특허법인 남앤남

The name behind your Name since 1952

We, NAM & NAM is here to dream your dream and ready to pave the way for the client's success


Explore NAM & NAM

As the oldest IP Law Firm in South Korea, NAM & NAM has a long history of working experiences with global clients since the day
NAM & NAM was established in 1952

2022
With a proud history as Korea's oldest IP law firm, we commit to continue
to provide the best service for your success as we have always done for 70 years.
  • 0
190 +
Professionals
Our professionals are selected based on practice areas
and specific technologies and are trained with the specific
needs of global clients in mind.
1
1
1

Professionals

Alexander SON

Senior Foreign Attorney (Germany)

Ben(beyong-ho)YUU

Managing Partner

Byung-kyu KIM

Sr. Patent Attorney

Chang-hak SHIN

Sr. Patent Attorney

Doo-yong CHO

Patent Attorney

Simon VOGE

Editor

Ho-jun LEE

Partner

Hyung-joong KWON

Partner

Jae-hwan SIM

Partner

Jeong-seok LEE

Partner

Ji-woong KIM

Sr. Patent Attorney

Jonathan MASTERS

Trademark Attorney (AU)

Kwei-rye HA

Sr. Patent Attorney

Tae-jun SUH

Managing Partner

Sang-ki PARK

Managing Partner

Nobuhide AZUMA

Trademark Attorney (AU)

Bo-ra KIM

Patent Attorney

Hwa-jung SONG

Patent Attorney

Jae-woo BYEON

Patent Attorney

Kwan-ju PARK

Patent Attorney

Seo-wu LEE

Patent Attorney

Seon-young KIM

Patent Attorney

Yong-ho CHO

Patent Attorney (Ph.D)

Na-ra YI

Patent Attorney

Hyo-young LEE

Patent Attorney

Justin HWANG

Sr. Patent Attorney

Hai-Hua ZHANG

Regional Expert (CN)

Reiko TOMONAGA

Regional Expert (JP)

Sang-hun JUNG

Patent Attorney

Seo-young LEE

Partner

Seung-whan KIM

Partner

Si-jung LEE

Patent Attorney

Si-yong LEE

Sr. Patent Attorney

Sung-wook KIM

Partner

Sung-yeon CHO

Trademark Attorney

Won-nyung LEE

Partner

Woo-hyun NAM

Sr. Patent Attorney

Yong-kyun KIM

Patent Attorney

Young-joo YOUN

Patent Attorney

Young-jun CHOI

Patent Attorney

Young-min KIM

Partner

Byoung-jin LEE

Sr. Patent Attorney

Alex Hyon CHO

Senior Foreign Attorney (US)

