Introduction of partial registration/rejection taking effect on February 4, 2023

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Currently, even if only part of designated goods/services in the trademark application contain reasons for refusal, if the applicant does not delete or amend the goods/services as rejected, the entire goods/services will be rejected as a whole.

In the Amendment, if only some of designated goods/services are rejected, the rest of designated goods/services having no rejection thereto are able to be registered, even when no further action such as deletion of rejected goods/services is taken.​

Under the new law, the Publication for Opposition and Notice of Allowance may be issued only once the rejection to part of the specification is irrevocably confirmed by not appealing the rejection.

As such, if there is no need to register for goods/services as rejected, the applicant does not need to take any further action but to wait for the rejection to be confirmed.

However, if the applicant wishes to promptly register for goods/services having no rejection, the deletion of or amendment to the rejected goods/services are still required, or a divisional application for either of rejected or allowed ones will be still considerable.

Moreover, under the new law, an appeal to the refusal may be lodged against only for the rejected goods/services, while previously the appeal may be only possible for all the goods/services inclusive of allowable descriptions, unless any is cancelled from the application.

Introduction of re-examination request taking effect on February 4, 2023​​​

The old trademark law stipulates that a request for Appeal against the Final refusal is always necessary to be filed before the Board of Appeal (Intellectual Property Trial and Appeal Board, IPTAB), should the applicant wish to further prosecute the application, even if the refusal can be easily resolved by amending goods/services such as pure deletion.

Also, under the old law, if the Final refusal requires some of goods/services to be amended, which will thereafter lead to allowance for registration, as a procedural protocol, an Appeal to the Final refusal should be even lodged for the application to be simply amended following the Final refusal, because only once the Appeal is lodged, the applicant will be given another chance to amend the application.

The new law allows the specification to be amended, even after the Final refusal, for curing such procedural defects, by adopting so-called “Re-examination request” like in the patent law and design protection law.

However, when another Final refusal will be raised after such Re-examination is filed, a Re-examination may not be filed anymore and the request for Appeal is only a resort to further prosecute the application.

Importantly, Madrid International Registration designating South Korea is not entitled to such Re-examination. 

Expansion of types of trademark use taking effect on August 4, 2022​​​

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Recently, various digital goods, in which trademarks are marked online or which may be unilaterally downloaded through online, are commercialized. Nonetheless, the old trademark law, with a traditional perspective only, defines a use of trademark, with an assumption of delivering or transferring goods off-line, that is, “physically”, for example selling bags at department stores and selling laptops at open markets, etc., thereby such virtual or de facto use of trademark which is conducted on-line only, was not enforceable against by a trademark right .

In the amendment, “the act of providing a trade-marked goods through a telecommunication” and  “the act of exhibiting, importing, or exporting the goods for this purpose” are included in the ‘use’ of a trademark under the new Korean Trademark law.

As such, subscribing to a document writing program, or providing applications in the App Store, or uploading / downloading of digital files such as software or computer programs inclusive of “e-books”, “emoticons”, etc., will be protected by a trademark law if a trademark is displaced on such digital goods.