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| IP Newsletter | Summer/Fall 2014 | |
1. Secondary meaning easier to prove
The previous TMA permitted registration of trademarks lacking distinctiveness if the mark had acquired secondary meaning, but the applicant was required to show that consumers would easily recognize the trademark as a source identifier. The amendment lowers this standard by deleting "easily" from the TMA, in order to respect the goodwill of trademarks that may already function as source identifiers in the marketplace.
2. Marks that may cause dilution are denied registration
Trademarks that create consumer confusion with famous marks already are not allowed to be registered under the TMA. However, the amendment further prevents the registration of marks that may potentially dilute the distinctiveness and/or reputation of a famous mark.
3. Unfair applications are denied registration
The amendment also specifically denies registrations for applications filed for a mark which is identical or similar to a third party's mark in connection with identical or similar goods, despite knowledge that the third party is using or planning to use the mark pursuant to a partnership agreement, employment relationship, business transaction, or other relationship.
4. Reflection of changes in unfair competition law
As of January 31, 2014, the Unfair Competition Prevention and Trade Secret Protection Act adopted a "catch-all" provision, designed to prevent a party from infringing a third party's economic interest by using (through a method that contravenes fair trade practice or competition order) that third party's product for business purposes without authorization, where the third party's product was the result of considerable effort and investment.
The amendment to the TMA prevents use of a registered mark by a registrant and/or licensee without consent of the third party, if use of the registered mark falls within the scope of the above UCPA "catch-all" provision. Further, the registered mark can be cancelled within five years from the registration date for violating the "catch-all" provision if a cancellation action is filed by the party whose economic interests are being infringed.
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Sung-Nam KIM snkim@ip.kimchang.com |
Nayoung KIM nkim@ip.kimchang.com |