Last Updates

Practice Notes

Designs troubled by trademarks

To achieve registration a design must satisfy several prerequisite requirements, such as novelty and creativity. Novelty signifies that the design, before application, must not have been included in publications or catalogues, publicized through sales or exhibition, or exposed in any other manner such that somebody could identify it. Further, creativeness signifies that a person with ordinary skill in the art could not easily create a given design based on pre-existing internationally or domestically known designs, well-known shapes, patterns, or colors, or any combination thereof. Interplay between designs and trademarks However, even if the aforementioned requirements are satisfied, designs which are liable to create confusion over articles connected with another person’s business cannot be registered and shall be invalidated if granted. Typical examples include designs which use another person’s well-known trademarks, service marks, collective marks, or business emblems (including 3D trademarks). Here, a question arises as to whether a likelihood of confusion requires that there be similarity between the design article and the designated goods of the trademark. Likelihood of confusion Regarding the above question, the court recently answered that similarity between the design article and the designated goods of the trademark is not required in finding a likelihood of confusion. (Patent High Court, 2020heo6255, November 18, 2021) The registered design in question is shown as below and was for a “handbag accessory”. Fig. 1 Fig. 2 Fig. 3    (original 3D file)         (front view)      (Side view) This case examines whether or not the plaintiff’s registered design possesses the possibility of confusion with the defendant’s products related to the trademarks as below, and if so, whether the plaintiff’s registered design should be invalidated. Pre-existing Trademark 1  Pre-existing Trademark 2             (Classes 6,9,14,18,20,24)                  (Classes 14,25,26) Well-known or remarkably famous trademarks are protected, regardless of whether they are registered under the Trademark Act, by restricting the registration of any identical or similar marks. An application for the registration of a similar mark filed by a person other than the owner of such a well-known/famous trademark will be rejected; and, if registration is erroneously granted, the mark will be subject to invalidation. Registration of a similar mark may also be rejected even if the goods of the trademark application are not identical or similar to those of the well-known/famous trademark due to the possibility of misleading the consumers about the origin of the goods as well as anti-competitive practices. Given the global brand recognition of Chanel, whether or not the defendant’s pre-existing trademarks met the legal standards for being ‘famous’ was not in question. Rather, the key issue was with respect to whether or not the plaintiff’s registered design was likely to cause confusion over articles connected with the defendant’s business. The court ruled that there indeed was a possibility of confusion. The following outlines the court’s reasoning: The registered design is comprised of two overlapping circular rings similar to the English letter “O”, and is closed overall, while the pre-existing trademarks consist of two “C”s overlapping in different directions, with both sides open. The registered design shows five thin “O” shaped rings that are connected to form a single ring, while the pre-existing trademark is in the shape of a thick, black English letter “C”. The design differs from the trademark in that the two disk rings are combined in a ring shape to form a three-dimensional effect, while the trademark is flat and two-dimensional. A key similarity between the registered design in question and the pre-existing trademarks involves an intersection and overlapping of two characters featuring the same thickness while both converge at the same angle. The area that intersects and combines symmetrically is the dominant aesthetic feature of the trademarks and designs as well. Despite the above-mentioned differences therebetween, they are too minor to offset the overwhelming similarity in their dominant aesthetic features. Therefore, overall, the two are similar enough to reasonably conclude that it may create confusion over articles connected with the trademark owner’s business. It is important to note that plaintiff’s argument that “the designated products on which the design is to be applied differ in purpose and function from the defendant’s products, and are therefore unlikely to cause confusion”, was rejected by the court. According to the court, it is because as long as there is a possibility of confusion between the registered design and the articles connected with another person’s business, the products of the registered design and the products of the pre-existing trademark are not required to be the same or similar for the purposes of invalidating the registered design. However, there were two important additional factors that the court considered in reaching its decision. First, the product of the plaintiff, in this case a handbag, was comprised of zippers, straps, and materials that were used in the same or similar fashion to those of the defendants’ products. Second, the plaintiff’s design was separately applied for and registered as a trademark for the same design in class 18, which pertains to leather and leather imitation products, which includes handbags. Notes Well-known trademarks are legally protected under both the Trademark Act and the Design Protection Act. According to the Trademark Act, any trademark likely to cause confusion with the goods or business of another person that is remarkably recognized by consumers is ineligible for trademark registration. Similarly, the Design Protection Act states that the application of a design likely to cause confusion with an article associated with another person’s business may be rejected if it is found to be to identical or similar to a pre-existing trademark. Here, as long as there is a possibility of confusion over articles connected with another person’s business, the products of the design and the goods of the trademark are not required to be the same or similar for the purposes of rejecting a design application or invalidating a registered design. When considering filing a design application, it is important to do a similarity search not only for prior designs but also pre-existing trademarks which are well known or famous in the market. Written by Ben Yuu (Managing Partner)

