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Supreme Court reaffirms criteria used to judge source confusion with “renowned” marks

The Supreme Court has recently dismissed an appeal in a trademark invalidation action under Article 7(1)(10) of the old Trademark Act (before promulgation of the current Act on February 29, 2016), which provided a relative ground for refusal based on potential consumer confusion with another party’s mark which is already “remarkably recognized” in Korea. The decision we are discussing (case 2019Hu12179; April 29, 2020) reaffirms the consistently applied criteria for judgement in such cases, that is, whether there is concern that consumers would readily associate a trademark in question with the existing renowned trademark, goods or business of another party, thereby bringing about source confusion. As the judgement relating to similarity of trademarks and overlap in consumers at the Patent Court (earlier instance) differed to that of the Supreme Court, the earlier judgement has been quashed and the matter remanded to the Patent Court. In the Supreme Court decision, the prior-registered mark “” was considered to be a renowned trademark at the time an application for “ ” (hereafter, “the subject mark”) was filed in class 18, and the “” part of the subject mark — said to be strongly distinctive — was considered to differ from the prior-registered mark only in the addition of the final “C” in terms of sound. Further, it was judged that the designated goods of both marks were similar and the consumer groups substantially overlap, and thus Article 7(1)(10) of the old Trademark Act applies to the subject mark. Whereas, in the Patent Court, the two marks were considered to be dissimilar, with the court recognizing that the plaintiff had operated with their trade name pronounced as “MICMAC Lab”, in accordance with the lower “” portion of the subject mark, and that consumers also used this name for the business. Further, given that the upper part of the subject mark contains dots between the English letters, it was considered probable that consumers would refer to the lower part of the mark, and thus be more likely to read the mark as “MICMAC” or “MICMAC LAB” rather than the individual letters “M – C – M – C”. However, the Supreme Court did not readily accept that consumers would widely consider the pronunciation of the subject mark to be “MICMAC” or “MICMAC LAB” based only on the fact the trade name “MICMAC LAB” was used by the defendant (= plaintiff in the earlier instance). It was also judged in the Patent Court that the overlap in consumers of “bags for snowboards” — which are used under the subject mark — and “bags” (recognized to indicate “fashion bags”) of the prior-registered mark would not be significant, while the Supreme Court conversely found that there is similarity in the designated goods and overlap in consumers of the two marks, and thus consumers would readily associate the subject mark with the prior-registered mark, bringing about source confusion. The conclusions as to trademark similarity in the two decisions differ depending on whether the subject mark was considered to be pronounced as per the defendant’s trade name in the lower “” part, and in my opinion the reason the Supreme Court did not admit that most consumers would pronounce the subject mark as per the defendant’s trade name is because the assertion that most consumers would be aware of the trade name was not sufficiently and objectively proven. Further, in the Patent Court, the goods on which the subject mark was actually used (bags for snowboards) — which were not a designated goods description covered by the trademark registration — were used when comparing the overlap in consumers with the prior-registered mark. However, as this case (an invalidation trial) was for determining ineligibility for trademark registration, I believe that it would be fairer to make comparison based on the designated goods listed under the registration of the subject mark, rather than other goods on which the mark is actually used. In such case, as the designated goods were not limited to “bags for snowboards” but did include “bags”, it would be natural to conclude that not only are the goods similar to the prior-registered mark, but there is also overlap in consumers. (A comparison was actually made considering the designated goods of both marks, but as the other party’s renowned mark was a registered trademark and the designated goods of the prior-registered mark also included “bags”, it did not affect the conclusion.) In this decision, judgements relating to Articles 7(1)(7) (ineligibility for trademark registration due to similarity with an earlier registered mark) and 7(1)(11)+7(1)(12) (ineligibility for trademark registration due to similarity with an earlier used mark) of the old Trademark Act — which were among the grounds for invalidation of the subject mark — were omitted. Reading between the lines, this can be understood to mean the Supreme Court presupposed that the prior-registered mark is a “renowned trademark” — the highest degree of fame accorded to prior-used trademarks — and as it was judged that the potential for consumer confusion with respect to such a renowned trademark did exist, saw no need to pass separate judgement on these grounds.     Written by Sung-yeon CHO

2020-06-15
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Unfair Competition: Putting unauthorized use of another person’s investment/efforts out to grass

