|
|
|
|
| IP Newsletter | Spring 2014 |
|
|
|
|
|
|
TRADEMARK, DESIGN & COPYRIGHT |
|
|
|
Korea Joins the Hague Agreement, Amends Design Act |
|
|
|
The Korean Intellectual Property Office recently announced that Korea deposited its instrument of accession to the Geneva Act of the Hague Agreement Concerning the International Registration of Industrial Designs ("Hague Agreement") with WIPO. The procedures of the Hague Agreement will be effective in Korea as of July 1, 2014. Further, new amendments to the Korean Design Protection Act ("Act") will go into effect on July 1, 2014. |
|
|
|
Overall, these amendments will provide greater protection for parties that apply for design rights, and also make the design application process easier and more practical. We anticipate that more companies and individuals will utilize design registrations as an added tool to help protect and maintain their intellectual property interests in Korea. Some of the more notable changes are briefly discussed below. |
|
|
|
1. Implementation of International Design Applications |
|
|
|
Similar to the PCT for patents or Madrid Protocol for trademarks, international applications for designs may now be filed through a single application pursuant to the Hague Agreement. Specifically, it will be possible to forward a single design application to WIPO while designating several countries for registration of the design. |
|
|
|
2. Extension of Protection Period |
|
|
|
The duration of a design right under the amended Act has been extended from fifteen years from the registration date to twenty years from the application date. |
|
|
|
3. Reduction of Designs Eligible for Non-Examination (Partial Examination) |
|
|
|
The current Act allows applicants to file "non-examination" applications for designs of food, clothing, shoes, fabrics, bedding, calculators, stationery, computer graphics, icons, etc. (which will then be registered after a very basic review of formalities). However, the amended Act will reduce the types of goods that are eligible for non-examination as follows: |
|
|
|
| <Class 2> Clothing and fashion items |
| E.g., underwear, lingerie, corset, brassiere, pajama, clothing, hat, shoes, socks, stocking, tie, scarf, muffler, handkerchief, gloves, etc. |
| <Class 5> Fiber, sheet and fabrics |
| E.g., spun articles, lace, needlework, ribbon, string for ornamental purpose, fabric, sheets, etc. |
| <Class 19> Stationery, office supplies, fine art materials |
| E.g., writing paper, letter, card, stationery, calendar, book, note, fine art materials, printed matter, office supplies, etc. |
|
|
|
|
Thus, designs for food, bedding, curtains, computer icons or graphics are no longer eligible for non-examination. Applicants who wish to take advantage of the non-examination procedure for such designs must do so before July 1 of this year. |
|
|
|
Please also note that "non-examination" of a design will be referred to as "partial examination" after the amendment goes into effect. |
|
|
|
4. Adoption of Related Design System |
|
|
|
The current Similar Design system is abolished under the amended Act. The purpose of the similar design registration practice was to make clear the scope of what is similar to an earlier-filed principal design by requiring similar designs by the same registrant to be separately registered, and as a result such similar design registrations could not be maintained if the principal design registration was itself invalidated. |
|
|
|
The new amendment instead adopts a "Related Design" system, recognizing an independent scope of protection and duration for a Related Design, and thereby strengthening the protection for designs similar to an original design. An application for a Related Design must be filed within one year of the filing date of the application for the original design. Unlike the Similar Design system, a Related Design will continue to remain valid even if the original design is invalidated. However, the protection period of a Related Design remains identical to that of the original design. |
|
|
|
5. Claiming Exception to Public Disclosure |
|
|
|
To be valid, a design application generally cannot have been made public prior to the filing date of the application. However, an exception is available if the design application is filed within six months of a public disclosure. |
|
|
|
Presently, applicants must state their intention to claim this exception at the time of filing the application. The applicant must also submit documentation of the public disclosure within thirty days of filing the application. However, with the amended Act, the above exception to loss of novelty can be claimed even after filing the application, e.g., when an examiner issues a preliminary rejection or when a third party files an opposition or invalidation action. |
|
|
|
6. Changes to the Multiple Design System |
|
|
|
The current Act allows up to 20 multiple designs in one application, but only for designs which are designated for non-examination (non-examination applications are generally used for designs that are subject to rapidly changing trends, and are registered after inspection of only very basic formalities). The amended Act allows up to 100 designs for one application under the same class, regardless of whether the designs are subject to examination. |
|
|
|
In addition, pursuant to the new amendments, requests to keep a design secret or to lay open an application do not have to apply to the entire group of multiple designs. Further, registration may be granted or denied as to a portion of multiple designs only. |
|
|
|
7. Improved Procedure for Filing Applications |
|
|
|
Under the amended Act, examiners will no longer return design applications for re-filing due to substantive errors. Instead, the applicant may simply supplement the application, and the date of supplementation will become the new filing date. |
|
|
|
8. Discretionary Revisions to Applications by the Examiner |
|
|
|
Under the amended Act, the examiner now will have the authority to make revisions to the application if there is an obvious error (e.g., typographical errors). |
|
|
|
Back to Main Page |
|
|
|
|
|
|
If you have any questions regarding this article, please contact: |
|
|
|
|
|
|
|
For more information, please visit our website: www.ip.kimchang.com |
|
|