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Latest News: 05-31-2017 (Newsletter Issue 10/17)
Design Protection Act Amended
Several amendments to the Design Protection Act were published on March 21, 2017. The amendments will come into effect on September 22, 2017.

Important changes are the following:

- Grace period for design applications extended
The amended act extends the six-month grace period to one year. The amendment also replaces the text "when filing a response to an office action issued by KIPO" with "until KIPO issues a final decision whether to grant a design registration". As such, an applicant will be able to claim the grace period at any time while the application is pending.

- Proof of priority eased
Under the existing act, in order to claim priority an application must include drawings that are substantially identical to the drawings in the foreign priority application and a copy of the priority application certified by the foreign government.
Under the amended act, KIPO will accept certain other documents to confirm the details of the foreign priority application.

- Increased penalties
Several fines will be increased such as the fine for perjury by a witness, expert witness or interpreter under oath before the Intellectual Property Trial and Appeal Board (IPTAB), the fine for falsely indicating that a design has been registered or applied and the fine for fraudulently obtaining a design registration or an IPTAB decision related to a design.

Source: www.kimchang.com


03-14-2017 (Newsletter Issue 5/17)
Registration of Minimalist Designs Easier Now
The Korean Intellectual Property Office amended the Design Examination Guidelines, effective as of January 1, 2017. The most notable of the amendments is that the creativity threshold for design registrations has been substantially lowered.

Previously, examiners often found it easy to reject design applications without citing any prior art, if the design was composed of well-known shapes or patterns, such as basic 2D and 3D geometric shapes. As a result, minimalist designs (which are designs intentionally stripped of superfluous elements) usually have been held to be unregistrable under the Design Protection Act and therefore not protectable.

According to the amended Guidelines, if the product design is composed in a manner that has never been seen before in the relevant field, the design can be deemed as creative regardless of whether it is comprised of basic shapes or patterns. The amended Guidelines also require examiners to cite supporting evidence when refusing a design application due to lack of creativity. Only very common manners of creation or obvious forms of expression in the product field are now exempt from the evidence requirement, such as a generic car design for a car toy.

For further information, please see the news of Kim & Chang here

Source: Kim & Chang, South Korea


08-30-2016 (Newsletter Issue 15/16)
Major Amendments to Trademark Act
The National Assembly has approved a major amendment to the Korean Trademark Act ("Act"), which will go into effect on September 1, 2016. This is the first comprehensive amendment to the Act in 26 years.

Important changes have been highlighted below:
- Legal standing no longer required to file non-use cancellation actions
- Delayed evaluation of similarity to senior marks
- Elimination of one year bar against registering marks similar to expunged marks
- Expanded restrictions against applications filed by agents
- Limitations on trademark rights clarified
- "Electronic use" of trademarks acknowledged as one of the recognised types of use.
- Confirmation of scope trials can be filed for a subset of designated goods
- Broader grounds for rejection of certification marks

For further information, please see the article of the law firm Kim & Chang here

Source: Kim & Chang, South Korea


05-18-2016 (Newsletter Issue 9/16)
Trademark Examination System Amended
The Korean Intellectual Property Office (KIPO) recently revised several aspects of the examination system for trademarks in order to improve the convenience of applicants. Some of the most important changes include the following:

- Expansion of the scope for amendments regarding product classes:
Under the previous regulations, it was not permitted to add an additional product class as this was regarded as a change of the original content of the application. For example, it was not permitted to add the class "business suits" to an already existing class "clothes" in order to specify the scope of protection. According to the new regulations, however, it is permitted to add additional product classes as long as these classes do not extend the scope of protection.

- Extension of the term for submitting statements of opinion:
Under the new examination standards, the time period for submitting a statement of opinion in response to office actions was extended from previously two months to four months calculated from the day of receipt of the office action.

Source: www.epo.org


05-18-2016 (Newsletter Issue 9/16)
Trademark Act Amended
The Korean Trademark Act has been amended, effective from September 1, 2016. The main changes relate to non-use cancelations and unregistrable trademarks.

- Non-Use Cancelation Trials:
Under the current Korean Trademark Act, only an interested party can file a non-use cancelation action. However, under the amended Korean Trademark Act, any person will be allowed to do this.