The Supreme Court has recently ruled on a case in which the plaintiff, the owner of a golf course, complained about the unauthorized use of computer graphics by the defendant, who provided screen golf operators with digital reproductions of the golf course (case 2016Da276467; March 26, 2020). What might be the legal repercussions for using a reproduction of a golf course for commercial purposes in a screen golf establishment without the permission of the golf course owner? Article 2(1) of the Unfair Competition Prevention and Trade Secret Protection Act (hereafter “Unfair Competition Act”) enumerates various specific acts deemed to be unfair competition, with item 2(1)(k) — known as the “catch-all” clause — providing that an act of “infringing on other persons’ economic interests by using the outcomes, etc. achieved by them through substantial investment or efforts, for one’s own business without permission, in a manner contrary to fair commercial practices or competition order” is also considered unfair competition. The Supreme Court does not limit the interpretation of “outcomes, etc.” mentioned in the above provision to tangible property, meaning that certain forms of intangible property which were previously difficult to protect under existing IP laws may also be included. When such “outcomes, etc.” are judged, the Supreme Court has stated that their reputation and economic value, consumer attraction, and importance/competitiveness in the relevant commercial area must be considered in a comprehensive manner. Whether such “outcomes, etc.” were achieved “through substantial investment or efforts” is judged concretely and specifically with respect to the content and the extent of the investment or effort expended, in light of the practices and realities of the relevant business area. In using such “outcomes etc.” without permission, it must be possible to assess whether the infringed economic interests belong to the public domain and are thus freely available for anyone to use. Further, whether an act is deemed to be “for one’s own business without permission, in a manner contrary to fair commercial practices or competition order” will require comprehensive consideration of whether the owner and potential infringer are competitors or there is a likelihood of competition in the near future; the business practices and competitive order in the business area to which the “outcomes, etc.” claimed by the owner belong, and whether such practices and competition are fair; whether such “outcomes, etc.” can be replaced by the potential infringer’s goods or services in the marketplace; and the extent to which the “outcomes, etc.” are known to consumers and traders, as well as the likelihood of confusion among consumers and traders. The Supreme Court handed down a judgment on this case based on the aforementioned standards, determining that while the course itself is a copyright work of the designer, the comprehensive image of the course including externally expressed terrain, landscape, landscape components, facilities etc. which make up the actual golf course is separate to the design of the course alone, and is an outcome achieved through substantial investment or efforts of the plaintiff, who constructed and now operates the golf course. Accordingly, the defendant’s act of creating and using a 3D image of the golf course for use in screen golf simulation systems without the permission of the plaintiff — in which the golf course was reproduced almost identically — was deemed to be an infringement of the plaintiff’s economic interests by using the plaintiff’s “outcomes, etc.” for the defendant’s business without permission, in a manner contrary to fair commercial practices or competition order, thus falling under Article 2(1)(k) of the Unfair Competition Act. The takeaway from this case is that in infringement situations where the facts of the case make a claim for damage compensation under the Copyright Act or other IP laws challenging, if the infringed intangible/tangible property was achieved through substantial investment or efforts, and the actions of another party can be considered as being for their own business without permission, in a manner contrary to fair commercial practices or competition order, it may be possible to rely on Article 2(1)(k) of the Unfair Competition Act when seeking compensation for damages.     Written by Jae-sang LIM

2020-06-03
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KIPO Examination Guidelines on Artificial Intelligence

With the fourth industrial revolution, applications of artificial intelligence (AI) are appearing in various fields and the technology is a hot topic of discussion. The Patent Examination Guidelines of the Korean Intellectual Property Office (KIPO) provide principles and examples related to patent eligibility and inventive step of AI related inventions, and KIPO has provided some AI-related patent examination cases in a recently-issued case book. Although the definition of an AI-related invention is not explicitly specified, KIPO defines it as a computer/software-related invention for performing specific functions using AI training. Thus, the general Korean patent rules related to computer/software inventions can still apply to AI-related inventions. However, due to the AI-specific details involved in the various aspects of components, additional AI-specific guidelines are also provided by KIPO. For example, the recent case book generally states that AI-related inventions may involve generating trained models based on training data and a learning model (AI learning modeling invention), or performing specific functions by applying the training data and/or the trained model to various technical fields (AI application invention). Patent Eligibility Article 2 of the Korean Patent Act defines an “invention” as “the highly advanced creation of a technical idea utilizing the laws of nature”. Although software inventions (including AI inventions) are not considered to wholly utilize the laws of nature, the Patent Examination Guidelines prescribe requirements under which computer-related inventions are considered to be patent-eligible where information processing by software is implemented in detail using hardware. More specifically, the Guidelines state that computation or processing of unique information according to the purpose of use should be implemented by specific means or methods in which software and hardware co-operate, and thereby a unique information processing apparatus or an operating method thereof according to the purpose of use should be established. In addition, with regard to AI-related inventions, the Guidelines further require that the same effect must be repeatedly achievable without intervention based on human mental activity. Accordingly, if an algorithm corresponding to an AI invention is implemented using hardware, the invention may be recognized to be patent-eligible under these requirements. Description Requirements  Like inventions in other technical fields, AI inventions should follow the Korean patent rules which provide that a detailed description of an application should be clearly and concretely described such that a person skilled in the art can easily practice the invention, and the invention of claims should be supported by the detailed description. The recently issued AI invention case book includes a case that did not meet the requirements with regard to AI inventions, explaining that if a claim recites features related to a correlation between input training data and output data of a trained model, if the detailed description merely lists a plurality of items of training data and does not concretely describe the correlation, the detailed description is not clearly described. Furthermore, in this case, the claim may not be considered to be supported by the detailed description. Although these conclusions were based on general Korean patent rules, the examination result shows an example of explicit standards for determining whether an AI-related invention meets the description requirements. Assessment of Inventive Step As the Patent Act and Examination Guidelines related to inventive step are quite inclusive, neither the relevant parts of the Act nor the Guidelines have been majorly affected by the appearance of new concepts of invention. Although it seems that KIPO tends to maintain a high threshold when judging inventive step for AI-related inventions, the conventional general standard related to inventive step has not itself changed due to AI inventions. Nevertheless, the Patent Examination Guidelines and the case book provide some additional guidance related to the AI-specific characteristics. As a general rule prescribed in the Guidelines, simply implementing a previously or generally known technology with artificial intelligence technology without specifying unique information processing performed via a learning model is not considered to involve an inventive step. Additionally, as mentioned above, AI-related inventions may involve components corresponding to the training data and the learning model. The cases introduced by KIPO fall into several categories based on the components: Case 1 is where a claimed invention and a cited invention are substantially the same in terms of technical field and training data, but are different in terms of a learning model. If an improved effect can be achieved by the difference, inventive step can be recognized. Case 2 is the same as case 1 except that the difference in the learning model is merely a simple design modification. In this case, inventive step is not recognized. However, if there are differences in specific features other than the training data and the learning model and the differences exhibit an improved effect, inventive step can be recognized. Case 3 is where a claimed invention and a 1st cited invention are substantially the same in terms of technical field and learning model, but are different in terms of training data. If a 2nd cited invention has the feature corresponding to the training data, and there is no difficulty in combining the cited inventions, inventive step is not recognized. Case 4 is where a claimed invention and a 1st cited invention are substantially the same in terms of technical field and training data, but are different in terms of learning model. If a 2nd cited invention has the feature corresponding to the learning model, and there is no difficulty in combining the cited inventions, inventive step is not recognized. It seems that KIPO tends to apply a higher threshold when assessing inventive step concerning a difference in training data compared to that of a learning model. Conclusion Under Korean patent law, it currently appears that AI-related inventions are still considered to come under computer/software inventions, albeit with some unique additional aspects. Although there remains some doubt as to whether the Korean Patent Examination Guidelines sufficiently reflect the characteristics of AI-related inventions, such details or characteristics of AI-related invention are gradually being reflected more clearly. Accordingly, while complying with the current guidelines, it will be necessary to keep an eye on future developments in the Guidelines as well as related trends.   Written by Byung-kyu KIM

