IP Newsletter | Summer/Fall 2016
	TRADEMARK, DESIGN & UNFAIR COMPETITION
	Comprehensive Amendments to the Korean Trademark Act
	The most recent amendments to the Korean Trademark Act ("Act") went into effect on September 1, 2016. One significant proposed change that was not made was the adoption of a consent system, which was unfortunately not included in the final round of amendments. Some of the major changes that were effected are summarized below.
	1. Legal standing no longer required to file non-use cancellation actions
	Previously, a party needed to have legal standing in order to petition for cancellation of a mark due to non-use. Standing could be established by showing, for example, that the party conducted business in the same industry as the designated goods or services of the challenged mark, or that they owned an application that was similar or identical to the challenged trademark.
	By eliminating this standing requirement, the amendment is expected to make it easier to cancel unused marks and thereby create a larger pool of available trademarks for new market entrants. On the other hand, brand owners are encouraged to review their portfolio and take appropriate measures if they own registered marks that are not in use in Korea.
	2. Delayed evaluation of similarity to senior marks
	Previously, the Korean Intellectual Property Office would issue an office action against a pending application if there was a similar or identical senior registration or application at the time the pending application was filed. Even if the senior registration was subsequently removed from the register, the examiner would still issue a rejection for the pending application because the senior mark existed as of the application date. The Act has been amended to address this problem by providing that similarity to senior marks will only be reviewed as of the time the registrability of the applied-for mark is being reviewed, rather than the application date.
	3. Elimination of one year bar against registering marks similar to expunged marks
	A potential applicant previously had to wait a year before registering a mark similar/identical to a registration that was expunged from the register. The intended purpose of this rule was to protect consumers from potential confusion. However, in order to give new market entrants more choices when selecting their trademarks, the amended Act eliminates this one year bar. While all other revisions concerning the registrabillity of a mark apply to applications that are filed on or after the effective date September 1, 2016, this change applies to applications which are examined on or after the effective date.
	4. Expanded restrictions against applications filed by agents
	The Act previously provided that an agent or representative of a party who owns a registered mark in a treaty member country could not register a similar or identical mark in Korea within one year of the termination of the agency relationship. If such a similar/identical mark was nevertheless improperly registered, the trademark owner had to file a cancellation action within five years of the registration date of the agent's similar/identical mark.
	The amended Act expands this provision to prohibit "any party who was in a contractual or business relationship, such as a partnership or employment, or other relationship" from registering a similar or identical mark. The amendment also deletes the one year time limitation, and effectively removes the statute of limitations by providing that the trademark owner may file an invalidation action (rather than a cancellation action) at any time.
	5. Limitations on trademark rights clarified
	The Act previously provided that a registered trademark right could not be enforced against a mark that solely indicated, "in a common way," a person's own name, appellation or trade name, portrait, signature, seal, famous pseudonym, professional name or pen name, or a famous abbreviation of any of the above, unless the mark was used for unfair competitive purposes. However, this limitation has been construed narrowly by courts, such that the stylization of marks, variations in English transliterations, and other minor differences have been interpreted as not being use "in a common way." The amended Act changes this term to "in accordance with customary practices," which will make it more challenging to assert a registration against a trade name being used in a stylized way, etc.
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	Sung-Nam KIM snkim@kimchang.com Angela KIM angela.kim@kimchang.com
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