Executive Summary
The Supreme Court made a decision in favor of a law firm in an administrative litigation asking the Korean Intellectual Property Office to cancel a disposition in which an application for trademark registration filed by the law firm representing an applicant was invalidated.
In other words, as long as one attorney who has acquired a patent attorney qualification belongs to a law firm, an application for trademark registration can be filed by the corresponding law firm on behalf of an applicant.
Accordingly, even if a law firm has no experience or knowledge related to filing an application, they can file an application for trademark registration on behalf of an applicant, which causes concern of serious damage to consumers.
On the morning of February 10, 2022 the Supreme Court dismissed the appeal filed by the Korean Intellectual Property Office, and confirmed the original judgment that a law firm can represent an applicant in filing an application for trademark registration based on Articles 49(2) and 50(2) of the Attorney Act.
In July 2016, the Supreme Court made a decision after more than six years on the controversy over the filing of an application for trademark registration by a law firm, which started in an administrative litigation by a Korean applicant of a trademark. The Supreme Court held that the issue of this case, whether a law firm can represent an applicant before the Korean Intellectual Property Office, should be fundamentally determined by lawmakers, and there are no explicit provisions restricting the requirements in the current act.
In the ruling, the Supreme Court held that “the qualification of a voluntary representative as a business is not limited to patent law firms, etc., and should not be construed as such. Also, there is no reasonable reason to prohibit a law firm from performing work such as representing an applicant before the Korean Intellectual Property Office, by designating a member who is qualified as a patent attorney or a member of the law firm and an attorney as the attorney-in-charge.”
In addition, the agent’s additional arguments with respect to various errors in the application and lack of qualifications (the attorney who represented the applicant in filing the application immediately took a leave of absence after filing the application) were not heard.
However, the Patent Attorneys Association considers there to be a high probability of reconsideration from the trial stage, such as questioning the factual relationships on which the decision was based.
In a statement immediately after the decision, the Patent Attorneys Association strongly condemned the Supreme Court’s decision and pointed out the damage that could be caused to consumers by giving lawyers such a broad range of rights.
Those who are involved in science and technology field and the Association of Qualified Professionals also protested the Supreme Court’s decision and requested the abolition of the automatic patent attorney qualifications for lawyers.
The Association of Qualified Professionals jointly issued a statement on February 21, raising their voices in criticism against the Supreme Court’s successive decisions made in favor of law firms regarding the unique work of qualified professionals.
On the February 16, 2022, prior to the Supreme Court’s decision, the Korean Federation of Science and Technology Societies also requested the abolition of automatic patent attorney qualifications for lawyers, saying that the Supreme Court’s ruling undermines the value of fairness for science and technology majors preparing to become patent attorneys.
Considering the impact that the decision will have in the field, the Patent Attorneys Association will cooperate with the Korean Intellectual Property Office and will actively prepare measures such as revision to the related laws, and file a constitutional appeal.
※ Source: Patent and trademark
- Those who are involved in the scientific and technological field and professional qualification organizations oppose this decision, and are using all measures to request cooperation and get the Act revised.