IP Newsletter | Winter 2018/19
KIPO Amends Trademark Examination Guidelines
The Korean Intellectual Property Office (KIPO) recently amended its trademark examination guidelines, effective as of January 1, 2019. The major amendments are summarized below.
1. Stricter Examination of Non-Owner Marks on Famous Characters and Character Names
Under the KIPO's previous examination guidelines, trademark applications for characters or character names belonging to other parties could only be refused registration if such characters or names were already known among consumers as source identifiers (beyond the general fame of the character itself) based on their use in merchandising products, absent prior registrations for such characters or names. This has often made it difficult for a rightful character owner to oppose trademark applications filed by other parties in bad faith to free ride on the fame of the character. In view of the fact that characters and character names are commonly used for marketing purposes, especially for goods such as clothing, shoes, hats, stationery and toys, the revised examination guidelines have strengthened protection for famous characters and character names such that "imitation" applications can be refused regardless of merchandising activities relating to the character.
In addition, the bad faith of the applicant can be recognized under the revised examination guidelines when the applied-for mark is an imitation of a famous character or character name.
2. No Registrations for "Buzzword" Terms
The revised guidelines make it clear that "buzzword" terms or terms that become widely used in society before being associated with any particular product or company (e.g., "YOLO" and "K-POP") will be excluded from registration, on the ground that such registrations are contrary to the public interest. Such terms will be formally considered to fall within the category of "otherwise non-distinctive marks."
3. New Restrictions on Individuals Applying for Franchise Marks in Their Own Names
KIPO revised its internal examination practices last year to address the perceived possible abuse of trademarks by a number of Korean franchisors, where the trademarks relating to the franchise were not owned by the franchise company itself but rather the individual founder of the company, and franchisees were forced to pay high royalty amounts to these individuals. The revised trademark examination guidelines formalize KIPO's new internal practices, by requiring individuals applying for franchise trademarks in their own names to prove a bona fide intent to use the trademark for individual purposes before the application can be allowed. Under the revised guidelines, individuals applying for franchise trademarks in their own names are presumed to lack such intent, and KIPO will issue an office action rejecting the application on this basis. Such an office action can be easily overcome by changing the applicant to the franchise company using the mark.
4. Marks Comprising a Famous Geographical Name and "University" Can Be Distinctive
If a mark comprising a famous geographical name/location together with "University" has been widely used as the name of a university and has come to be associated by consumers specifically with that university, the distinctiveness of the mark can be recognized, and the mark can now be registered for goods and services other than education-related services.
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Jason J. LEE
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