IP Newsletter | Winter 2013/14
	TRADEMARK & DOMAIN NAME
	Proposed Amendments to the Korean Trademark Act
	The Korean Intellectual Property Office ("KIPO") has recently proposed some significant changes to the Korean Trademark Act ("TMA"). If passed by the National Assembly, KIPO hopes to have the proposed amendment go into effect as of July 1, 2015. Among the many changes suggested by KIPO, we have outlined the more notable ones below.
	1. Acknowledging "Electronic Use" of a Trademark
	Article 2(1)(vi) lists the types of uses that may be considered "use of a trademark" under the TMA. At present, these do not include “electronic” uses (such as on the internet or other similar platforms). While the development of e-commerce and other electronic services has led courts to judicially recognize such electronic uses of trademarks in specific cases, the proposed amendment to the TMA will explicitly include "use in an electronic manner" as one of the statutory types of trademark use.
	2. Facilitating Trademark Registrations
	(a) Proving secondary meaning will become easier.
	The current TMA permits registration of a trademark lacking distinctiveness if the mark has acquired secondary meaning, but only if the applicant can show that consumers are “easily” able to recognize the trademark as a source identifier. The proposed amendment lowers this standard so that "easily" is deleted from the language of the TMA, showing greater respect for the goodwill of trademarks that already function as source identifiers in the marketplace.
	(b) More trademark choices for new market entrants.
	A potential applicant currently must wait a year before registering a mark similar or identical to a registration that recently has been expunged from the register. The purpose of this rule is to protect consumers from any potential confusion. However, the proposed amendment eliminates this one year wait, giving new market entrants more choices when selecting their desired trademarks.
	(c) Prior users will be given priority in same-day filings.
	Currently, where 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 is held to decide the issue. The amendment gives priority to the applicant that first used the subject mark before conducting a lottery.
	(d) Consent letters will be accepted.
	KIPO currently does not permit a junior trademark applicant to obtain a registration for an existing mark even if a letter of consent from the senior registrant is submitted consenting to the registration grant. However, in order to harmonize with global trademark standards, the TMA will be amended to recognize such consent among the parties, as long as granting registration for the junior trademark will not create confusion among consumers.
	(e) Marks that may cause dilution will be denied registration.
	Trademarks that create consumer confusion with famous marks are not allowed to be registered under the TMA. The amendment also prevents the registration of marks that may potentially dilute a famous mark.
	(f) Unfair applications will be denied registration.
	In addition to currently-recognized grounds for denial, the proposed amendment provides that a registration may be denied on the basis that the application is unfairly made or lacking in good faith. For instance, an application may be denied where the applicant obtained knowledge of the mark from the original or bona fide owner through an agreement, transaction, or other relationship and contrived to register the mark before the owner was aware of the application.
	3. Changes in Filing Requirements, Effective Dates of Cancellation Actions
	Currently, a petitioner has legal standing to initiate a non-use cancellation action only in certain situations where the petitioner has a specific legal interest affected by the trademark, such as if he/she either is engaged in business in the same industry as the trademark registrant or owns an application that is similar or identical to the trademark. However, the proposed amendment will ease matters for new market entrants by eliminating the standing requirement, thus potentially creating a larger pool of available trademarks by making it easier to cancel unused marks. The proposed amendment also makes it more difficult for a registrant to produce evidence only of token use to oppose cancellation by providing that any evidence of use dated less than three months prior to a cancellation petition will be disregarded.
	Moreover, the proposed amendment expands the retroactivity of non-use cancellation decisions. Under the previous law, such decisions were not retroactive at all, and they have been already partly retroactive since October 6, 2013 (provisions regarding applicability need to be kept in mind).
	4. Invalidation Actions - Statute of Limitations
	Invalidation actions may be filed based on several grounds, including similarity to a senior registered mark, or the fame of a prior used mark. While there is generally no set deadline to file invalidation actions as to most bases, currently, actions based specifically on similarity must be filed within five years of the registration of the adverse mark. With a view to protecting the current market status, the proposed amendment implements a five-year statute of limitations for invalidation actions based on fame also, consistent with the statute of limitations for actions based on similarity.
	5. No Damages for Trademarks Not in Use
	The Supreme Court previously issued a decision denying damages to a trademark owner due to its failure to use the mark on the designated goods, despite the existence of trademark infringement. The proposed amendment will incorporate this decision into the TMA by expressly denying a trademark owner's claim for damages if the subject registration is not in use, discouraging parties from registering marks without an intent to use and then later demanding infringement damages or royalties from third parties.
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	Sung-Nam KIM snkim@ip.kimchang.com Nayoung KIM nkim@ip.kimchang.com
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