2020-05-29
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Timing of Double Jeopardy Judgement in Patent Trials

Article 163 of the Korean Patent Act (‘Non bis in idem’) relates to double jeopardy, and provides that no person may demand a re-trial based on the same facts and evidence once a trial ruling on the same becomes final and conclusive. In the case of an invalidation trial, for instance, “the same facts and evidence” may refer to the grounds for invalidation (e.g. inventive step) and evidence (e.g. prior art). Accordingly, once a decision on the merits of such a trial (hereafter the ‘earlier trial’) has become final and conclusive, a subsequent trial filed based on the same facts and evidence (the ‘later trial’) is not permissible. Invalidation trials in Korea are inter partes actions, but as a ruling on validity/invalidity has a general effect, the manner in which double jeopardy is applied is important. In particular, the point in time at which it is determined whether there is an earlier final and conclusive judgement on the merits in an earlier trial and the point in time at which it is determined whether “the same facts and evidence” exist with respect to a later trial can be problematic. Before, the existence of an earlier final and conclusive trial ruling was determined at the time of ruling in a later trial. However, this was changed according to a January 19, 2012 en banc Supreme Court decision (case 2009Hu2234), following which the timing of such determination was brought forward to when the later trial is filed. Based on this, if the ruling in an earlier trial only became final and conclusive after the later trial had been filed, the provisions relating to double jeopardy would not apply. On April 9, 2020 another Supreme Court decision relating to the timing for determining the existence of “the same facts and evidence” was handed down (case 2018Hu11360). This decision clarifies that for patent invalidation trials, the point in time at which it is determined whether the “same facts and evidence” exist in an earlier trial is when the trial decision is issued by the Intellectual Property Trial and Appeal Board (IPTAB) in the later trial. The history of this recent case is as follows: an invalidation action filed by Party C concerning Party B’s registered patent was dismissed (i.e. the patent was deemed to be valid) and such decision became final and conclusive; Party A subsequently filed an invalidation action based on the same facts and evidence, and the IPTAB dismissed the action based on double jeopardy; Party A then appealed this decision to the Korean Patent Court and raised a new ground for invalidation which was not dealt with in the earlier instance; the appeal was dismissed by the Patent Court, and Party A further appealed up to the Supreme Court. In dismissing Party A’s appeal, the Supreme Court ruled that “when determining if the provisions of double jeopardy apply, the IPTAB must consider all of the amended facts and evidence from the time the trial was filed until the time of ruling and, on the basis of the time of ruling, determine whether the filed trial is based on the same facts and evidence as an earlier final and conclusive ruling”, going on to conclude that “the trial-requesting party is not permitted to present new grounds for invalidation [in a Patent Court action] which were not dealt with during the trial”. In short, when making a determination on double jeopardy, the existence of an earlier final and conclusive trial ruling is determined at the time of filing of a later trial, and whether the case relates to the same facts and evidence is determined at the time of ruling in the later trial. Practically speaking this means that before a ruling in an earlier invalidation trial becomes final and conclusive, a third party may file a separate invalidation trial based on the same facts and evidence, and during the course of this separate trial may present new invalidation grounds or evidence (e.g. new prior art) in the knowledge that when the determination is made as to whether the facts and evidence in the two trials are the same — i.e. at the time of ruling of the later trial — if the facts and evidence have since become different, the matter will not be deemed to fall within the definition of double jeopardy.   Written by Young-min KIM

