Amendments to Korean Patent Act, Utility Model Act and Trademark Act

Amendments to Korean Patent Act, Utility Model Act and Trademark Act proposed by the Korean Intellectual Property Office (“KIPO”) have recently been passed by the National Assembly, and such amendments are expected to be proclaimed in June 2014.  Of the many changes made in these amendments, the more notable changes are introduced as follows:

1. Amendments to Korean Patent Act and Utility Model Act (Effective as of January 1, 2015)

The revised Korean Patent Act and Utility Model Act are expected to take effect as of January 1, 2015, and the current Patent Act and Utility Model Act apply to any applications filed before January 1, 2015.  Specifically with regard to PCT applications, a filing date of the PCT international application is considered as an effective filing date of the Korean patent application with the KIPO.  Therefore, the provisions for an extended time for submission of a Korean-language translation (specified in (2) below) and a correction of any errors in a Korean-language translation (specified in (3) below) will apply to the PCT international applications filed on or after January 1, 2015. 

(1) A patent application prepared in a foreign language can be filed (a Korean-language translation thereof must be submitted later)

The current Patent Act requires submission of application materials prepared in Korean-language upon filing of the patent application. 

According to the revised Patent Act, in order to secure an effective filing date of the patent application, an applicant can file a patent application prepared in a foreign language (i.e., English, Japanese, or other languages designated in the enforcement rules by the KIPO).  If a patent application was initially filed in a foreign language, a Korean-language translation thereof must be submitted within 14 months from the priority date or the filing date if there is no priority claim. 

(2) 1-month extension for submission of a Korean-language translation of a PCT application

According to the current Patent Act, a Korean-language translation of a PCT application as for its specification, claims and any text matter of drawings must be submitted within 31 months from the priority date, in order for the PCT application to enter into the national phase.

According to the revised Patent Act, if the applicant presents his/her intent to enter into the national phase within 31 months from the priority date and submits the requests for extension of time for submission of the Korean-language translation thereof, the applicant may then obtain a 1-month extension for submission of such translation.

(3) Correction of errors in a Korean-language translation of a PCT application

According to the revised Patent Act, any errors contained in a Korean-language translation of a PCT application entered into the national phase may be allowed for correction at the time of prosecution of the subject application.

(4) Revival of the patents expired for failure to pay maintenance fees

According to the revised Patent Act, a patent that has gone expired for failure to pay maintenance fees can be revived if the applicant pays twice as much as the originally designated maintenance fees, within 3 months from the expiration of a grace period (6 months) for paying maintenance fees.  This provision is effective upon proclamation of the revised Patent Act. 

2. Amendments to Korean Trademark Act (Effective upon proclamation of the revised Trademark Act)

(1) Lowered standard for secondary meaning acquired through use of the mark

According to the current Trademark Act, registration of a trademark that lacks distinctiveness is allowed if the subject mark has acquired secondary meaning through actual use in commerce.  To assert that the mark has acquired secondary meaning, under the current Trademark Act, the applicant must show that the trademark is ‘noticeably’ recognized by consumers as a source identifier. 

However, by deleting the word ‘noticeably’ from the language of the current Trademark Act, the revised Trademark Act requires consumers’ recognition of the trademark as a source identifier only, lowering the KIPO’s standard.

In addition, the current Trademark Act enumerates the grounds by which a trademark that lacks distinctiveness can still be allowed for registration when it acquired secondary meaning through actual use as follows: (i) a descriptive mark (Article 6(1)(iii)); (ii) conspicuous geographical indications (Article 6(1)(iv)); (iii) a common surname or name of legal entity (Article 6(1)(v)); and (iv) a simple and commonplace sign (Article 6(1)(vi)).  In addition to the grounds enumerated in the current Trademark Act, the revised Trademark Act also specifies the following grounds: a mark customarily used on the goods (Article 6(1)(ii)) and other marks without distinctiveness (Article 6(1)(vii)).

(2) Restrictions on trademark dilution of famous marks (New)

The revised Trademark Act newly enacted a provision regarding trademark dilution.  According to the revised Trademark Act, a trademark that can create consumer confusion with a famous mark cannot be registered.  In addition, the revised Trademark Act prevents the registration of marks which may potentially dilute the distinctiveness of famous marks. 

Accordingly, this provision will prevent the mark that copies or imitates a famous mark used in conjunction with different goods/services from registration.  

(3) Restrictions on trademark registration of the marks lacking in good faith (New)

The revised Trademark Act newly enacted a provision for refusal of a trademark registration on the basis that it is lacking in good faith.  In addition to the grounds for refusal already set out in the current Trademark Act, according to the revised Trademark Act, a trademark registration may be refused if the applicant knowingly applies for registration of the same or similar mark used but not registered by someone else, specifically when the applicant obtained such knowledge through an existing contractual agreement, transaction or other relationship with a good-faith trademark owner.

(4) Restrictions on use of the mark registered without authorization (New)      

The Unfair Competition Prevention law (Article 2(1)) prevents ‘unauthorized activities utilizing or exploiting achievements accomplished by others’ significant investment of time, effort and money.’  In accordance with the Unfair Competition Prevention law, the revised Trademark Act newly enacted a provision which prevents use of the registered trademark if such trademark registration has been obtained by the registrant who took advantage of achievements accomplished by others’ significant investment of time, efforts and money, without authorization by the good-faith user of the original mark.  Under this provision, in the above-mentioned case, the registrant can use his/her registered trademark only if the good-faith user of the original mark consents to such use by the registrant.

(5) Restrictions on awarding damages for trademarks not in actual use (New)

The revised Trademark Act newly enacted a provision which denies infringement damages to a trademark owner if the subject trademark is not in actual use in commerce, despite the existence of trademark infringement.  Therefore, in order to seek remedies from the trademark infringement proceedings, the trademark owner must prove that the subject trademark is in actual use in commerce.