2022-04-20
READ MORE
Comparative Law

Restoration of IP Rights in KR/US/JP/EP

1. South Korea (KIPO) Comparing with the systems in others countries, the Korean Patent Act applies strict standards for restoration of patent rights, which must meet both substantive and procedural requirements. (1) Substantive Requirements: There must be a justifiable reason for failing to comply with the relevant time limit due to “a cause not attributable to a party”. While there are various interpretations of the phrase “cause not attributable to a party”, the definition refers to cases where the failure to comply with the time limit is due to objective and obvious reasons, or any unavoidable reason, while making assurance doubly sure with due diligence. For example, KIPO’s examination guidelines exemplify natural disasters and missed deliveries of any notice or document as “a cause not attributable to a party”. (2) Procedural Requirements: Under the current Patent Act, actions to re-establish patent rights should be filed within two months from the date on which the justifiable reason for non-compliance with the original time limit expires, and at the latest within one year after the original time limit. (In this regard, the procedural requirements are identical to Japan and the EPO.) Even if the reason for failing to comply with the time limit is accepted as a cause not attributable to a party, the restoration of the right cannot be achieved unless the proper actions are taken within these designated periods. 2. The United States (USPTO) The USPTO has various rights recovery systems throughout all procedural phases such as application, examination, registration of rights establishment, and payment of fees in order to ensure maximum benefit to a party. (1) Substantive Requirements: There must be an “unintentional” failure to comply with the relevant time limit. If the delay in reply by an applicant was unintentional, a petition may be filed in order to revive an abandoned application. Thus, compared with South Korea’s “cause not attributable” standard, the USPTO’s threshold is significantly lower. Most petitions to revive abandoned applications are accepted. (2) Procedural Requirements: There is no specific time limit stated by the USPTO. While most patent offices around the world have a specific deadline to take actions to restore IP rights, the USPTO allows applicants to file petitions to revive applications even in cases where more than twelve months have passed from the original time limit. This can be understood as a patent system that operates in the interests of the applicant, rather than purely with legal stability in mind. 3. Japan (JPO) Japan’s system is similar to the Korean system, but with a wider scope of recognition. (1) Substantive Requirements: There must be a “justifiable reason” for failing to comply with the relevant time limit. The determination of whether the reason was justifiable is based on evidence stated in the application for restoration. The JPO’s interpretation of “justifiable reason” can be considered similar to the “due care” criteria adopted by the European Patent Office (EPO). First, whether the reason for missing a deadline is justifiable depends on whether the reason was predictable and whether sufficient measures were taken before and immediately after the incident. If the reason is predictable, it cannot be considered justifiable. That is, a lapsed patent right cannot be restored when the reason for missing the deadline was predictable. Conversely, if the reason for missing the deadline was unpredictable, the lapsed patent right may be restored provided that the applicant took all necessary measures to avoid any mistakes. (2) Procedural Requirements: An application for the restoration of rights should be filed within two months from the date on which the justifiable reason for non-compliance with the original time limit expires, and at the latest within one year after the original time limit. (In this regard, the procedural requirements are identical to South Korea and the EPO.) 4. European Patent Office (EPO) The re-establishment of rights under Article 122 of the European Patent Convention can be used to recover rights lost as a result of missing a deadline set by the EPO. Unlike other countries, a unique legal remedy called ‘further processing’ allows applications to proceed if the applicant makes a request for further processing of the application within two months of the communication concerning either the failure to observe a time limit or a loss of rights. (1) Substantive Requirements: The EPO shall re-establish rights if a party can demonstrate that they were unable to observe the missed time limit in spite of all due care required by the circumstances having been taken. The key requirement, therefore, is to prove that “due care” was taken. The obligation to exercise due care must be considered in light of the situation as it stood before the missed time limit expired. “All due care” means all reasonable care, i.e., the standard of care that a reasonably competent patentee, applicant, or representative would employ in all the relevant circumstances. (2) Procedural Requirements: An application for the restoration of rights should be filed within two months from the date on which the justifiable reason for non-compliance with the original time limit expires, and at the latest within one year after the original time limit. (In this regard, the procedural requirements are identical to South Korea and Japan.) ‘Further processing’ must be requested within two months of the date on which the communication concerning either the failure to observe a time limit or a loss of rights is notified.

