Lee International

The Korean Trademark Act was amended to expand the types of trademark use and to establish a partial rejection system and request for continued examination procedure on February 3, 2022.

1.     Expanded protection of trademark use (effective on August 4, 2022)

According to the pre-amended Trademark Act, the "use of a trademark" was based on the possession and transfer of ownership of “physical goods,” and was legally defined as a conventional act of distribution such as “transferring or delivering goods or packages of goods bearing a trademark.”  Such definition, however, was not adequate to reflect the distribution of various downloadable "digital goods.”  Therefore, to strengthen the protection of a trademark right, the definition of “use of a trademark” has been expanded to include provision of trademarked goods via telecommunication network.  Consequently, uploading or providing subscription services for trademarked software, computer programs, e-books, or emoticons, etc. can be protected under the amended Trademark Act.

2.     Introduction of a partial rejection system (effective on February 4, 2023)

Under the pre-amended Trademark Act, even if only some of the designated goods/services of a trademark application are rejected by the Korean Intellectual Property Office (KIPO), the entire trademark application including the non-rejected goods was finally rejected.

However, the amendment to the Trademark Act allows partial rejections of a trademark application.  That is, the KIPO examiners may reject some of the goods/services designated for an application while granting registration for the remaining goods/services, even if an applicant does not take any actions.

In addition, under the partial rejection system, an applicant will be able to file an appeal with the Intellectual Property Trial and Appeal Board (IPTAB) with respect to only the rejected goods/services, as opposed to the entire specification of designated goods/services.  For further convenience to the applicant, it will be possible to partially delete certain goods/services while an appeal is pending before the IPTAB.

This amendments are expected to aid applicants in securing trademark rights while saving time and costs.

3.     Establishment of a request for continued examination (RCE) procedure (effective on February 4, 2023)

Currently, if the KIPO issues a Final Refusal, the Final Refusal can be overcome only by filing an appeal with the IPTAB even if the ground for refusal is one that can easily be resolved by simple amendment.  However, under the amended Trademark Act, if the Final Refusal can be overcome by simply amending/deleting the designated goods/services, the applicant may submit an amendment together with a RCE to the KIPO, without appealing before the IPTAB.  This procedure provides the applicant with another option for responding to a Final Refusal, besides filing an appeal.

As part of the amendments to the Trademark Act, the introduction of the partial rejection system and the RCE procedure are expected to aid applicants in obtaining a trademark right.  In addition, the expansion of trademark protection for online distribution of digital goods effectively enhances trademark protection by reflecting recent trends in the transaction environment.