Under the current Act, an unused trademark right is extinguished from the date the non-use cancelation trial decision becomes final and conclusive (i.e., there is no retroactive effectiveness). However, under the amended Act, an unused trademark right shall be extinguished from the date the non-use cancelation action was filed with the Trial Board, which means there will be retroactive effectiveness.

- Unregistrable Trademarks:
Under the current Korean Trademark Act, whether a trademark application is confusingly similar to another person’s prior registered mark is determined on the basis of the date when the junior trademark application was filed. However, under the amended Korean Trademark Act, it shall be determined on the basis of the date when the junior trademark application is examined. This means that if the cited prior registration has been invalidated, canceled, abandoned, or assigned to the junior applicant, it will no longer be an obstacle.

Under the current Korean Trademark Act, an identical or similar trademark application should be filed, in principle, one year after another person’s prior registered mark has been extinguished. However, under the amended Korean Trademark Act, this requirement has been removed.

Source: INTA Bulletin, May 15, 2016, Vol. 71, No. 9
Contributor: Markkorea Patent and Law Firm, South Korea
Verifier: DK Choi & Partners, South Korea


05-02-2016 (Newsletter Issue 8/16)
Accession to Singapore Treaty
WIPO has announced the accession to the Singapore Treaty on the Law of Trademarks by the Republic of Korea on April 1, 2016. The Treaty will enter into force on July 1, 2016.

Source: www.wipo.int


01-20-2016 (Newsletter Issue 1/16)
Design Examination Guidelines Amended
The Korean Design Examination Guidelines ("Guidelines") have been amended effective October 1, 2015 to encourage examiners at the Korean Intellectual Property Office ("KIPO") to treat design applications with greater flexibility during examination. Some of the more notable amendments are outlined below.

1. Designs of Sets of Articles
Under the Design Protection Act ("DPA"), if two or more products are used together as a set (i.e., a set of utensils, a set of tea apparatus, and a set of smoking apparatus etc.), the design of the entire set may be registered as a single design as long as the set constitutes a coordinated whole. However, in practice, KIPO examiners usually did not grant registrations for sets of articles unless the set was one of those explicitly listed as an example in the Enforcement Decree of the DPA. The amended Guidelines eliminate this practice and specify that examiners should grant a registration for a set of products if the individual products genuinely constitute a set, the products are all used at the same time, and the set as a whole has a unified design.

2. Single Application for Single Design
This amendment makes clear that an article comprising several different parts that can be physically separated from each other still may be filed as a single design, as long as the entire article is traded in the market as one product.

3. Priority and Amended Drawings
In order to claim priority, the presented drawings must be identical to the drawings submitted in the original priority application. However, because Korea has a number of different formal requirements for drawings compared to other jurisdictions, KIPO often requires foreign applicants to amend the drawings in their design applications. Problems sometime arise in this regard because material amendments to the drawings in a Korean design application are not allowed after the application has been filed, and in practice whether an amendment is "material" has been determined by comparing the amended drawings with the drawings in the Korean design application as filed. As a result, foreign applicants who amend their drawings pursuant to a request from KIPO have often subsequently received an office action for making material amendments to the drawings. The amended Guidelines now recommend that examiners should consider the drawings in the original priority application as well as the drawings in the Korean application as filed when they decide whether or not material changes have been made.

4. Registrability of Screen Images
Under the amended Guidelines, neither the size nor location of a screen image (such as a graphical user interface or icon) is to be considered when determining similarity to other designs.

Further, the creativity of a screen image ordinarily is evaluated based on the claimed portions of the design only (which must be depicted in the drawings with solid lines), but under the amendment, the function or usage of other portions of the drawings (depicted with dotted lines) also can be considered if necessary to fairly evaluate such creativity.

Source: www.kimchang.com


06-16-2015 (Newsletter Issue 9/15)
Trademark Examination Guidelines Changed
The newly amended Examination Guidelines ("Guidelines") of the Korean Intellectual Property Office ("KIPO") went into effect on January 1, 2015. The following are some of the more notable of the many changes made to the Guidelines.

