The National Assembly recently promulgated amendments to the Trademark Act ("TMA") and the Design Protection Act ("DPA"), which will go into effect on April 20, 2022. The amendments will strengthen protection measures for applicants by providing more opportunities to remedy mistakes and by relaxing time limits for certain procedures. Some of the more notable amendments are outlined below.

Response to final rejection now due in 3 months rather than 30 days

Under the current TMA and DPA, trademark and design applicants have 30 days to file an appeal, a request for reconsideration, and/or a divisional/converted application in response to a final rejection. This 30-day period has been criticized as too short to fully prepare an appeal brief or an amendment for a request for reconsideration.

In the amended Acts, the 30-day period has been extended to 3 months after the date of receipt of the Notice of Final Rejection. Further, the initial 3 month period to respond to a final rejection can be extended an additional 60 days.

Relaxed requirements for restoration of trademark/design rights

In the past, in order to restore trademark/design rights lost for failure to satisfy procedural requirements such as missing critical application deadlines, the applicant has been required to explain that the failure was due to "reasons not imputable to a person," which has in practice been construed very narrowly to mean an extreme event such as a natural disaster. In the amended Acts, the term "reasons not imputable to a person" has been relaxed to simply "reasonable reasons," in order to more broadly protect applicants from losing rights due to circumstances out of their control. The Korean Intellectual Property Office (KIPO) has indicated it will recognize some specific examples of such "reasonable reasons," including due to an applicant's medical condition.

Automatic recognition of priority for divisional applications

Under current practice, priority must be specifically claimed for each new divisional application that is filed. The amended TMA and DPA provide that as long as priority is properly claimed in the original parent application, the same priority will automatically be recognized for any divisional application filed from that parent application, thereby reducing unnecessary procedures due to rejections based on inadvertent omission of the priority claim for a divisional application by the applicant.

Introduction of new ex-officio re-examination procedure

The amendment provides for a new ex officio re-examination system, under which an examiner who determines that there are obvious refusal grounds for an application after the application is allowed, but before the application is registered, may withdraw the decision to grant a registration and reopen the examination of the application.

Non-exclusive licenses to trademark/design co-owners after transfer of such rights

Under Korean trademark/design practice, if some but not all of the co-owners of a trademark/design right wish to sell their trademark/design rights to a third party, they can request that a court conduct an auction to sell the entire trademark/design rights to the third party, and if the court agrees, the proceeds will then be distributed to the co-owners according to their share ratios, regardless of whether the other co-owners consent to the sale. The amended Acts now provide that co-owners who do not consent to the sale will retain non-exclusive licenses to the transferred right after the sale in order to protect their ongoing business interests, in addition to the payment distribution.