2022-04-20
READ MORE
Comparative Law

Comparing design drawing systems in KR/US/CN/JP

tents/Country South Korea U.S.A. China Japan Examination Method Substantive Examination (no substantive in some categories) Substantive Examination No Substantive Examination Substantive Examination Number of Drawings No Limit No Limit No Limit No Limit Specimen Submission Permitted Not Permitted Permitted (2D,3D) Permitted (2D,3D) Multiple-design Applications Permitted within same Locarno Classification (100) Unlimited (in concept of identical design) Permitted only for similar designs (10) Not Permitted Partial Design Permitted Permitted Not Permitted Permitted Drawing Format JPG, TIFF, DWG, IGES, 3DS, DWF, MPEG SWF, WMV PDF JPG, TIFF JPG, TIFF Drawing Size 200MB 100MB 13MB 200MB Drawing Description Optional Necessary Necessary Necessary Basically Required Drawings Not Required Not Required Required Required Pictures as drawings Permitted Permitted Permitted Permitted Technical Drawings Not Permitted Not Permitted Permitted Not Permitted Enlarged View Drawing Permitted Permitted Permitted Permitted Sectional View Drawing Permitted Permitted Permitted Permitted Exploded View Drawing Permitted Permitted Permitted Permitted Using State View Drawing Permitted Permitted Permitted Permitted Planar View Drawing Permitted Permitted Permitted Permitted Motion Design Drawing Permitted Permitted Permitted Permitted Design Drawing for a Set of Articles Permitted Permitted Permitted Permitted Combinatorial Design Drawing Permitted Permitted Permitted Permitted Drawing Amendment after filing an application Permitted Permitted Permitted Permitted

2022-04-20
READ MORE
Comparative Law

Comparing design drawing systems in KR/Hague/EU/DE/UK/FR

Contents/Country South Korea Hague EU Germany U.K. France Examination Method Substantive Examination (no substantive in some categories) - No Substantive Examination No Substantive Examination No Substantive Examination No Substantive Examination Number of Drawings No Limit No Limit 7+3(Not Protected) 10 12 100 Specimen Submission Permitted Permitted (2D) Permitted (2D) Permitted (2D,3D) Permitted (2D) N/A Multiple-design Applications Permitted within same Locarno Classification (100) Permitted Permitted within same Locarno Classification (99) Permitted(100) Permitted (Unlimited) Permitted (Unlimited) Partial Design Permitted Permitted Permitted Permitted Permitted Permitted Drawing Format JPG, TIFF, DWG, IGES, 3DS, DWF, MPEG SWF, WMV JPG, TIFF JPG, PDF, X3D, OBJ, STL JPG JPG, GIF, TIFF JPG, GIF, PMG, BMP Drawing Size 200MB 2MB 20MB 200MB 48MB 100MB Drawing Description Optional Optional Not Required Optional Optional Optional Basically Required Drawings Not Required Recommended Not Required Not Required Not Required Not Required Pictures as drawings Permitted Permitted Permitted Permitted Permitted Permitted Technical Drawings Not Permitted Not Permitted Permitted Not Permitted Not Permitted Permitted Enlarged View Drawing Permitted Permitted Permitted Permitted Permitted Permitted Sectional View Drawing Permitted Permitted Permitted Permitted Permitted Permitted Exploded View Drawing Permitted Permitted Permitted Permitted Permitted Permitted Using State View Drawing Permitted Permitted Permitted Permitted Permitted Permitted Planar View Drawing Permitted Permitted Permitted Permitted Permitted N/A Motion Design Drawing Permitted Permitted Permitted Permitted Permitted Permitted Design Drawing for a Set of Articles Permitted Permitted Permitted Permitted Permitted Not Permitted Combinatorial Design Drawing Permitted Permitted Permitted Permitted Permitted Permitted Drawing Amendment after filing an application Permitted Not Permitted Permitted Permitted Permitted Permitted

