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South Korea: Recent changes in Korea’s Trademark and Design Examination Guidelines




The Korean Trademark and Design Examination Guidelines have recently been revised, and the new guidelines took effect on January 1 2018.

Revision of the Korean Trademark Examination Guidelines

1. Introduction of a standard for determining distinctiveness of a trade mark consisting of a combination of a well-known geographical indication and the term university

A trade mark consisting of a mere combination of a well-known geographical indication and the term university is in principle not deemed to have distinctiveness. However, if such a trade mark is particularly well known in a certain field (for example, education) to the extent that it is generally considered the source of goods of a specific entity, the trade mark is now acknowledged as having acquired distinctiveness because a new connotation has been established.

For instance, the trade mark Seoul National University is a combination of the geographical indication Seoul and the element National University. This mark is considered to have acquired distinctiveness in view of the fact that general consumers recognise it as a particular university, not any university located in Seoul.

2. Supplementation to standard for determining distinctiveness of a three-dimensional mark

Until recently, a mark consisting of a three-dimensional shape could not be registered unless the mark had acquired distinctiveness by use. According to the revised Examination Guidelines, however, a three-dimensional mark is deemed to have distinctiveness if the three-dimensional shape is (i) not perceived as indicating the shape of designated goods (including package and container) and (ii) unusual and very unique.

For example, a lion-shaped three-dimensional mark, for which the designated good is a car, is considered to have distinctiveness.

3. Change in examination of a later-filed application similar to a prior-filed application for which the registration fee has not been paid

In the past, when a later-filed application was rejected due to similarity to a prior-filed application for which the registration fee had not been paid, the examination on the former was suspended until after the lapse of the one-year grace period, during which the latter could be reinstated based on Article 77 of the Korean Trademark Act. As no mark has been reinstated since the revision of Article 77 in February 2001, the Korean Intellectual Property Office (KIPO) now considers non-payment of the registration fee for a prior-filed application as abandonment, and thus, the later-filed application can now be examined without delay due to the grace period.

Revision of the Design Examination Guidelines

1. Expansion of scope in acknowledging unity of creation of a partial design

In response to the demands of applicants and agents, the Design Examination Guidelines have been amended to expand the scope in admitting unity of creation of a partial design. Specifically, if a partial design includes two or more physically separated parts which can be morphologically seen as one creative work in light of the applicant's intention, the partial design can be acknowledged as one design. Furthermore, unity of creation for a partial design can be recognised in cases of physically separate but functionally interrelated parts (for example, automobile parts).

2. Supplementation to a standard for determining similarity of partial designs

For partial designs in which solid lines are identical and dotted lines are dissimilar to each other, in principle, the two designs are not considered identical, but similar. However, if the shape and pattern of dotted lines are so similar that the two designs have the same aesthetic impression as a whole, the designs are viewed as identical.

3. Addition of a new requirement, visibility for graphic image on a screen, to establish a design for a graphic image on a screen

The requirements for a design for a graphic image on a screen were previously the same as those for a typical design. However, a new requirement has been added to reflect the unique property of a design for a graphic image on a screen. In order for a design for a graphic image on a screen to be granted, the image shown on the products must be distinguishable by the naked eye. If the image is distinguishable only through magnification, the design cannot be allowed due to lack of the visibility element. However, in cases where special devices/tools are normally used to observe the image, the design is considered to meet the visibility requirement.

Min Son

HANOL Intellectual Property & Law
6th Floor, Daemyung Tower, 135, Beobwon-ro, Songpa-gu
Seoul, 05836
Republic of Korea
Tel: +82 2 942 1100 
Fax: +82 2 942 2600
hanol@hanollawip.com
www.hanollawip.com


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Anna Mae Koo and Ann Xu of Vivien Chan & Co evaluate the revised Trademark Law of 2014, analysing its treatment of… https://t.co/KfVGZRQ4zZ

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in Oil States, the Supreme Court held the IPR process at the PTAB is constitutional, but left IPRs open to due proc… https://t.co/ABPdDOFfNq

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