2020-05-26
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Expansion of DAS Priority Document Exchange System for Design Applications (from April 2020)

Utilizing the WIPO Digital Access Service (DAS) allows for priority documents to be exchanged between IP offices electronically, eliminating the need to issue and send physical priority documents when filing new applications with a priority claim. To perfect a priority claim using this system when filing in Korea, it is sufficient to simply provide details (application no., application date) of the earlier application filed in one of the supported countries, along with the DAS code. As of April 1, 2020, the DAS system for exchange of design application priority documents between the Korean IP Office (KIPO) and other IP offices has been expanded to include seven new countries, bringing the total to ten. Details below: DAS Implementation Date (for Design Applications) Countries Jul 1, 2018 China Dec 1, 2018 US Jan 1, 2020 Japan Apr 1, 2020 Norway, Spain, Australia, Canada, Chile, Georgia, India In addition, DAS exchange of priority documents will now be supported between KIPO (Korea), the USPTO (US) and JPO (Japan) for international design applications filed via the Hague system.     Written by Jonathan MASTERS

2020-04-01
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Sharp Increase in Design Applications for Masks

The 2019 novel Coronavirus (COVID-19) has now spread to nearly every country in the world since it first emerged from Wuhan, China in December 2019, and is now having a massive impact on the daily lives of millions upon millions of people worldwide. It has been suggested that wearing face masks could help contain the virus, and in many countries donning a mask has become part of the daily routine. On March 4, 2020, the Korean Intellectual Property Office released interesting statistics related to masks. It shows that the number of design applications for masks has increased 11-fold, from 73 cases in 2010 to 815 cases in 2019, with the year-on-year design application growth rate standing at 212.3 percent. [No. of Design Applications Per Year & Application Growth Rate Based on Previous Year] Since 2013, the number of design registration applications has been steadily rising in line with the growing awareness of the harm of fine dust particles, as well as the outbreak of respiratory diseases such as MERS in May 2015. As ultrafine dust levels continued to hit record highs of 144μg/m3 in March 2019 and 149μg/m3 in November in 2019, the number of design applications seems to have surged. Masks of various designs have been registered, as shown below:   Registration No. (Registration Date) Title Drawing 30-1023486 (2019.09.09) Yellow dust mask   30-0975385 (2018.09.28) Sanitary Mask   30-0959755 (2018.06.04) Nasal Mask IR DM/093853 (2017.08.29) Breathing mask   [Examples of Registered Mask Designs] Most design applications for masks are subject only to partial examination*, and from December 2019, the examination pendency for partial examinations has been shortened to 10 days (discussed here in further detail). Furthermore, KIPO also announced that it will do its best to quickly examine design applications for masks, and thus applicants are expected to be able to secure design rights for masks relatively quickly. While it is interesting to look at application trends for masks, on a more serious note we sincerely hope that the pandemic subsides as soon as possible, and we wish all of those reading, as well as their colleagues, friends and families well in these unpredictable times. * Partial examination: Designs which have a short life-cycle and are sensitive to trends, such as clothing and fashion items, fabrics, etc., are subject only to “partial examination” comprising a formality check and limited industrial applicability/novelty requirements.     Written by Yujin JUNG

2020-03-30
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Keep an eye on your licensees! Korean Supreme Court renders trademark cancellation decision

