The Korean Trademark Examination Guidelines ("Guidelines") were amended, effective April 20, 2022. Major changes are outlined below.
1. Ex officio reexamination standards
The amended Guidelines specify the examination standards applicable to the ex officio reexamination system recently introduced in the Trademark Act ("TMA"). Under this new system, an examiner who determines that there are clear refusal grounds after an application is allowed for registration, but before it is registered or withdrawn, may withdraw the decision to grant registration and reopen the examination of the application.
The Guidelines provide examples of "clear refusal grounds," including where an examiner fails to take into consideration the priority claim of a third party's mark and thus fails to cite such mark against the application, and where the non-distinctive character of the applied-for mark, consisting only of non-distinctive elements, is clear.
The Guidelines also provide that the decision to open an ex officio reexamination will be decided by three examiners, and, once reopened, the examiner in charge of reviewing the application will be in charge of reexamining the application.
2. Added criteria regarding acceptability of changes to an application
Under the TMA, changes to an application are only permissible where the changes are immaterial. The TMA provides the scope of allowed changes as follows: to limit the goods, to correct obvious typos, to clarify unclear statements in the application and to delete supplemental elements of the mark.
The Guidelines now provide specific criteria for determining what is considered to be a "supplemental element." According to the revised Guidelines, an element is supplemental if (i) it is contained in a significantly small portion of the mark, and (ii) it has no or a weakly distinctive character.
The revised Guidelines also add several examples of acceptable changes to an application, in order to improve the consistency and predictability of examinations.
3. Broadening of acceptable evidence of intent to use
Although the TMA adopts a first-to-file system for registering trademarks, the TMA also provides a ground for rejecting or invalidating a trademark registration based on lack of intent to use. Under the Guidelines, an examiner may request evidence of use or a declaration in support of use and/or intent to use if there is a doubt as to the intent to use the applied-for mark. The Guidelines provide examples where there is doubt as to the intent to use, if (i) one application covers goods/services in more than five Int'l Classes, (ii) various numbers of unrelated goods/services are claimed irrespective of number of classes, (iii) it is prohibited by law for the applicant to be engaged in a business for the designated goods/services, (iv) an individual files an application for services that require large facilities and/or substantial capital such as banking services, and air transportation services.
Prior to the recent amendment, intent to use through a license was not recognized as evidence of intent to use. However, the amended Guidelines recognize, as valid evidence of intent to use, intent to use the mark through another entity who can be controlled and managed by the applicant, in line with Article 19 of TRIPs. Accordingly, applicants are now able to submit license agreements as evidence of intent to use their mark. In such cases, however, the examiner may still find lack of intent to use if it is objectively impossible for the applicant to control and manage the use of the mark by the license, e.g., if the licensor is legally incompetent.
4. Stronger criteria for consumer surveys
The amended Guidelines provide that in order to be considered credible, a consumer survey should be conducted by a reliable survey agency using a non-biased questionnaire, and that the respondents (i.e., consumers of the concerned goods) should be properly represented across regions, genders, ages, etc. Further, while the previous Guidelines provided that a survey conducted among at least 500 respondents was highly credible, under the revised Guidelines, a survey will now have to target at least 1,000 respondents in order to be considered highly credible, while a survey targeting 500 respondents or fewer would not be considered credible. This amendment reflects the Intellectual Property Trial and Appeal Board's guidelines for consumer surveys introduced in 2019.