Proposed amendment of the Trademark Act, Spring 2009

The KIPO held an informal gathering on March 13, 2009 with the Korean Patent Attorneys Association regarding the Trademark Act amendment, as part of their effort to improve the Trademark system. The KIPO mediated opinions on the trademark amendment proposals and will try to solidify the amendment so that the they can become effective as early as next year. Hanyang International attended this gathering and the agenda discussed are as follows.

1. Trademark Disclaimer (Amendment proposal of Trademark Act Article 22(4)) 
The disclaimer system is already in place in countries like the U.S. and by incorpoating a disclaimer statement in the trademark application, the scope of right can be clearly defined. According to this proposal, a statement disclaiming exclusive right in a non-distinctive portion of the trademark is to be placed in the application.

2. Concurrent Use of Trademarks (Amendment proposal of new Trademark Act Article 57(4)) 
A trademark registration that has been invalidated but was used in good faith are to be allowed concurrent use with its conflicting prior trademark registration in consideration of the business relationships established by the invalidated trademark owner.

3. Amendment of Trademark Act Article 7(1)(i) to (v) with respect to the Paris Convention Article 6ter(3)
Based on the Paris Convention Article 6ter(3) whereby state emblem and flag are to be protected and made available to the public in due course, the amendment proposes to adopt such policy in Trademark Act Article 7(1)(i) to (v) to strengthen international trust.

4. The standing to initiate a cancellation trial to be expanded (Amendment proposal of Trademark Act Article 73(6)) 
According to the current Trademark Act, a cancellation petition can only be filed by an interested party. The amendment proposes to expand the standing beyond an interested party to anyone who wishes to initiate a cancellation trial. This proposal upholds the underlying intent of the cancellation provision in the Trademark Act.

5. Renewal of registration made easy (Amendment proposal of Trademark Act Article 46, etc.)
This amendment proposes to streamline the process of renewing a trademark registration by requiring, within one year from expiration, simply the submission of the renewal request form, rather than a renewal application, and the payment of a fee.

6. Clear typographical errors to be corrected by examiners (Amendment proposal of new Trademark Act Article 30(2)) 
The amendment proposes to allow the examiners to exercise their discretion in correcting clear typographical errors without having to mail out the request for correction to the applicants.