IP Insights

Revisions to the Korean Trademark Act - Effective as of June 11, 2014

1. Protection of Non-distinctive marks under Actual Use

Under the new revisions to the Korean Trademark Act, the standards for determining the establishment of secondary meanings of non-distinctive marks in actual use have been lowered. Accordingly, where an application for a mark that lacks distinctiveness has been filed at the Korean Intellectual Property Office (KIPO), if the applicant can establish a specific level of renown of the mark in Korea through use, they will likely be able to obtain a registration for the mark.

2. Revision of the Well-known Mark Protection Clause

Under the new revisions to the Korean Trademark Act, the protection clause of well-known marks has been made clearer. Namely, all applications for marks will be refused where they are likely to contaminate the distinctiveness or fame of well-known marks, and also, if they are likely to cause confusion with well-known marks.

3. Introduction of Unfair Competition Prevention

1) Under the new revisions to the Korean Trademark Act, if a brand owner is using their mark or is planning to use their mark, and an applicant who is aware of such a fact through a partnership, employment, contract, business transaction, or any other reason, files an identical or similar mark to the brand owner's mark, designating identical or similar goods, such an application for a mark will be refused.

2) New revisions to the Unfair Competition Prevention Act stipulates that any act that infringes another person's commercial profits through the use of that person's fruits without due cause against fair trading practice or efforts for the sake of oneself constitutes an unfair act. In order to coincide with this new regulation, the Korean Trademark Act stipulates that if uses of registered marks fall under the above clause of the Unfair Competition Prevention Act, any use of registered marks will be prohibited unless the registrants obtain the consents of the other persons involved. Also, if a registrant is using their registered mark without the consent of the other person involved, the registered mark will be vulnerable to a cancellation.