1. Dilution as a new refusal ground
2. Consumer confusion as a basis for determining similarity
3. Applications filed by related applicants
4. Bad faith applications for imitation marks
5. Use of third party registered marks in the goods description
6. Registration of slogans
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.

For further information, please view the article of our contributors Ms Jee and Ms Kim from Kim & Chang here

Source: www.kimchang.com


11-25-2014 (Newsletter Issue 18/14)
Batch Examination Available
The Korean Intellectual Property Office (KIPO) recently announced that batch examination is now available for all types of IP application. Batch examination allows an applicant to pool together multiple IP applications related to a common product into one examination basket to be processed according to the applicant's designated timeline. Through batch examination, the applicant can seek the examination of multiple applications within a unified examination timeframe, which can be set according to the applicant's request. Applications that qualify for batch examination include trademark applications and design applications as well as patent and utility model applications.

Source: Kim & Chang Intellectual Property, South Korea


10-28-2014 (Newsletter Issue 16/14)
Amendments to the Korean Trademark Act
Amendments to the Korean Trademark Act ("TMA") have been published on 11 June 2014, which are effective immediately. The amendments apply to marks filed on or after 11 June 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 31 January 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.

Source: Kim & Chang, South Korea


04-16-2014 (Newsletter Issue 7/14)
Joins the Hague System
The Republic of Korea has deposited its instrument of accession to the Geneva Act of the Hague Agreement for the International Registration of Industrial Designs.

With its accession, which takes effect from 1 July 2014, the Republic of Korea joins the WIPO-administered Hague system for the International Registration of Industrial Designs. This will bring the membership of the system to 62.

The Hague system makes it possible for an applicant to register industrial designs in multiple countries by filing a single application with the International Bureau of WIPO. By allowing the filing of up to 100 different designs per application, the system offers significant opportunities for efficiency gains.

It also simplifies the process of multinational registration by reducing the requirement to file separate applications with the IP offices of each Hague member country/region in which protection is sought. The system also streamlines the subsequent management of the industrial design registration, since it is possible to record changes or to renew the registration through a single procedural step.

Source: www.wipo.int


03-04-2014 (Newsletter Issue 4/14)
Official Fees Increased
The Korean Intellectual Property Office (KIPO) announced official fee increases for filing applications and Requests for Examination. The changes came into effect on 1 March 2014.

The official application fee is now KRW 72,000 (instead of KRW 66,000) for one class. The online application fee is now KWR 62,000 (instead of KRW 62,000) per class.

Source: Kim & Chang, South Korea


06-14-2013 (Newsletter Issue 9/13)
Amendments to Trademark Act Introduced
The National Assembly recently adopted a bill introduced by the Korean Intellectual Property Office (KIPO) that will amend the Trademark Act. The amended provisions of the act will be effective from October 6 2013 and will include the following:

- Non-use cancellation actions
Non-use cancellation actions will have some limited retroactive effect under the amended bill. An application that is blocked by a senior conflicting mark will be able to overcome this issue if the senior mark is successfully cancelled by a non-use cancellation action.

- Prior use of trade names
Under the amended act, a party that uses its name, trade name or any other personal identifiers as a trademark without bad-faith intent, in accordance with customary practices, will be able to continue such use without risking trademark infringement claims from the owner of an identical or similar registered mark, provided that such use started before the application date of the identical or similar registered mark.

- Relief measures following failure to comply with filing deadline. The amendments also include relief measures for applicants that failed to file a response to an office action within the two-month deadline. Such applicants will be granted an additional two-month period from the deadline in which to file a request to reopen the examination of their applications. However, the response to the office action must be filed in combination with the request to reopen the examination.

For more information, please check the article of Kim & Chang here

Source: Kim & Chang, South Korea


09-02-2012 (Newsletter Issue 13/12)
Announcement with respect to Examination Guideline
The Korean Intellectual Property Office (KIPO) announced amendments to the examination guideline on August 17, 2012. KIPO is not going to refuse a trademark application based on a similar prior service mark anymore unless the prior service mark owner files an opposition. Under the same rule, KIPO is not going to refuse a service mark application based on a similar prior trademark anymore unless the prior trademark owner files an opposition.
Before the announcement the Examiner refused trademark application based on a similar prior service mark and vice versa.