Trademark owners are able to license others to use their registered trademark, either on an exclusive or non-exclusive basis. Once a license has been concluded, is the collection of royalties all that’s left to worry about? Absolutely not! Trademark owners have an obligation to monitor licensees using their trademarks. This is not simply to preserve the integrity of the trademark or to maintain some kind of moral responsibility — the trademark rights themselves are at risk if this obligation is neglected. A recent Supreme Court case illustrates this point clearly. Relevant Law The Korean Trademark Act allows for registered trademarks to be revoked for a handful of reasons, including the following (emphasis added): Where a trademark right holder causes the misunderstanding of the quality of goods or confusion with goods related to another person’s business among consumers by wilfully using a trademark similar to the registered trademark on the designated goods, or using the registered trademark or a similar trademark on goods similar to the designated goods — Article 119(1)1 Where an exclusive or non-exclusive licensee causes the misunderstanding of the quality of goods or confusion with goods related to another person‘s business by using a registered trademark or a trademark similar to the registered trademark on the designated goods, or goods similar to the designated goods: Provided, That the foregoing shall not apply where the trademark right holder pays considerable attention — Article 119(1)2 For this article we are mainly concerned with the latter provision relating to use by licensees, but it is important to remember that the same applies to trademark owners, too. Decision The recent decision we will be looking at (2017hu2178; Supreme Court, Feb 13 2020) is a case where the trademark owner lost their registered mark due to improper use by a licensee. In summary, the original trademark owner had registrations for trademark “A” (covering class 29 goods), as well as the same trademark with an added part “α” in the form “A+α” (covering class 35 services). The designated goods/services of each mark relate to seaweed. The “A” trademark was transferred to the defendant in this matter, and the original trademark owner used the “A+α” mark in the course of their own business. The defendant subsequently licensed the “A” mark to a third party, but the licensee changed the form of the mark and actually used it in a manner similar to “A+α”, thereby causing confusion with respect to the original trademark owner as to the source of goods. According to the Supreme Court’s decision, the registration of trademark “A” is to be cancelled. Analysis The case raises some interesting questions: (1) Who is the “another person” indicated in the provision of the Trademark Act shown above? In an earlier-instance trial decision, use of the trademark “A+α” by the licensee of trademark “A” was not deemed to justify cancellation of trademark “A”. The reasoning for this was that when a trademark right is transferred, a certain amount of source confusion between the former and current owners of the mark is to be expected, and so even if such source confusion does occur it cannot be deemed improper use of the mark. However, the Supreme Court took a different stance. Noting that there is a great potential for source confusion with respect to the original owner when a trademark is used by a licensee following the transfer of a trademark right, the Supreme Court stated that in such a situation there is an obligation for trademark owner to monitor the licensee’s use in order to prevent them from illegally using the registered trademark beyond the scope of the license. Accordingly, if a trademark right has been transferred then “another person” includes both the original trademark owner and the licensee who has been permitted by the trademark owner to use the mark. (2) Does the trademark used by the “another person” have to be the registered trademark?  In short, no. However, it is required that the mark actually used at least be considered by domestic consumers/traders as being the mark of a particular person. In this case, the “A+α” trademark has been used by the original owner since 2006 and so was known to some extent. (3) If the “A+α” trademark used by the original owner fell within the scope of trademark “A”, would the outcome be different? Again, no. The purpose of trademark law is to protect consumers, and so the law does not differentiate between these cases. (4) What exactly does the “considerable attention” exception entail? It is not sufficient for a trademark owner to simply warn a licensee not to cause confusion, and the trademark owner must instead be able to show that they can assess that the licensee’s use of the trademark is under their control — for example by regularly monitoring the actual use by the licensee. This may include distribution of operation manuals, requesting sample products and approving the use of the mark, etc. The trademark owner has a responsibility to prove this fact, and in the case being discussed no such evidence was submitted. (5) How is confusion with another person’s goods assessed? According to the Supreme Court, when assessing whether or not there is confusion, the focus should be on the degree to which the trademark in actual use differs from the registered trademark, much like in a normal assessment of similar trademarks. Take-aways This case once again emphasizes the need for trademark owners to monitor their licensee’s usage of a registered trademark. For trademark owners, the necessary measures are to either: (1) put practical arrangements in place to ensure the licensee does not cause confusion; or (2) at the very least make sure that the use of the mark is under the trademark owner’s control so that such problems can be avoided. In either case it would be wise for trademark owners to keep records or evidence which can prove their monitoring efforts.     Written by Ben YUU

2020-02-24
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Changes to Korean Trademark & Design Examination Guidelines (from January/March 2020)

