes such consent among the parties, provided that registration of the junior trademark would not create confusion among consumers.
Petitioner has legal standing to initiate a non-use cancellation action only where the petitioner has a specific legal interest affected by the trademark Eliminates the standing requirement & makes it easier to cancel the unused marks
Non-use cancellation decisions were not retroactive Expands the retroactivity of non-use cancellation decisions

By Akshatha Karthik

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