Korea Amends Various IP Rights Guidelines

The beginning of 2019 brought some notable amendments to Korea’s intellectual property rights guidelines. On the trademark side, effective January 1, 2019, Korea’s Trademark Examination Guidelines were amended to include:

• Heightened examination of applications for famous characters/character names by non-owners/bad actors

Under the old guidelines, and absent prior registrations, an application for a famous character or character name filed by a non-owner could not be refused registration, unless the character or character name was already known among consumers as an identifier of source, based on use with merchandising, and beyond its general fame. This often made it difficult for the rightful owner of such properties to oppose trademark applications filed by others in bad faith. Under the new examination guidelines, such applications will be refused, regardless of any merchandising related to the character or character name.

• No-go on registration of YOLO and other trendy terms

The amended guidelines prohibit registration of trendy terms or “buzzwords” that were widely used by the public prior to being associated with a particular product or entity, on the ground that such registrations are contrary to public interest.

• Stricter requirements for individuals applying for franchise marks in their own names

In an effort to address the perceived abuse of trademarks by a number of Korean franchisors, the amended guidelines provide that any application to register a franchise mark in the name of an individual (rather than in the franchise company’s name) will be rejected on the basis that the individual lacks a bona fide intent to use the franchise mark for non-franchise-related purposes specific to the individual. To remove the rejection, the individual applicant must provide such proof, or put the application in the name of the franchise company.

Updates with Customs

At the border, and as of January 21, 2019, Korea amended its guidelines for Import and Export Customs Clearance Procedures to:

• Extend the term of the recordation from 3 years to 10 years (the recordation will still expire if the underlying IP right expires);

• Simplify the process for recording patent and design rights, by abolishing the requirement to submit evidence that one or more importers or exporters may be infringing such rights (making the recordation process for patent and design rights consistent with that for trademarks and copyrights); and

• Allow for filing of a renewal application as early as one year prior to the expiration date of the customs recordation (the renewal period still ends 10 days prior to the expiration date).

The majority of these amendments should make it easier for IP rights owners to protect their properties against bad actors in this jurisdiction.

This article appeared in the January 2019 issue of MarkIt to Market. To view our past issues, as well as other firm newsletters, please click here.