2022-04-20
READ MORE
Practice Notes

Updates on Korean trademark law change during COVID-19 (in effect from August 2022)

As a new year has dawned in the midst of the pandemic, the National Assembly, Korea’s legislative branch, gave encouraging gifts to trademark owners by approving amendments to the Trademark Act. The amendments introduce features such as a partial rejection system, a re-examination system, and an expansion of the ways in which trademark holders can prove “use” of their registered trademarks. The revisions were promulgated in early February. The partial rejection and re-examination systems will take effect from February 4, 2023 (one year after promulgation), while the expanded scope of trademark use will take effect from August 4, 2022 (six months after promulgation). What is changing? (Partial Rejection System) Under the current system, where one or more designated goods/services under a trademark application have reasons to be refused, the entire application is doomed to the same fate. It’s an all or nothing game. The only way to save the application without an appeal process is to file an amendment to remove the problematic goods/services (i.e. giving them up entirely through deletion, or splitting off into a divisional application), inevitably at the expense of time and dollars. However, the amended Trademark Act will allow partial rejections of applications. Specifically, examiners may refuse some of the designated goods/services while granting registration of the application for the remaining specification. In cases where the applicant is content to forfeit the refused goods/services, no further action is required on their part to have the application registered for the remaining non-problematic goods/services. This is comparable to practices in other jurisdictions like the US, China, and EUIPO. Also, in line with the partial rejection system, applicants will be able to file an appeal with the IP Trial and Appeal Board (IPTAB) with respect only to the refused goods/services (as a whole, or in part), as opposed to the entire specification of designated goods/services. For further convenience to the appellant, it will be possible to abandon certain goods/services while the appeal is pending with the IPTAB. (Re-examination system) Currently, once an application is finally rejected, the only recourse is to appeal to the IPTAB, no matter what the grounds of rejection are. This is the case even if the application was rejected for non-substantial reasons that can be cured simply by amending the mark or the designated goods/services. The revised Act introduces a re-examination system, where in such straightforward cases applicants may request re-examination and simultaneously file an amendment to cure the rejection grounds. Re-examination by examiners is faster, more convenient and less costly compared to an appeal. This gives applicants another option to choose upon deciding how to respond to an examiner’s final rejection. (Expanding types of trademark use) A trademark registration confers an exclusive right to the use of the registered trademark. Traditionally, trademark “use” has been premised on possession and transfer of ownership of physical products. By legal definition, the term “use” of a trademark means, inter alia, transferring or delivering goods or packages of goods on which trademarks are displayed. There have been discussions as to whether this definition is optimal or adequate for digital products. The amended Trademark Act addresses this issue by including the provision of trademarked goods via a telecommunications line (i.e. online provision) within the core definition of “use of a trademark”, in addition to exhibiting, importing, or exporting trademarked goods for the same purpose. Common examples of this type of use may include uploading or providing subscription services for trademarked computer programs, transmitting e-books and digital files, and providing apps, e-coupons or emoticons via app stores. What to expect? These changes are expected to aid applicants, especially individuals or small and medium sized enterprises who are often unfamiliar with trademark prosecution, in securing trademark rights while also saving time, money, and effort that previously had to be spent analyzing trademark examiners’ grounds for refusal. In addition, the expansion of the types of online trademark “use” reflects the growing increase in the number of digital transactions in the e-commerce market. The new Act will be welcome news for trademark owners, for example whether they need their own online use to be recognized as legitimate “use” to defend a non-use cancellation action, or when their trademarks have been used online by others without authorization and they wish to pursue a claim of infringement.   Author Recent Posts Ben YUU Latest posts by Ben YUU (see all) Author Recent Posts Samuel PARK (Legal Intern) Latest posts by Samuel PARK (Legal Intern) (see all)

2022-02-07
READ MORE

Send us a message

We usually respond within a few hours

If you agree to use personal information, please check the box.