The Korean IP Office (KIPO) has amended the examination guidelines for trademark and design with effect from January 1, 2020 and March 1, 2020 respectively. The most noteworthy changes are summarized below: TRADEMARK (from January 2020) 1. Amended guidelines for acquired distinctiveness The content previously detailed in an earlier post relating to acquired distinctiveness (see here) has now been incorporated into the examination guidelines. The major considerations are: (1) Period of trademark use The fact that a trademark has been used non-competitively and continuously for more than five years will be considered an important ground for recognition of acquired distinctiveness, with the specific product and market conditions also considered. (2) Consumer awareness surveys KIPO has specified criteria to be used when evaluating the credibility of consumer awareness surveys. Surveys must be conducted by a reputable organization with the necessary personnel and material requirements in place, and the location, gender, age etc. of actual or potential consumers of the same kind of product must be represented. When the number of survey respondents is over 500 and more than 50% of respondents consider the mark in question to belong to a specific entity, the survey results may be viewed as reliable. (3) Evaluation process An applicant’s claim of acquired distinctiveness will be evaluated by a three-examiner team including a team leader. If this initial evaluation is positive, a special committee for judging acquired distinctiveness will make a final assessment before the decision is rendered. 2. New guidelines for collective marks with geographical indication related to processed goods Going forward, when examining applications for registration of collective marks with a geographical indication which relate to processed goods, the history and fame of the goods attributable to the geographic environment will be considered when evaluating the correlations between particular qualities of the goods and the geographic environment. This reflects the reality that the characteristics of processed food are often more closely associated with human factors such as the historical nature of the goods and traditional methods of production, rather than the natural conditions of the climate and soil, etc. 3. New guidelines for applications related to medicines As interest in medication safety management increases, new guidelines have been added concerning applications for medicine name trademarks: When an application is filed for a mark identical to a third party’s pharmaceutical name already registered with the Ministry of Food and Drug Safety (MFDS) for manufacture/sale/importation, a refusal will be issued based on suspected lack of intention to use the mark. When an application is filed for (i) a mark identical or similar to an existing famous pharmaceutical name of the same applicant which covers different types of pharmaceutical products, or (ii) a mark identical or similar to a third party’s pharmaceutical name, a refusal will be issued based on the potential to mislead consumers with respect to the quality of the goods. 4. Expansion of applications eligible for accelerated examination An update to the Enforcement Decree of the Trademark Act in July 2019 expanded an already-existing provision based on third-party warnings, and added a new provision based on submission of prior mark search results from an authorized agency (a similar provision already existed for patent and design prior art searches). This has now been reflected in the examination guidelines: If a third party trademark owner objects to a trademark application, the following may be considered when deciding whether the application is eligible for preferential examination: (i) evidence of objection (copy of received warning letter, materials showing that the applicant has received a verbal warning or warning via SNS, or information brief filed by the third party); and (ii) the prior-filed application number on which the third party trademark owner’s objected is based. If a specialized agency (designated by KIPO) has been requested to perform a search for prior marks, the applicant can apply for preferential examination indicating the relevant facts on the application for preferential examination. For reference, when applying for accelerated examination of a trademark application, the applicant may expect confirmation of whether the request has been accepted within approximately 10 days (may take longer in some cases), with actual examination to start within 45 days of such confirmation. This contrasts with the 6+ months average time until first official action for regular-examination track applications (see here for more information on examination times). International (Madrid) applications are not eligible for accelerated examination. DESIGN (from March 2020) 1. Relaxed guidelines for English article names The guidelines relating to article names described in English will be relaxed for new applications, and even names entirely represented in English will be accepted if they are the ordinary name for the article or a name in common use. For example, “smart watch”, “MP3 player”, “cellular phone” etc. This contrasts with the previous requirement that article names be provided in Korean-language, with a foreign-language description following in brackets. 2. Examples of confusion-causing designs The updated guidelines include the following new examples of design applications that would be refused due to causing confusion with respect to another party’s business (specifically, similarity to well-known trademarks). Example 1 Example 2 Filed Design Famous 3D Trademark Filed Design Famous Trademark 3. Relaxed requirements for repeating design drawings For 3D products with a continuous form, or flat products with a repeating or continuous pattern, it was previously necessary for the repeating unit to be indicated at least 1.5 times in the drawings. Under the relaxed requirements, the repeating unit need only be indicated once so long as an explanation of the nature of repetition is provided separately in the application. Example: a textile design with vertically continuous/repeating pattern Before Amendment (Acceptable) After Amendment (Acceptable) (Explanation of vertical repetition should be provided separately) About Latest Posts Yujin JUNG Latest posts by Yujin JUNG (see all) About Latest Posts Jonathan MASTERS Latest posts by Jonathan MASTERS (see all)

2020-02-17
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Korean Trademark & Design Statistics and Examination Timeframes

In mid-January, the Korean IP Office hosted a presentation about trademark & design policies and trends for 2020. Among the topics presented were filing statistics and the issue of application pendency, with the trademark/design examination timeframes for recent years and predicted timeframes for 2020 being shared. Trademark The below table shows the number of trademark applications filed in Korea for the years 2015-2019, plus a projection for 2020. “Domestic Applications” refers to national applications filed directly with the Korean IP Office, and “International Applications” refers to international (Madrid) applications designating South Korea. The “Examination” columns are the average time taken between filing and first official action.   Domestic Applications International Applications Total Applications Examination (months): National Examination (months): International 2015 211,575 (⇑15%) 27,774 (⇑26%) 239,349 (⇑16%) 4.7 5.5 2016 204,013 (⇓4%) 23,742 (⇓15%) 227,755 (⇓5%) 4.8 4.7 2017 202,539 (⇓1%) 31,345 (⇑32%) 233,884 (⇑3%) 5.0 6.7 2018 232,109 (⇑15%) 31,031 (⇓1%) 263,140 (⇑13%) 5.5 6.4 2019 252,228 (⇑9%) 33,996 (⇑10%) 286,224 (⇑9%) 6.5 8.9 2020 [Predicted] 271,000 (⇑7%) 37,000 (⇑9%) 308,000 (⇑8%) 8.6-8.9 10.2-10.8 Design The below table shows the number of design applications filed in Korea for the years 2015-2019, plus a projection for 2020. “Domestic Applications” refers to national applications filed directly with the Korean IP Office, and “International Applications” refers to international (Hague) applications designating South Korea. The “Examination” columns are the average time taken between filing and first official action.   Domestic Applications International Applications Total Applications Examination (months): National Examination (months): International 2015 70,259 (⇑9%) 1,991 (⇑577%)* 72,190 (⇑6.3%) 4.4 5.7 2016 66,736 (⇓5%) 2,589 (⇑30%) 69,325 (⇓4%) 4.7 6.6 2017 64,986 (⇓3%) 2,388 (⇓8%) 67,374 (⇓3%) 4.9 7.7 2018 65,434 (⇑1%) 2,287 (⇓4%) 67,721 (⇑1%) 4.9 8.2 2019 66,648 (⇑2%) 2,259 (⇓1%) 68,907 (⇑2%) 5.4 8.5 2020 [Predicted] 68,000 (⇑2%) 2,300 (⇑2%) 70,300 (⇑2%) 5.7-6.0 10.0 * Design applications have been accepted in Korea via the Hague Protocol since July 1, 2014, hence the significant increase in 2015. Faster Registration of Partial-Examination Designs There are two examination tracks for design applications in Korea: (i) full examination, and (ii) partial examination, with the track based on the Locarno class of the design. Designs sensitive to trends or which have a short life-cycle, specifically designs which fall under Locarno classes 2 (clothing and haberdashery), 5 (textile piecegoods, artificial and natural sheet material) or 19 (stationery and office equipment, artists’ and teaching materials) are subject to partial examination. This comprises a formality check and limited industrial applicability/novelty requirements. Designs in all other classes are subject to full, substantive examination. In 2019, the examination pendency for partial design applications was approximately 60 days. In order to better serve applicants and allow for faster protection of designs which may have a very short lifecycle, KIPO intends to reduce this time to 10 days in 2020. This will be achieved by shortening internal administrative procedures and also recruiting new specialist examiners. As shown above, this contrasts with the 6 months for full examination design applications and 10 months for international designs predicted for this year     Written by  Jonathan MASTERS & Yujin JUNG

