News & Infomation
Newsletters
May 2008
May 2008- Extension of time to Respond to an Office Action is Limited to Maximum 4 Months
- Revision of Trademark Examination Guideline
Extension of time to Respond to an Office Action is Limited to Maximum 4 Months
The Korean Intellectual Property Office (KIPO) plans to revise the Korean Patent Examination Guideline especially on extension of time relating to responding to an office action. The new guideline would be effective as of July 1, 2008.
Prior to the revision, the extension of time in responding to the office action, which preliminarily notifies the applicant of rejection and/or objection reasons, could be extended without limits. However, according to “Patent and Utility Model Examination Process Regulations” revised on March 24, 2008, the applicant is given maximum 6 months to respond to the office action issued as of July 1, 2008. As usual, two (2) months are given from the issue date of the office action while additional extension of time can be made only up to four months (“Allowed Extension Period”). When a request for further extension of the due date that exceeds the Allowed Extension Period is submitted together with a persuasive basis, the Examiner may allow additional extension, partially or wholly. The Korean Intellectual Property Office announced in a guide dated May 6, 2008 that the following seven reasons may be accepted as persuasive basis for the further extension of the due date that exceeds the Allowed Extension Period.
| (1) | a case where, within one month before the expiration of the due date, a representative is elected for the first time, or all representatives are dismissed or changed; |
| (2) | a case where, within one month before the expiration of the due date, a Statement of Applicant Change is submitted; |
| (3) | a case where, an applicant receives a foreign examination result within two months before the expiration of the due date and intends to reflect the result to an amendment (a copy of a Notice of the foreign examination result and a copy of claims that were the basis of the foreign examination result should be submitted at the time of filing a request for extension of time); |
| (4) | a case where an delivery of an office action is delayed over one month (further one month extensible); |
| (5) | a case where a parent application or a divisional application is pending at the trial or at the court; |
| (6) | a case where more time is needed for testing and measurement of test results regarding the office action; |
| (7) | a case where it is approved that more extension of time is needed, such as for unavoidable reasons of an applicant. |
Revision of Trademark Examination Guideline
The KIPO revised Trademark Examination Guideline and the new Guideline became effective as of May 1, 2008. The major revisions of the guideline are as follows:
1. Deletion of exceptions concerning conspicuous geographical indications.
A mark consisting of a conspicuous geographical indication that contains a "conspicuous geographical indication + business type + corporation name" used to be acknowledged as being distinctive. (Examiner’s guideline §9(5))
However, according to recent decisions, the Examiner’s guideline §9(5) has been decided to be deleted based on the reasoning that without a new concept that supersedes beyond the characteristics represented by the mere combination as above, it cannot be said that the mark is distinctive per se.
2. Revised standard for determining imitative trademarks
In an attempt to reinforce the standard in determining what an imitative mark is and the time period of determination prescribed in §26 of the Examiner's guideline relating to Article 7(1)(xii) of the Korean Trademark Act, they are amended as follows:
Examiner’s Guideline of the Korean Trademark
§26 (illegitimate purposes of obtaining unjust profits or inflicting harm on a particular person)
| ① | "A trademark which is recognized as indicating the goods of a particular person among domestic or foreign consumers" prescribed in the Article 7(1)(xii) of the Korean Trademark Act refers to a mark which is not necessarily required to be well?known or famous, but said trademark must be perceived as a particular person’s trademark among domestic or foreign consumers or traders. "Foreign consumers" in the above Article 7(1)(xii) does not necessarily require consumers in multiple countries. | ||||||||||||||||
| ② | "Illegitimate purposes of obtaining unjust profits or inflicting harm on a particular person" set forth in this subparagraph include: | ||||||||||||||||
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3. Establishment of new examination standard for trademark’s partial priorities and multiple priorities
In regard to marks asserting priorities, the KIPO has newly established an examination standard for applications claiming partial priorities and multiple priorities.
* Further reference
| 1. | Definition of partial and multiple priorities application (Established April 14, 2008) (1) Partial priorities application: A trademark application partially claiming priorities in the designated goods and services. (2) Multiple priorities application: A trademark application claiming priority in two or more different designated goods and services, respectively, based on two or more different priorities. |
| 2. | In the procedure for examining the partial and multiple priorities application, the KIPO categorizes the designated goods into two groups, “priorities available,” and “priorities unavailable.” (In case of multiple priorities, the goods and services will be ordered based on the earlier priority dates, “Priority1,” “Priority2,” “Priority3,”…. ) The KIPO will then record such categorization in the examination check list for future reference. (Established April 14, 2008) |
| 3. | When the KIPO examines partial and multiple priorities applications, the goods and services will be examined based on the priority date if it precedes the filing date and for those without available priority dates, the filing date will become the basis of examination. (Established April 14, 2008) |
| 4. | Based on a prior mark search, only if there are similar or identical marks that have been filed between the filing date of the partial or multiple priorities applications and the available priority dates, examination will be conducted to determine similarity in those with available priority dates and those without. However, in the rest of the cases, the general examination process will be applied, (Established April 14, 2008) |
| 5. | In a general examination process, if a mark is applied between earlier mark’s application date and priorities date (each priorities date in case of multiple priorities) the examination should be ceased until the earlier mark’s examination for priorities is confirmed. In other case, the KIPO exercises judgment with a same manner as common cases. (Established April 14, 2008) |
4. Determination of filing same goods under the principle of “One trademark per one application”
Upon determining whether, in fact, same goods have been redundantly filed, the basis of such determination will be the identicalness of the designated good, thereby reducing the administrative burden and also maintain consistency.
5. Revised standard for determining a mark in combination of “non-distinctive” trademarks.
| (1) | Examiner’s guideline §13(2) defines the standard for determining marks “combined of non-distinctive marks.” The language, “is conspicuously recognized,” within this provision may bring about confusion and thus such has been revised as follows. |
| §13(2) (A mark combined of non-distinctive marks) | ||||
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In determining the similarity in motion marks, the subject of the motion can be different but when the characteristic of the motion described by the subject is identical or similar, the two marks are to be considered similar.