Source: Markkorea Patent and Law Firm, South Korea


03-27-2012 (Newsletter Issue 5/12)
Official Fees Increased
The official fee system in trademark matters was recently amended. Under the new regulation, additional fees will be charged for trademark applications, registrations and renewal petitions designating over twenty goods/services in one class.

An additional fee of KRW 2,000.- (approx. EUR 1.40 ) will be incurred for each designated good/service in excess of twenty per one class. The amended regulation enters into force as of April 1, 2012.

Source: Kim & Chang Intellectual Property, Seoul, South Korea


03-27-2012 (Newsletter Issue 5/12)
Amendments to Trademark Act
The amendment to the Korean Trademark Act ("TMA") became effective as of March 15, 2012. Notable changes are as follows:

1. Protection of Sound and Scent Marks
Under the amended TMA, it is possible to protect sound or scent marks as long as they are capable of graphical representation (for example by way of a sign, character or figure).
2. Recognition of Certification Marks
It is also possible to apply for and obtain certification marks.
3. Abolishment of Recordation Requirement for Exclusive Licenses
Previously, an exclusive license was required to be recorded with KIPO to be effective. However, such requirement has been abolished as of March 15, 2012.
4. Statutory Damages for Trademark Infringement
The amended TMA implements a system of statutory damages, in which a trademark owner will be able to claim damages for up to KRW 50,000,000 instead of claiming actual damages.

For further information please also check the article of Kim & Chang Intellectual Property, South Korea here

Source: Kim & Chang Intellectual Property, Seoul, South Korea


08-02-2010 (Newsletter Issue 13/10)
Fee Schedule Revised
The Korean Intellectual Property Office (KIPO) has announced a new fee schedule, effective July 2010.

To access the list of fees please click here


06-01-2010 (Newsletter Issue 11/10)
New Installment Payment Changes Postponed til July, 2010
The Korean Intellectual Property Office (KIPO) has postponed the new changes to the trademark fee payment until the end of July, 2010.

KIPO initially announced that the changes should be effective from June, 2010, as reported in the May Newsletter. For more information please click here


Source: www.ajupatent.com

05-05-2010 (Newsletter Issue 10/10)
Renewal Process/New Installment Payment Changed
Effective by June 2010, a registered trademark can be renewed without any separate examination.

Furthermore, a five-year installment payment of trademark registration fees will be introduced:
Ten years of trademark registration fees have currently been based on a lump-sum based payment. Starting June 2010, however, the introduction of this system will allow customers to pay the first portion of trademark registration fees at the time of registration and the second portion within five years before the term of trademark rights expires.


Legal basis is the Trademark Act, last amended on June 11, 2014, and said amendments became effective on June 11, 2014. South Korea is a member of the Madrid Protocol.
Trademark protection is obtained by registration. Unregistered marks are generally not protected under the Trademarks Act, although the owner of a well-known or famous mark is given some protection under the Trademark Act by way of preventing others from obtaining a trademark registration for an identical or similar mark. South Korea follows the first-to-file system.
Although Korea has adopted the International Classification of Products and Services, (“NICE Classification”) for all applications and renewals filed from March 1, 1998, and has dropped the former Korean National Classifica­tion of Goods/Services, Korea modified the NICE Classification by combining it with the former local classification of goods and services. The Korean Version contains the same class headings as those of the NICE Classification in description through all the classes. However some goods and services listed in the NICE Classification were omitted for the Korean Version. Instead, the Korean Version has inserted a number of goods or services with which Koreans are well accustomed, most of which were selected from the former local classification. For applications filed before March 1st, 1998, the old classification of 53 goods and 12 service classes is still valid.
A trademark is conventionally defined as a sign, a character, a figure, a three-dimensional shape or any combination of colour with the preceding items. However, protectable as trademarks are also colour marks, 3-D marks, hologram marks, motion marks, sound marks, scent marks and other types of visually perceivable objects .
The following trademark types are registrable: trade marks, service marks, collective marks and certification marks.
The application is filed at the Korean Intellectual Property Office (KIPO).
Multiple-class applications are possible.
Foreign applicants need a local agent.
Local agents require a power of attorney (POA), specific or general, to prosecute an application. A general POA is valid for all future applications as well once it is registered at KIPO. It is posible to restrict a general POA.
Foreign applicants do not need a domestic domicile.
The application process includes a formal examination, an examination of distinctiveness and a search for prior trademarks.
KIPO does cross-examination of trademarks and service marks. That is, KIPO refuses a trademark application based on a similar prior service mark and KIPO refuses a service mark application based on a similar prior trademark.
The processing time from first filing to registration or first office action is approx. 9 to 12 months.
The trademark application is published in the Trademark Gazette prior to registration.
National:
The opposition period is 2 months (30 days for applications filed before July 1st, 2007) from publication date of the application.

