Trademark Law updates
The Korean Intellectual Property Office (“KIPO”) had made a several amendments to the Korean Patent Act, Trademark Act, and Design Protection Act that came in force on 20 April 2022. The aim of these amendments is to improve the Intellectual Property Rights (“IPR”) laws and make it more accessible to the applicant which often incurred in formality mistakes in detriment of their IP Rights.
It is very rare for the international companies fail to meet the deadline requirements, however, due to the Covid-19 pandemic, which results into a sudden quarantine or hospitalization, it makes the companies difficult to act in a timely manner for meeting the deadline.
The amendments to the Trademark Law are intended to minimize the problem and below is a summary of amendments effective as of 20 April 2022:-
Extension of Trial Request Period
The deadline for responding to an Office Action has been extended from 30 days to 3 months.
Petition for Reviving Trademarks
The standard for reviving trademarks that have been extinguished or expired due to invalidity of trademark procedures and non-payment of registration has been relaxed. The owner may apply to revive the mark for “justifiable reasons”. However, it only applies to emergency situations where the applicant cannot undertake trademark procedures due to hospitalization or Covid-19.
Priority claims in divided applications
When dividing applications with priority claim, the date of priority of the resulting applications will be automatically recognized. However, this rule only applies to domestic applications.
Ex-officio Re-examination
If the examiner discovered any obvious reasons to refuse an application when it is granted for registration before its trademark right is established, the decision to register may be cancelled and the application be re-examined.
Meanwhile, there are additional amendments that will come into effect on 4 February 2023 and are as follows:-
Partial Refusal to register
If the refusal to register is only limited to certain goods and/or services, the application will still be granted for registration to the remaining goods and/or services.
Re-examination
In limited circumstances, a re-examination will be allowed after a registration rejection. This is where the reasons for rejection are likely to overcome, for example amending the goods and/or services.