특허법인 남앤남

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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

2023
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.
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Practice Notes

KIPO moving towards accepting letters of consent to resolve trademark conflicts

All trademark applications in Korea are examined for both absolute and relative refusal grounds, and refusals based on similarity with another party’s conflicting senior mark are commonplace. In fact, KIPO statistics indicate that approx. 40% of office actions issued against trademark applications in 2022 included a refusal ground due to conflict with a senior mark.   In such situations, if the conflicting goods/services of the pending application are important to the applicant and cannot be deleted, trademark practitioners in Korea are often asked whether it is possible to obtain and submit a letter of consent from the owner of the senior mark, expressing their agreement to the co-existence of both marks on the register. This is a topic which has been considered by the IP office in the past, but to date the answer has always been negative, with letters of consent, co-existence agreements etc. not accepted by KIPO examiners.   However, recent developments indicate that change is on the horizon.   Current situation   At present, the only practical way to achieve co-existence of conflicting marks on the register is to unify the ownership of the marks via assignment (with all relevant marks being owned by the same party) until the refusal ground is withdrawn and the junior application is granted registration. At this time, the original ownership can be restored via an assignment in the reverse direction. This is often referred to as a “temporary assignment” or “assign-back” procedure. However, even if both parties are cooperative, the additional complexity in securing agreements and the documentary requirements (notarized deeds of assignment being necessary at each stage, for example) make it significantly more time- and effort-intensive than simply obtaining a letter of consent.   The complexity escalates even further if there are multiple senior marks owned by different parties, in which case unification of ownership may be a practical impossibility. Brand owners are also often unwilling to cooperate in such a procedure if it means relinquishing ownership of their marks — albeit temporarily — even in cases where they do not oppose the registration of the junior application.   Possible changes   In her New Year’s address, KIPO Commissioner Insil Lee specifically mentioned the need for a letter of consent system to enable easier coexistence of trademarks. Following this, a bill with amendments to the Trademark Act was submitted before the National Assembly on March 20, 2023 (link in Korean). The bill proposes the following changes:   Allow a refusal ground based on conflict with a senior mark to be withdrawn if consent from the owner of the senior mark is obtained, except in cases where the respective marks and goods/services are identical. Allow for cancellation of a mark registered based on such consent, should the mark be used anti-competitively and cause consumer confusion. What's next?   While the pending bill is still at the committee review stage and several more steps must be completed before its promulgation into law, considering the current context and opinion surrounding this issue we are optimistic that the proposed changes will pass through the legislative process and eventually come into effect. We will be monitoring the progress of the bill and will report on any noticeable developments.   Written by Jonathan MASTERS

2023-04-27
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Practice Notes

Designs in South Korea: partial versus full examination

Introduction   With the entry into force of the 14th edition of the Locarno Classification from 1 January 2023 (which applies to designs filed on or after this date), a number of design articles have moved to different classes. Some examples are set out in the following table.   Previous class New class Article name 21-02 02-01 Waist supports for exercise 28-02 09-05 Lipstick tubes [packaging containers] 03-03 24-05 Crutches 02-03 29-02 Disposable face masks   This is particularly relevant in South Korea as design applications follow one of two examination tracks — partial examination or full examination — based on the Locarno class of the design article.(1) At the time of writing, designs that fall under the following seven Locarno classes are subject to partial examination:   class 01 – foodstuffs; class 02 – articles of clothing and haberdashery; class 03 – travel goods, cases, parasols and personal belongings, not elsewhere specified; class 05 – textile piece goods, artificial and natural sheet material; class 09 – packages and containers for the transport or handling of goods; class 11 – articles of adornment; and class 19 – stationery and office equipment, artists' and teaching materials.   Designs in all other Locarno classes are subject to full examination.   Looking at the examples in the above table, the first two articles will now be subject to partial examination in Korea, while the latter two will go through full examination.   So, what is the difference?   Partial examination   This is a fast-track examination process for designs typically sensitive to trends or that have a short life cycle. The examination stage comprises a check of the following, but does not include a substantive examination of novelty or creativity:   application formalities (eg, applicant details and suitability of drawings); basic formalities (eg, design cannot be similar to national flag or emblem, morally unsound, liable to cause confusion with another party or purely functional); industrial applicability; and limited novelty requirements (cannot be a "widely known" design or a combination of widely known shapes, patterns or colours).   The examination timeframe for partial examination designs is typically around two to three weeks, so protection can be obtained rapidly.   Another feature unique to partial examination designs is the existence of an opposition period following publication (laying open) of the design in the Design Gazette. Due to the limited novelty search carried out during examination, this provides an opportunity for any other parties to oppose the registration. The opposition period is three months from the date of publication. After this time, it is still possible for interested parties to bring an invalidation action.   Most official fees are also lower for partial examination designs, including the application fee (currently ₩45,000 per design) and annuity payments, which are a fixed cost (currently ₩17,000 per year) for the lifetime of the design.   Full examination   As the name implies, this is a substantive examination process that, in addition to the partial examination details above, also includes a comprehensive prior art novelty search.   Reflecting the more involved process, the examination timeframe for full examination designs is considerably longer — currently around six to 12 months. After registration and publication (laying open) in the Design Gazette, there is no opposition period. To contest the registration, an invalidation action must be brought.   The official application fee for full examination designs is more than double that of partial examination designs (currently ₩94,000 per design) and, as with patents, the annuity fee payments increase over the lifetime of the design. Currently, they rise from ₩17,500 per year for years four to six to ₩105,000 per year for years 13 to 20.   Written by Jonathan MASTERS

2023-03-03
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