2020-02-11
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Criminal Punishment for Copyright Infringement (Korean Supreme Court Decision)

On December 24, 2019, the Korean Supreme Court rendered a decision in case 2019Do10086 relating to the conditions for criminal punishment for copyright infringement. According to the decision, which relates to software programs, in order for a suspected copyright infringer to be punished for violating the Copyright Act the suspect must be identified, and it must be precisely specified whether the act of the identified suspect is (i) a direct reproduction (i.e. copying a program) or (ii) an exploitation in business of a copyright-infringing copy of a program by a person who has acquired it with the knowledge of such infringement (i.e. a malicious use of a program). We will briefly discuss the case and its implications. Case Background The criminal defendants in this case are an advertising sales agency and subsidiary whose employees copied dozens of program works via unauthorized means, or used the same with bad faith in their work. After investigation, the prosecutor stated the criminal facts subject to judgment in the indictment such as “the defendant companies infringed the copyright of the program copyright holder as unidentified employees from the defendant companies obtained the program work via unauthorized copying and used it in their work”. Comment Article 136(1) of the Korean Copyright Act provides that a person who infringes on an author’s economic right or other property rights protected pursuant to the Copyright Act by means of reproduction may be subject to penalty provisions. Additionally, Article 136(2)-4 provides that a person who has acquired a copy of a copyright-infringing program with the knowledge of such infringement and exploits it in business may be subject to penalty provisions. That is, though the use of the program itself is not included in the conventional type of program copyright infringement, the legislation has been worded to ensure effective copyright protection for programs by considering the intentional exploitation in business of copies of copyright-infringing programs. Therefore, a person infringing on an author’s program copyright by means of reproduction may only violate above-mentioned Article 136(1) relating to copying, but would not violate Article 136(2)-4 relating to malicious use. In the decision, the prosecutor stated in the indictment that the defendant company infringed the copyright of the program copyright holder as unidentified employees from the defendant’s company obtained the program work via unauthorized copying and used it in their work. However, the Supreme Court found that the charge merely stated that the “employees obtained the computer program by unauthorized copying and used it in their work”, and so it is not clear whether the employees are in violation of Article 136(1) or Article 136(2)-4. Under the Korean Criminal Procedure Act, in order for a criminal defendant to be able to fairly defend their case, the charge must be stated clearly, with the time and date, place, and method of the crime specified. Criminal punishment of copyright infringement is no exception to this rule. Accordingly, as the criminal defendants in this case could not easily make a defense, the defendants could not be punished under either provision. Analysis According to this decision, in order for a corporation to be punished for copyright infringement, employees responsible for infringing the copyright must be individually identified, and for each identified employee it should be specified whether they are a person who copied the program, or a person who acquired and used the copy with knowledge of the infringement. Therefore, this decision will likely affect conventional crackdown practices by copyright holders seeking corporate liability due to the existence of illegal software stored in the media managed by a particular corporation.   Written by Yoon-Jung SHIN  

2020-01-31
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Software-related Korean Patent Act Amendment (from March 2020)

