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| IP Newsletter | Spring 2015 | |
1. Dilution as a New Refusal Ground
Article 7(1)(x) of the amended Korean Trademark Act ("TMA") came into effect on June 11, 2014, and prohibits the registration of marks that can weaken the distinctiveness of another's famous trademark through blurring or tarnishment. The Guidelines have been amended to incorporate this dilution provision as another ground for refusing an application.
Specifically, the Guidelines indicate that applying for a third party's famous mark in connection with completely different or inappropriate goods/services will be seen as blurring or tarnishing the famous mark, respectively (e.g., designating "pianos" for the mark "KODAK" or "pornographic films" for the mark "CHANEL").
2. Consumer Confusion as a Basis for Determining Similarity
KIPO has always tended to place a strong focus on the similarity between the compared marks and goods/services when evaluating applications. As a result, later-filed marks often have been denied registration simply due to their apparent similarity to a senior mark, regardless of the existence of actual consumer confusion. In order to prevent this, the new Guidelines indicate that examiners should focus on the likelihood of consumer confusion between compared marks when determining whether the marks are similar.
3. Applications Filed by Related Applicants
The June 11, 2014 amendment to the TMA included a prohibition on registration of marks where the applicant first obtained knowledge of the mark from the original or good-faith owner through an agreement, transaction or other relationship (Article 7(1)(xviii)). The amended Guidelines further flesh out the standard for determining what is "an agreement, transaction or other relationship" under the foregoing provision, to include not only all formal relationships agreed in writing, but any relationship based on good faith (e.g., between a contestant and a judge presiding over a brand contest in which an application for the winning brand is filed).
4. Bad Faith Applications for Imitation Marks
Article 7(1)(xii) of the TMA prohibits the registration of marks that are similar or identical to "a mark that is known as a source identifier for a particular party" and have been filed in bad faith. Whether a mark is known as a source identifier for a particular party has usually been established through general fame evidence (that is, evidence that the mark is recognized by consumers in general in connection with the designated goods), including items such as sales figures, advertising expenditures, etc. However, the Guidelines have been amended such that a mark can be considered a source identifier even if it is recognized only by a subset of consumers with particular relevance or interest in the designated goods. In order to establish the foregoing, the Guidelines state that it will rely on whether the applicant knew the mark belonged to a third party and expected unfair profits, such as an increase in their sales.
5. Use of Third Party Registered Marks in the Goods Description
The amended Guidelines expressly provide that descriptions which use a third party's registered trademark as a generic term will be viewed as overly broad or ambiguous, and subject to refusal. For example, an application designating the good "computer programs for use on iPhones" will no longer be acceptable.
6. Registration of Slogans
In the past, slogans or mottos were generally denied registration due to lack of distinctiveness. However, the new Guidelines permit registration of marks comprising slogans or mottos if they are recognized as a source identifier or are not often used.
7. Miscellaneous
The new Guidelines make it easier for applicants to obtain a registration from KIPO by stating that priority claims may be accepted for applications even if they do not designate exactly the same goods/services as the previous application (previously, the marks and goods were required to be identical even if changes in one application were necessary to comply with the laws of other countries), and by permitting modifications to the trademark for "correction of obvious errors or size, [and] removal of minor portions."
The new Guidelines also provide protection not only for geographical indications ("GIs") currently protected under the Korea-European Union Free Trade Agreement, as well as GIs identified under the Korea-Canada Free Trade Agreement, which went into effect earlier this year.
In summary, with these new Guidelines, KIPO appears to be moving away from its current rather mechanical examination of trademark applications, which often results in automatic rejections, and instead developing a more practical approach with actual market circumstances in mind.
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Min-Kyoung JEE mkjee@ip.kimchang.com |
Nayoung KIM nkim@ip.kimchang.com |