| 410
.jpg "_AdobeStock_743988851(2).jpg") Overview On October 6, 2023, a partial legislative amendment to the Korean Trademark Act to introduce the ‘Trademark Coexistence Agreement’ passed a plenary session of the National Assembly. The following are the major amendments in the new law. Summary ◎ Introduction of the Trademark Coexistence Agreement (Letter of Consent) - Allowance of later-filed trademark application by obtaining the consent of the pre-registered trademark holder or the prior applicant According to the introduction of the Trademark Coexistence Agreement (Letter of Consent), in the case that a pre-registered trademark holder or a prior applicant agrees, a later filed identical/similar trademark can be registered. This amendment is applied to, even though a trademark application is filed before this amendment is implemented, if the registration of the trademark application is not yet decided at the time when this amendment is implemented, such application is benefited retroactively. In other words, from May 1, 2024 onwards the trademark coexistence agreement can be submitted to overcome a refusal ground regardless of the filing date of the application. However, this amendment will not apply where the parties intend to register identical marks for the same goods. - New cancellation ground for trademarks registered based on the trademark coexistence agreement A new cancellation ground will apply to trademarks registered based on the trademark coexistence agreement if it is used for unfair competitive purposes and causes consumer confusion and/or deception. If a registration is cancelled based on the above ground, the trademark owner may not register for a mark that is identical or similar to the cancelled mark in respect of goods which are identical or similar to the goods of the cancelled mark, until three years after the cancellation is confirmed. There is a three-year statutory period for requesting a cancellation trial based on new cancellation ground. ◎ Additional Tips for the Trademark Coexistence Agreement (Letter of Consent) - Conditional Letter of Consent where duration or region, etc., is limited, is not acceptable. However, such conditions can be freely added in a contract between parties. - Comprehensive Letter of Consent is not permitted, so that it should be a case specific. - Letter of Consent will not be useful if a refusal is based on a malice of the later applicant or a fame or reputation of prior mark. Also, certification mark or collective mark with geographical indication, as well as business emblem will not be applied the new co-existing agreement. - Partial consent is possible. - Letter of Consent can be also attached at the time of filing an application, not mention of at the time of responding to the refusal. - If a later mark is registered following Letter of Consent, the mark can be renewed without additional Consent. - Importantly, once the later mark is registered by the help of Letter of Consent of the prior right holder, if the prior right holder wishes to register for the identical or similar mark to the later mark, the prior right holder must seek Letter of Consent from the later mark owner. That is, there is no automatic reciprocal Consent. - The existence of Consent will be recorded in both trademarks’ registers. - The Letter of Consent can be revoked or withdrawn unilaterally once it is submitted to the KIPO. ◎ Trademark Distinctiveness acquired through use The new law stipulates that trademarks that are not inherently distinctive or that are descriptive or generic may nevertheless be registered if they have, as a result of the use that has been made of them, acquired distinctiveness. ◎ Automatic recognition of priority claims for converted applications Where an application is converted from one type to another (eg, additional goods registration to standard application, standard application to collective mark, etc), where the original application had a valid priority claim, the same will be recognized for the converted application. ◎ Expansion of refund of registration fees In case of trademark right lapses before a new trademark term starts, the renewal registration fees or the 2nd installation registration fees which have been paid before the new trademark term starts will be refunded. ◎ Extinguishment of rights following the death of a trademark owner According to the old trademark law, the trademark rights will expire the day after the three-year period ends, unless an heir timely records the transfer of a trademark registration within three years of the death of the trademark registrant, However, no provision addresses the case where there is no heir. According to the Amendments, such trademark rights for which no heir survives will immediately expire at the time of death. ◎ Relaxation of requirements for replacement of national registration with International Registration Among the requirements for the replacement of national registration with International Registration, the replacing national registration is not necessary to include goods/services of the International Registration, that is, “partial replacement” is allowed. ◎ Approval of a division of International Registrations Previously, it had not been possible to divide the international registrations unless the divided goods were being partially assigned to another party. By the new law, the applicants using the Madrid Protocol can also divide their application or registration for any of the designated goods.
|
|||
| List |
| prev | 2024 Season's Greetings |
|---|---|
| next |
