Amendments to the Korean Trademark Act ("TMA") and the Design Protection Act ("DPA") took effect on April 20, 2022, which are expected to benefit applicants by providing more opportunities to remedy errors and relaxing time limits for certain procedures. Some of the more notable specific amendments are outlined below.
Response to final rejection now due in 3 months rather than 30 days
Under the previous TMA and DPA, trademark and design applicants had 30 days to file an appeal, a request for reconsideration, and/or a divisional/converted application in response to a final rejection.
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. The initial 3 month period to respond to a final rejection can also 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 had been required to explain that the failure was due to "reasons not imputable to a person," which in practice has 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.
Automatic recognition of priority for divisional applications
Previously, priority had to be specifically claimed for each new divisional application that was filed. The amended TMA and DPA now 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 practice, any co-owner of a trademark/design right can request that a court conduct an auction to sell the trademark or design right in its entirety to a third party if the other co-owners do not consent to the sale of the right, and if the court agrees, the proceeds will then be distributed to all the co-owners according to their share ratios. The amended Acts now provide that co-owners who do not consent to such a forced sale are granted a non-exclusive license, if they were already using the concerned registered trademark or using a design identical or similar to the concerned registered design prior to the filing of the auction request. In the case of a trademark right, the license is granted only for uses with goods in connection with the trademark prior to the filing of the request.
Similarly, if a trademark owner uses the registered trademark in connection with designated goods, and then a pledge is established on the trademark right, if the trademark is later transferred through a forced auction sale, the original trademark owner will be entitled to a non-exclusive license for uses of the trademark in connection with goods prior to the establishment of the pledge. This amendment was introduced in line with the existing practice for patent and design rights.