The most intuitive way to look at the trends in a country’s trademark system is to find amendments of its’ laws and regulations, to extrapolate what direction the system seems to be moving in. Today, we will look at the revision trends in Korea and how these changes can affect existing cases.
Recently, the KIPO held a briefing session on the trend of the trademark system in 2020, where the KIPO introduced the administrative rules that will change in 2020. They first referred to the ‘trademark preferential examination system’ and suggested that it will operate the trademark registration system more effectively. South Korea’s trademark preferential examination system is a system that prioritizes trademark applications with certain requirements before other applications. The requirements include “applicants are clearly using or preparing to use a trademark on all designated goods”. If you apply for a preferential examination, the examiner will decide whether or not to make a priority screening within 10 days of receiving the application. If the examiner says “Yes”, the trademark registration application will be entered within 45 days of the date of the decision. Applicants with the requirements will be able to register their trademarks and protect their rights faster and more efficiently using this examination.
Next, some of the trademark examination standards were revised. In the trademark registration, if the trademark gets “acquisition by use”, the trademark is registered. Until recently, there was no specific criteria for ‘the term of trademark usage’. Now, by setting the criteria for “more than five years,” it is now possible to present clearer standard. (Of course, exceptions are allowed in certain cases. For example, if a trademark is suddenly famous and imprinted on the public, even if it is used shorter than this period, it can gain acquisition by use.) In addition, before the revision, only one examiner had previously examined a trademark registration application, yet now 3 examiners are put into the same examination.
In addition, the amendment sets a different standard for processed foods from natural foods in collective mark with geographical indication application. Previously, the examiners also examined the association with the geographic environment in the examination of the intrinsic association between trademark and geographic environment, indistinguishable from processed food and other products. However, the amendment considers that processed foods are more related to human factors such as production methods and processing methods than geographic environments. Therefore, in the review of the intrinsic association between processed foods and the geographical environment, the amendment now considers the historicity and wellknowness.
KIPO has established stricter examining standards for drug application, too. According to the amendment, ‘it is necessary to confirm the intention to use the trademark because it cannot use the same name as a drug name already manufactured, sold, imported, or declared’, and ‘if an applicant filed a trademark identical to or similar to his or her drug, or applied for a trademark similar to or similar to another one’s drug name, it can be seen as the case the confuses the quality of the product’.
Another notable feature is the expansion of the examiner’s authority. According to the amendment, if an applicant made mistakes regarding spelling, punctuation, and the category of the designated product(yet in order to amend the category of the designated product, one should be notified with reasons for refusal more than once) in an international trademark registration is apparent, the examiner can now directly revise the mistakes. In light of these revisions, all of this seems to be aimed at “increasing the efficiency of trademark examining” as a response to increasing trademark-related request.
If so, how can the amendment affect the current court ruling? Let’s take a quick look at the famous leading case.
First of all, this is a leading case for the “period of acquiring discernment by use” which is mentioned above.
“As a result of using a trademark prior to the application for registration, there is a reason for the fact that among the consumers, the trademark is markedly recognized whose trademark it represents. The standard should be strictly interpreted and applied, since it is a non-identifiable mark originally and the exclusive use of a particular person gives universal rights to an inappropriate mark. Yet comprehensively considering the period of use of the trademark, the frequency of use and continuity of the trademark, the market share of the trademarked product, the contents, the period and the amount, and the reputation and credibility of the trademark user, if the majority of traders and consumers concerned have been recognized that a certain trademark is displaying a particular person’s product, the acquisition of discernment by use can be admitted.” (darts-099-428-I-ko, darts-099-430-I-ko, darts-099-431-I-ko)
This case shows the wording ‘comprehensive consideration’. As a result, it was difficult for the individual to prepare the case as there were no specific standards. The revised amendment now provides a new standard that ‘the term of trademark usage’ should be more than five years, so now it is possible to see more clear criteria and make claims and present data.
In the case of processed foods, we can see the decision of the courts contain the phrase that “in the case of collective marks, the officials of the KIPO preliminarily reviewed the possibility of registration based on the status of the organization and the application status of trademark rights, also considering geographic relevance, regional specificity, history, celebrity, consumer perception and preference, etc”(darts-720-334-G-ko, darts-978-443-H-ko). In other words, processed foods can be examined by geographic relevance, historicity without any difference from other natural foods. However, as the amendment established a separate standard for reviewing processed foods based on historicity and wellknowness rather than geographic relevance, new decisions of the court would arise.
In conclusion, the clearer the standard of the examination, the easier it is for the claimant to predict the outcome of the trademark examination. It will also increase efficiency by eliminating unnecessary processes. In other words, Korea’s 2020 trademark revision keywords are predictability and efficiency. This is the current trend of trademark revision in Korea, and the regulations are expected to be revised in this direction continuously.