While software is automatically afforded copyright protection at the time of creation without the need for any special procedures, copyright protection protects the specific expression of an idea, not simply the idea itself. This can be problematic as no protection is available via copyright with regard to imitation software where the same idea may be expressed in a different way. There is currently no means to protect software resulting from a developer’s original idea in a manner equivalent to patent protection. Though there have been continued attempts to amend patent law to include protection for software per se, such attempts have failed due to concerns raised by private groups that doing so would excessively expand the range of infringing articles and lead to the shrinking of related industries. Current Practice According to current examination guidelines, protection is available for software only when embodied in a “tangible medium”, with no adequate protection available for software distributed online — a situation out of sorts with the reality of the modern world where the distribution of software increasingly revolves around online channels. Protection for software is available via process patents by specifying a series of processing steps. However, Article 2 of the current Patent Act distinguishes between acts of practicing process and product inventions as follows: Product: Manufacturing, using, assigning, leasing, or importing the product or offering to assign or lease the product (including displaying the product for the purpose of assigning or lease; hereinafter the same shall apply) Process: Using the process As a result, if software infringing a process patent (by way of example, a method of adjusting audio volume automatically in relation to vehicle speed) were to be distributed online for the purpose of sale, this would not be regarded as infringement of the patent. The reason for this is because the act of distributing software online for the purpose of sale is not itself regarded as practicing the patented method (i.e. using the method of adjusting audio volume automatically in relation to vehicle speed). Amendment According to an amendment passed on December 10, 2019 and due to come into effect from March 11, 2020 (Law No. 16804), the above-mentioned Article 2 of the Patent Act will be amended to bring the act of “offering the use of the process” within the definition of practicing an invention, in addition to the current “using the process”. This will mean that acts of selling patent-infringing software online, etc. will be regarded as practicing a patented invention. Nonetheless, online transmission of patent-containing software will not be deemed patent-infringing in all cases as the amendment contains a requirement that the offering of use of a patented process be intentional (specifically, offered in the knowledge that use of the method would infringe patent rights) in order for patent rights to be effective against the would-be offender. This limits offenders to sellers who illegally distribute software knowing that patent rights are being infringed. Accordingly, as infringement is not acknowledged if the seller is unaware of the infringement, it will be necessary for patent right-holders to first deliver warnings (cease-and-desist) to sellers illegally distributing software which infringes their patent. Wrap-up Following the amendment, adequate protection will be available not only against offline sales of patent-infringing software, but also online sales of the same. Offline sales of patent-infringing software may be protected against via patent claims relating to software embodied in a tangible medium (product claims), while online sales may be protected against via patent claims relating to a series of processing steps (process claims).     Written by Jae-hwan SIM

2020-01-17
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Patent Term Extension in Korea

The Korean patent term extension (PTE) system is comparable to the provision of supplementary protection certificates (SPC) in Europe. Like SPCs, the PTE system was introduced to compensate the patentee for commercialization delays due to clinical studies for safety and efficacy of drugs, testing for efficacy of pesticides, and regulatory review of the documentation requirements for marketing authorization (MA). Eligibility Patents eligible for PTE are valid patents for substances, processes, uses, and compositions, and only one extension per patent is granted, for a maximum period of five years. Different from the SPC filing term of 6 months from the MA date, in Korea, the PTE application should be filed within 3 months from the MA date. However, PTE applications may not be be filed within 6 months before the expiry of the patent term, since generic competitors may expect the original patent to expire and already be preparing to bring their cheaper generic drugs to market. Among other requirements, to be eligible for PTE, the relevant subject matter must be a new substance for which the first MA has been granted. According to a revision of the Enforcement Decree of the Patent Act in 2013, only new substances are eligible for PTE. Term & Scope In the U.S., the FTA calculates the extendable term and informs the USPTO and the patentee. However, the Korean Intellectual Property Office does not calculate and award PTEs automatically; the patentee must file an application for PTE and calculate the length of extension for which they are eligible. Extension is generally based on the length of the domestic clinical studies period plus regulatory review period, but any period of delay attributable to the patentee would be deducted. A March 2017 Supreme Court decision provides clear guidance on what constitutes a “period of delay attributable to the patentee.” For example, if one division of the Ministry of Food and Drug Safety (MFDS) requests a patentee to file supplementary documents concerning safety-efficacy data within a designated period for response while another division is still conducting examination, the response period cannot be considered to be time solely attributable to the patentee. Regarding the scope of extended rights, Article 95 of the Korean Patent Act stipulates that PTE covers only patented inventions related to an approved product and any use approved for the product. Accordingly, the scope of extended rights is limited to a product covered by MA, rather than the scope of the original patent, despite PTEs being granted for the entire scope of the patent claims. 2019 Supreme Court Ruling In 2019, the Korean Supreme Court made a notable ruling concerning the scope of extended rights (Case Ref. 2017Da245798). In this case, a major point in question was whether or not modified salts are within the scope of extended patent rights. The Supreme Court reversed an earlier Patent Court decision and recognized, for the first time, the enforceability of an extended right against a competitor’s product comprising a different salt. In particular, the Court pointed out that the literal wording of Article 95 is that an extended right covers a “patented invention” related to the approved product, not the “approved drug” only, and stated that the primary consideration in determining the scope of a drug patent under term extension is whether the active ingredient, the therapeutic effects, and use of a product in question are identical to those of the approved drug, and whether the modified salts are readily interchangeable by one skilled in the art. Based on such reasoning, the Court found that the two products in question have the same therapeutic effects derived from the identical active ingredient, i.e., solifenacin; and a person skilled in the art would easily replace succinate with fumarate. We are of the opinion that the Supreme Court considered the purpose of the PTE system, which is to ensure patent protection to promote research and the development of new drugs, since if the scope of protection is granted for approved products only, it would be very easy to circumvent the protection conferred by the PTE, rendering the PTE worthless. The PTE system is a matter of policy concerned with balancing conflicting interests. Therefore, further thought should be given to the balance between generic market entrants and incentives for brand-name pharmaceutical innovators.     Written by Seo-young LEE

2020-01-14
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