The Korean Customs Office Protects Patent and Design Rights

The scope of protection for intellectual property rights under the Customs Act expands to Design and Patent rights, and the revised Act will take effect on July 1^st, 2013. Therefore, a person who has already registered the following intellectual property rights pursuant to the relevant Act may register with the customs in order to use the customs surveillance services.

1. Trademark rights which are registered under the Trademark Act
2. Copyrights and neighboring rights pursuant to the Copyright Act
3. Seed protection rights which are registered under the Seed Industry Act
4. Geographical indications rights or geographical indications registered under the Agricultural Products Quality Control Act or the Quality Control of Fishery Products Act, or designated for the protection under treaties, agreements, etc.
5. Patent rights which are registered under the Patent Act
6. Design rights which are registered under the Design Protection Act

The Revision to the Korean Trademark Act

Revision to the Korean Trademark Act passed the Korean National Assembly on April 2013 and will take effect starting on October 6^th 2013. There are notable changes in the recent revision about the abolition of a six-month priority period for a successful petitioner in the non-use cancellation trials. Important changes in the revision are highlighted below.

      (1) The revision with respect to the non-use cancellation trial system

The time of determining whether a trademark is identical/similar with/to a prior registered trademark changes from the time when the trademark is filed to the time when the trademark is allowed to register. Also, a six-month priority period for a successful petitioner of a non-use cancellation trial to file a trademark application is abolished, and the first-to-file system is applied.

Under the present Trademark Act, when an application for a trademark is rejected based on the ground that the filed trademark is similar to a registered trademark, the applicant may raise a non-use cancellation against the registered trademark. However, the registrant has often avoided the registered trademark from being cancelled by a joint plot of the registrant and a conspirator. For example, when a non-use cancellation trial is filed, the registrant who does not have any use evidence of the trademark have the conspirator to file another non-use cancellation trial against the same trademark registration; the registrant abandons the registered trademark; and then the conspirator files a trademark identical to the abandoned mark the next day and obtains trademark registration.

In case the registrant abandons the trademark registration, the abandonment is usually published a week later, so the conspirator may file a new application first while the other petitioner who is unaware of the abandonment of the mark loses the chance to file. Ultimately, the conspirator obtains a trademark registration and the original registrant can get back the same trademark right through an assignment proceeding.

However, under the revised Trademark Act, such approach above is not possible due to the changes in time determination of the trademark similarity from the time of filing to the time of allowance and the abolition of the six-month priority period. A trademark applicant who received a rejection due to a prior registered trademark and filed a non-use cancellation trial does not need to go through the process of re-filing the trademark application after a cancellation trial.

     (2) Regarding the period for submission of a written opinion

An applicant who did not submit the written opinion to the office action by the due date may submit a request a Continuation of a Procedure and a written opinion within two months from the due date, and then, the process of examination will resume.

     (3) The requirement of the prior use right in regard to TRADE NAME

     becomes more relaxed

The revised Trademark Act relaxes the requirement for Prior User’s Right only for the TRADE NAME to protect the small businesses. The prior user may continue to use the trade name as a trademark when the trade name was used in good faith prior to the application date of the conflicting registrations. 

The revised Act deleted another condition to prove that the trade name has been recognized among Korean consumers as a specific indicator by the prior use.