Under the previous Korean Trade Mark Act, when a company filed a trade mark (mark B) that was similar to a prior trade mark registration (mark A) that had grounds for invalidation, as long as mark A was registered and valid when mark B was filed, mark B could not be registered because of its similarity to mark A. This applied even if mark A was invalidated after mark B had been filed. Therefore, in a case where mark B was rejected on the grounds of similarity to mark A, the company filing mark B had no choice but to first invalidate mark A, and then refile mark B.
Since invalidation means "not binding force or legal efficacy from the start," it was legally unreasonable that the invalidated or lapsed mark A was able to block the later filing of mark B. In addition, even if mark A had been registered in error by the Korean Intellectual Property Office (KIPO), an applicant filing mark B had to proceed with an invalidation trial against mark A and refile mark B, which wasted time and resources.
On April 30 2009, the Korean Constitutional Court ruled: "This part of the article negligibly contributes to the legislative purpose of preventing consumers from misunderstandings or being confused. Rather, this infringes on just and reasonable property rights and Berufsfreiheit of an applicant of a later trade mark application without sufficient reason, which is unconstitutional."
The above decision regarding a violation of the Constitution brought a change to KIPO's examination standard and to its strategies for trial procedures and filing.
The main difference between previous procedure and current procedure is: When an examiner issues a notice of preliminary rejection against a trade mark application for mark B on the grounds of similarity to mark A, in previous procedures, mark B could not be registered even after mark A was invalidated. This meant mark B had to be refiled. However, because of this decision by the Korean Constitutional Court, the company applying for mark B can directly invalidate and prevent mark A from being a prior trade mark registration by filing a request to suspend the examination of mark B, then filing an invalidation request against mark A. Using this method it can obtain the trade mark registration for mark B without having to refile.
 |
| Michael Jung |
MUHANN Patent & Law Firm
5th Floor, Myeonglim Bldg
51-8 Nonhyeon-Dong, Gangnam-Gu
Seoul, 135-814
Korea
Tel: +82 2 511 4210
Fax: +82 2 511 4610
ip@muhann.com
www.muhann.com