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Trademark Coexistence Agreement is to be introduced, so that small business can be relieved in using a trademark.(News Letter No. 515) |
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KH |
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2023-11-01 |
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3898 |
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1. Trademark Coexistence Agreement is to be introduced, so that small business can be relieved in using a trademark.
-An amendment bill to the Korean Trademark Act to introduce the ‘Trademark Coexistence Agreement’ has passed the National Assembly Plenary Session.
-The amended Korean Trademark Act will be implemented in April of next year and small and medium-sized businesses are expected to stably use trademarks.
-A system for an applicant is also amended to expand those eligible for refunds of trademark registration fees.
“A”, who prepared to run a restaurant in “K” area, has received from KIPO a notice stating that it is impossible to register the trademark which “A” tried to use since a similar trademark was earlier registered. As a result of checking, it is found that “B” has run a restaurant with the similar name in “N” area, which is geographically remote from “K” area. “B”, who decided that there is no risk that consumers would misunderstand or be confused between the two restaurants due to the differences in products sold and the geographical difference, allowed “A” to apply for the trademark registration. However, this was not accepted under the current law. After all, taking the loss, “A” had no choice but to discard all signs and dishes as manufactured.
In the future, it appears that the concern of a small business owner, who cannot register a trademark which (s)he tries to use due to an earlier registered similar trademark, will decrease. It is because a so-called “Trademark Coexistence Agreement” will be introduced.
According to KIPO, a partial amendment bill to the Trademark Act aimed at introducing the “Trademark Coexistence Agreement” has passed the National Assembly Plenary Session (October 6, 2023).
According to Trademark Coexistence Agreement, in the case that a holder of an earlier registered trademark right and a prior applicant agrees, a later filed identical • similar trademark can be registered and used. But, to protect consumers, when any one of the coexisting trademarks is later used for an unfair purpose to cause misunderstanding • confusion of consumers, it can be cancelled.
Under the current system, it rejects a registration of a later filed trademark which is identical • similar to an earlier registered trademark or to a trademark in an earlier filed application. According to statistics, 40% or more of a total of rejected trademarks were rejected due to this reason. Of the 40% or more cases, about 82% were trademarks filed by small and medium companies and small business owners (based on 2022).
When the registrations of the trademarks that small and medium companies and small business owners try to use are rejected, they have no choice but to be exposed to serious management instability. In this point, reflecting the market reality, voices have been raised that the scope of trademark registration should be expanded.
Upon Trademark Coexistence Agreement being introduced, since it makes it possible to register a trademark and to use it under the consent of the prior trademark holder, it seems that small and medium companies and small business owners are able to stably use their trademarks. In addition, since a prior trademark holder agrees to the use of a similar trademark in advance, an effect of preventing a trademark dispute that may occur in the future is expected.
Major foreign countries, such as USA and Singapore, have introduced and implemented this system. In Japan, the amendment bill of the Act to introduce the same system passed by the National Assembly in June and it is about to be implemented.
Trademark Coexistence Agreement is expected to be implemented in April 2024. But, in order to broaden the scope that this system is applied to, even though a trademark application is filed before this system is implemented, if the registration of the trademark application is not yet decided at the time when this system is implemented, such application is applied retroactively.
This amendment bill includes, in addition to Trademark Coexistence Agreement, about 10 system improvements, such as △ a refund of renewal registration fees which have been paid when a trademark right lapses before a new trademark term starts, △ automatically approval of priority as claimed in an original application when a converted application is filed, and △ approval of a division of an international trademark. Therefore, this amendment is considered to contribute to protecting applicants’ rights and interests and improving convenience in more diverse aspects.
2. Cooperation between Korea and China in the trademark trial field restarts after 8 years.
-The two discussed trial practices of malicious trademark registration, such as preoccupancy of a famous trademark without permission, etc.
- The two shared the necessity to strengthen cooperation in the trademark trial field to enhance the protection of a trademark right and to raise trademark awareness.
On October 18, 2023, KIPO and Chinese National Intellectual Property Administration (CNIPA) had a director-level meeting in the trademark trial field in Beijing, China, to discuss current issues and a future cooperation plan in the trademark trial field, etc.
The KIPO and CNIPA cooperative meeting in the trademark field was opened after 8 years since 2015. Since the two can share the current issues and practices, etc. in the trademark trial field, this meeting is expected to be used as a basis to more effectively protect trademarks of Korean companies entering the Chinese market.
The two formed a consensus in that the importance of cooperation to protect a trademark will increase when considering the cultural similarity and the expansion of trade volume, etc. and they shared the trial practices of malicious trademark registration, such as an unauthorized preoccupancy of a famous trademark, etc. and extensively discussed their trademark trial procedures and systems by comparison.
Further, the two shared the need to strengthen the cooperation in the trademark trial field and agreed to continue to discuss the cooperative solutions, such as a plan to establish a new annual conference system, a trademark trial statistical data exchange, etc.
3. K-brands are to be protected with advanced anti-counterfeit technology.
-KOPO published a ‘2023 guidebook on how to respond to counterfeits.
-The guidebook includes how to use the technology, the latest trends of skill to respond to counterfeits, etc.
