On February 3, 2022, the National Assembly promulgated amendments to the Trademark Act (the "Amendments"), which supplement the definition of "use of a trademark" and enhance procedural convenience for applicants as well as their ability to secure rights. The Amendments are summarized in detail below.
1. Expansion of the definition of "use of a trademark" to cover the online distribution of "digital goods"
Under the current Trademark Act, "use of a trademark" is defined as any of the following acts, where "displaying a trademark" includes "displaying a trademark on information provided through a telecommunications network by electronic means":
(a) Displaying a trademark on goods or packages of goods;
(b) Transferring or delivering goods or packages of goods bearing a trademark, or exhibiting, exporting, or importing such goods for the purposes of transferring or delivering;
(c) Displaying a trademark on advertisements, price tags, transaction documents, or other means, and exhibiting or giving extensive publicity to the trademark.
In recent years, the distribution of various downloadable "digital goods" has become increasingly prevalent. While such distribution involving trademarks has been deemed to constitute use of the relevant trademarks by KIPO and the courts, strictly speaking, paragraph (b) above refers only to traditional types of distribution and does not reflect changing trends in distribution. Thus, to clarify the statute to recognize that the distribution of trademarked digital goods is also use of the trademark, this paragraph has been amended to read: "Transferring, delivering, or providing via a telecommunications network goods or packages of goods bearing a trademark, or exhibiting, exporting, or importing such goods for any of the aforementioned purposes." This amendment will go into effect on August 4, 2022.
2. Introduction of a Partial Rejection System
Under the current Trademark Act, examiners at the Korean Intellectual Property Office are required to specify the rejection grounds for each designated good when issuing an Office Action. When issuing a final rejection, however, the examiner must reject the entire application unless each and every rejection ground has been overcome, even if only some of the designated goods have been rejected. Following such a final rejection, in order to obtain allowance of the application for the non-rejected goods, the applicant must either appeal to the Intellectual Property Trial and Appeal Board (IPTAB) to limit the application, or file a new application designating only the non-rejected goods.
In order to make the registration process more convenient for applicants and to improve their chances of securing proper rights, the Amendments introduce a partial rejection system, which requires KIPO to issue a final rejection only as to goods that have been rejected, such that the remaining goods can be registered without the need for additional steps by the applicant. This system will apply to applications filed on or after February 4, 2023.
3. Establishment of a Re-Examination System
The Amendments also establish a new re-examination system, for the convenience of applicants and provide more opportunities for them to protect their rights. More specifically, even if KIPO issues a final rejection, if the rejection grounds can be overcome by simply amending the designated goods, the applicant may submit the amendment together with a request for re-examination to KIPO, without having to undergo a trial proceeding at the IPTAB. It is important to note, however, that a request for re-examination cannot be filed to dispute any rejection ground that cannot be resolved by an amendment.
A request for re-examination may be filed before the deadline to appeal the final rejection to the IPTAB (i.e., within 3 months from the date of receipt of the Notice of Final Rejection), and if the re-examination request is filed, the final rejection will be deemed to be revoked. A re-examination request may only be submitted once, and no re-examination may be requested once an IPTAB appeal has been filed. In addition, this system does not apply to applications filed under the Madrid Protocol. This system will be effective as to applications filed on or after February 4, 2023.