Details regarding the Opposition Period against designation of IR Mark are available in our publication on this topic here
Protection begins from the date of registration. A trademark registration is valid for 10 years from the date of registration. The registration is renewable for periods of 10 years.
The grace period for renewals is 6 months after the expiration date of the trademark.

Further practical details are available in our publication on this topic here
Trademarks may be subject to cancellation if they remain unused for three or more consecutive years after their registration. Subsequent use of the trademark can restore protection if no party has requested cancellation due to non-use in the meantime.

Further practical details are available in our publication on this topic here
The official fee for filing a trademark application is KRW 72,000 for one class. The online application fee is KRW 62,000 per class. An additional fee of KRW 2,000 will be incurred for each designated good/service in excess of twenty per one class.
Registration fees can be paid either via two installment payments or on lump-sum basis. The fee via the installment payments is KRW 132,000 for each installment and KRW 132,000 per classification in case of multiple applications. The fee via the lump sum is KRW 211,000 and another KRW 211,000 per classification in case of multiple applications.

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Practical details on licensing procedures, requirements and effectiveness are available in our publication on this topic here.
Search type First class Add. class
Word Mark Search (availability) 420,00 € 270,00 € 
Word Mark Search (identical) 390,00 € 240,00 € 

The Prices above are SMD Group Search Fees
Country Index is a free service of SMD Group. We thank the following law firms for their assistance in updating the information provided.

Country Survey
05-16-2016
Kim & Chang Intellectual Property, Seoul, South Korea

11-19-2014
Kim & Chang Intellectual Property, Seoul, South Korea

06-28-2013
Kim & Chang Intellectual Property, Seoul, South Korea

03-30-2012
Kim & Chang Intellectual Property, Seoul, South Korea

12-19-2011
Kim & Chang Intellectual Property, Seoul, South Korea



SungAm Suh International Patent & Law Firm



Kyung-Min (Matthew) SUH

Kyung-Min (Matthew) SUH
9F, Hyunjuk B/D, 114 Yeoksam-ro, Gangnam-gu
Seoul
South Korea (KR)
Tel +82 2 557 4343
Fax +82 2 557 8471/2
jenny@sungampat.com
www.koreaip.com

SungAm Suh International Patent and Law Firm was founded in 1986 by Mr. Man-Kyu SUH, a former trademark examiner & Director of the Legal counsel Team from the Korean Intellectual Property Office (KIPO), thus we can place special emphasis on maintaining an effective relationship so as to facilitate smooth and timely processing of clients’ projects within governmental agencies.

From its inception, Sungam Suh International Patent Law Firm has handled a great deal of cases from many parts of the world. In addition to our international clients, we handle many domestic clients as well.
We provide our clients with the top professional and effective legal advice in addition to possessing a keen understanding of what each client needs. At Sungam Suh Patent and Law Firm we base our reputation on hard work and a high level of professionalism. This combination has provided our clients with success along with a great deal of satisfaction.

The Korean Intellectual Property Office (KIPO)
Complex Daejeon Building 4
189, Cheongsa-ro
Seo-gu Daejeon
302-701
Republic of Korea
Tel +82 42 481 5073
Fax +82 42 472 3459
Mail kipoicd@kipo.go.kr
www.kipo.go.kr

World Intellectual Property Organization (WIPO)
34, Chemin des Colombettes
1211 Geneva 20
Switzerland
Tel +41 22 33 89 11 1
Fax +41 22 73 35 42 8
www.wipo.int