On October 22, 2023, KIPO announced that it published the ‘2023 guidebook on how to respond to counterfeits’ as part of active administration to prevent and minimize Korean innovative companies’ damages caused by counterfeits domestically and abroad.
Various technologies to respond to counterfeits have been rapidly developed to reduce damages caused by counterfeits which have spread at home and abroad. However, a lack of the general awareness of the technologies to respond to counterfeits and a lack of the information of technology utilization methods, etc., present difficulties for Korean companies in applying them to their own products.
The technology to respond to counterfeits is sorted as the functions of (1) identifying the genuine and counterfeit, (2) tracing the distribution history of the genuine, and (3) preventing the counterfeit or falsification of the genuine. The guidebook is formed such that companies are able to respond to the distribution of counterfeits by applying to their own products the technologies to respond to counterfeits.
The first chapter of the guidebook presents the evaluation factors by technology to be considered (such as ① ease of technology introduction, ② judgement reliability, ③ ease of use, ④ usability, and ⑤ expandability) when introducing the technologies to respond to counterfeits, and how to use the overall guidebook, such as precautions when using the guidebook.
The second chapter explains, in detail, the features by technology type, pros and cons, actual application cases, and recommended industrial fields, etc., based on the trends of recent counterfeit responsible technologies.
4. Will the international design classification for serving and delivery robots be confirmed?
-KIPO participated a ‘16th session of experts of Locarno Classification’, to discuss an industrial design classification standard.
KIPO attended the ‘16th session of experts of Locarno Classification’ which was held in Geneva, Switzerland. Many membership countries including Korea, China, France, etc., attended to discuss the major current issues of the design international classification.
Locarno Classification (LOC) classifies goods for industrial designs according to certain systems by use, function, shape and it consists of 32 classes. The search range is set at the KIPO examination stage to search a prior design which is similar to a design filed in an application. LOC is the basis to determine the similarity of a design. KIPO has used LOC as a formal classification since 2014.
In this session, the proposals submitted by the membership countries and the international bureau (IB) of the World Intellectual Property Organization (WIPO) were discussed regarding the amendments and additions of the current edition, 14th edition, of LOC. Among a total of 312 agendas, KIPO suggested in advance 27 agendas.
In the process of preparing the agendas, KIPO searched the industry-oriented goods with high growth potential by considering the strengthening of global competitiveness of Korean companies. As a result, KIPO proposed to add names regarding the following items: a serving robot and a small unmanned delivery vehicle (delivery robot) which have become routine after COVID-19, a skin condition diagnostic device with 1:1 customized beauty which is K-beauty friendly, a massage bed and a massage pillow, etc. which newly appear due to the massage market growth.
This session also reviewed the names of some of Locarno notification goods which applicants were confused of, such as goods for pets (Class 30) and goods for packaging (Class 9) among the international classification-related complaints. In addition, the agenda to improve the consistency within the international classification was also proposed.
The next revised edition, 15th edition, will be decided based on the results of this session and it is scheduled to enter into force after 2025.
5. KIPO additionally recruited ‘institutions for examination of industrial property rights’.
-The period of applying for a private patent search and analysis institution was October 15~27, 2023.
-A guidebook for the system was scheduled to be distributed for patent search and analysis institutions and small and medium companies (during October, 2023).
KIPO announced to additionally recruit ‘institutions for examination of industrial property rights’ (hereinafter, referred to as the ‘institutions for examination’) from October 15 to 27, 2023, to activate the private patent search and analysis market
An institution for examination of industrial property rights is a statutory body according to Article 36 of the Korean Invention Promotion Act (Designation of an institution for examination of industrial property right, etc.) to conduct comprehensive search and analysis of an industrial property right to propose directions and strategies of research and development or commercialization. When a small or medium company receives a patent search and analysis of the institution of examination, a part of the cost incurred is tax deducted according to Item “Sa” in Appended Table 6 the Enforcement of Decree of the Act on Restriction on Special Cases Concerning Taxation (25% deduction of the cost for patent search and analysis through the institution for examination of industrial property right).
KIPO established the ‘regulations on designation and operation of an institution for examination of industrial property right’ in November 2020 and has every year additionally designated a professional organization that meets the requirements as the institution for examination.
Once a professional organization is designated as the institution for examination, it is automatically registered in the pool of partner organizations for patent search and analysis under Korea Intellectual Property Strategy Agency. A separate application process to carry out the related support projects is also greatly simplified.
An organization which wants to be designated as an institution for examination and an institution for examination which wants to be additionally designated as to a technical field need to meet certain requirements, such as professional manpower by technology field, the facilities and equipment, such as dedicated work space, etc., the security systems, etc. and they need to fill out an application form and submit it to the management system of an institution for examination of industrial property right (biz.kista.re.kr/ipams).
KIPO will go through document review and on-site inspection of the organizations submitting the applications and complete the additional designation of the institutions for examination through a review committee by the end of December this year.
KIPO also plans to make a ‘system guidebook of the institution for examination of industrial property right’ to be distributed to the relevant organizations during October, so that the patent search and analysis institutions and small and medium companies are able to use the system of the institution for examination of industrial property right. The guidebook includes the overview and basis of the institution for examination, the application procedures thereof, and how to utilize the institution for examination (tax deduction), etc.
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