IP Newsletter | Winter 2013/14
	TRADEMARK & DOMAIN NAME
	Changes to the Trademark Examination Guideline
	The Korean Intellectual Property Office (“KIPO”) has recently announced changes to the Trademark Examination Guideline (“Guideline”). These changes went into effect on January 1, 2014. The Guideline is used by KIPO examiners when reviewing trademark applications, and some of the key changes are discussed below.
	1. Two Letter Marks
	Article 6(1)(vi) of the Korean Trademark Act (“TMA”) prohibits the registration of marks that are “simple and common.” Under the previous Guideline, marks consisting of two alphabet letters were considered to fall within this provision, and thus, applications for those marks were rejected unless applicants were able to prove secondary meaning. However, the Guideline now allows the registration of two letter marks if they are perceived as a source identifier for any goods/services of a particular entity in the marketplace (for example, “LG” and “HP” would be recognized as distinctive under the revised Guideline). Acquired distinctiveness does not have to be established for such marks.
	2. Secondary Meaning
	The revised Guideline eases the standard for proving secondary meaning of a trademark. The amendment clarifies that the standard for acquired distinctiveness based on use does not have to rise to the level of a famous or well-known mark. Rather, it is now sufficient to prove that the mark is recognized as a source identifier for a specific entity in the marketplace for the designated goods/services. For certain type of goods, such recognition can even be limited to a particular region.
	KIPO also has been very strict in the past with respect to what type of evidence could be submitted to prove the acquisition of secondary meaning of a certain mark. The mark as used had to be identical to the mark for which the acquisition of secondary meaning was claimed, and the products/services in connection with which the mark was used had to be identical to the designated goods/services. In its revised Guideline, KIPO indicates it will adopt a more flexible approach and accept evidence of the mark as used or of the products/services used with the mark even if they are not exactly identical to the claimed mark or associated designated goods/services, as long as they are nearly identical.
	3. Imitation Marks
	The Guideline now specifically prevents the registration of marks that incorporate words or names made famous by or through the media, which includes the internet. For example, marks that include the names of celebrities, musicians, or athletes, etc., will be denied registration. This rejection ground also includes marks that consist of catch phrases or slang made popular by or through the media, as well as words confusingly similar to the names of television and broadcast shows and the like.
	The Guideline also indicates that where an applied-for mark is claimed to imitate a famous mark or a mark incorporating famous words, even if the applied for goods/services may not be closely related to the cited goods/services connected with the claimed imitated mark, the examiner will review the relationship between the compared goods/services broadly if the cited mark is a coined mark or is substantially similar or identical to the pending application. The amendment is based on the assumption that such an applicant must have been aware of the existence of the earlier mark.
	4. Mark Information
	Previously, only obvious errors in the description of goods and services for a mark were correctable by an applicant. However, the Guideline has been revised to permit amendments to correct obvious errors in the mark itself. For example, a mark that erroneously includes a state flag or international organization emblem may be modified.
	5. Agents or Representatives of Trademark Owners
	According to the TMA, an "agent" or "representative" of an entity which owns a mark protected in a foreign country (that is a member of an international treaty such as the Paris Convention, the Madrid Protocol, etc.) is not allowed to register a mark identical or similar to that entity's mark within one year after the termination of the agency relationship. The Guideline has been amended to extend the notion of "agent" and "representative," as it is not uncommon for former agents and representatives to try to circumvent this rule. Under the revised Guideline, if an applicant for such an identical or similar mark has a business relationship with such a former agent or representative, KIPO will be able reject the application (or cancel the registration) pursuant to this rule. Therefore, an application filed by an employee of a former agent will be treated as if it had been filed by the agent itself and may be rejected for that reason. Similarly, if an application is filed by another company owned by a former agent or which is represented by the former agent, the application may also be rejected for this reason.
	6. Intent to Use
	In March 2013, lack of intent to use was added as a possible rejection ground in the TMA. Initially, KIPO had indicated in their Guideline that it would generally require the submission of proof of intent to use where an application designated more than five classes (as well as in certain other contexts). However, this created a loophole because applicants would avoid the required submissions simply by dividing their applications so that each filed application designated less than five classes. In view of the ineffectiveness of this particular guideline, KIPO has decided to delete it from the list of examples of cases when evidence of intent to use should be submitted.
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	Young Joo SONG yjsong@ip.kimchang.com Nayoung KIM nkim@ip.kimchang.com
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