- Major outline of amendments to the Korean Trademark Act and the Korean Design Act in 2019 -

Reduced requirements to renew registration of a trademark right under joint ownership and simplification of drawing submission process

 

Under the Trademark Act prior to the recent amendment, the validity period of a trademark right may be renewed for 10 years by filing an application to register a renewal of the validity period and if the trademark is jointly owned, all joint owners are required to jointly file an application to register a renewal of the validity period.  However, there have been problems noticed in practice since there have been some instances where locations of some joint owners become unknown or a party with malicious intent rejects to consent to the renewal of the validity period and then file the same trademark secretly to obtain the exclusive right to the trademark. In addition, if a trademark right is terminated, an application for the same trademark must be filed again. These situations could be costly and time-consuming.

 

According to the Korean Intellectual Property Office (KIPO), since a trademark right is a mark of credibility, unlike a patent right, a joint trademark right has been generally jointly filed by privately owned or small businesses for a joint business.  Furthermore, 43 (23%) out of 179 cases filed over the last 3 years to renew the validity period of a joint trademark right were rejected due to failure to submit the application under the name of all joint owners.

 

In reflection of the difficulties observed such as above, in the partial amendments to the Trademark Act in 2019 (announced on April 23, 2019, effective as of October 24, 2019), it has become possible to renew a joint trademark right that is jointly owned by several people for the continuous use when any of the joint owners makes an application to renew the joint trademark right, and therefore the procedural problem of obtaining unanimous consent of the owners has been eliminated, and the business operators can now exercise their joint trademark rights more securely without worrying about possible termination of the joint trademark rights.

 

<Trademark Act Before Amendment> Article 84 (Application for Term Renewal Registration of Trademark Right) ③ Where a trademark right is owned jointly, all of the joint owners shall jointly file an application for term renewal registration of a trademark right.   <Trademark Act After Amendment [Act No. 16362, April 23, 2019, Partial Amendment]> Article 84 (Application for Term Renewal Registration of Trademark Right) ③ Deleted  <April 23, 2019>

 

In regard to the amendment to the Trademark Act, Jaewoo Lee, Director of Trademark and Design Examination Bureau of KIPO, said that “since privately owned or small businesses may renew their trademark rights that they have been using for 10 years more conveniently and promptly, they may now run their businesses more stably without worrying about their trademark rights being terminated.”

 

Meanwhile, the Enforcement Decree of the Design Protection Act has been amended (effective as of October 1, 2019) so that unlike prior to the amendment where each category of design drawings (i.e. basic drawing, additional drawing and reference drawing) is required to be submitted separately in order to register a design, it has become possible to submit design drawings in an integrated and simplified form of two types, ‘basic drawing’ and ‘reference drawing,’ and a partial extension figure, a cross-sectional figure, an exploded figure, etc. need not be filed separately because ‘additional drawing’ is integrated into ‘basic drawing.’

 

In addition, a design for an article that typically comes in a pair would have been subject to an Office Action previously if only one part is included in a figure and the required description of the other part is not included in the description of the design. However, according to the amended Enforcement Decree, when an article is commonly known in the relevant field to come in a pair, even if either of the pair of the article is omitted, it may be accepted without requiring the description of the design on the omitted figure, and such description needs to be included only for articles that are not commonly known in the relevant field to come in a pair.  Thus, strict requirements in examination of drawings have been alleviated.