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Practice Notes

Practice Notes

KIPO publishes examination guidelines for virtual goods

Unsurprisingly given the fast-growing awareness of the metaverse and its implications for brand owners, the Korean IP office (KIPO) has seen a sharp hike in the number of trademark applications covering virtual goods, increasing from just 6 in 2020, to 17 in 2021, and 717 filed between January and May 2022. Reacting to this trend, KIPO has issued new examination guidelines for trademark applications covering virtual goods, effective from July 14, 2022, to prevent applicant’s confusion and to increase consistency of examination. Goods descriptions Virtual goods may now be designated under Class 09 in the simple form “virtual + goods name”, for example “virtual clothing”, “virtual shoes” etc.  This means that it is no longer necessary to rely on long-winded descriptions such as “computer programs containing virtual clothing (virtual goods)” or “downloadable image files (virtual clothing)” which were previously acceptable. Regardless, it is still necessary to specify the type of virtual goods, since an ambiguous description such as “virtual goods” would be unacceptable on account of it being overly broad. Relationship between virtual goods Previously, all virtual goods were considered to be similar regardless of their type. In theory, this meant that “virtual shoes” would have formally conflicted with diverse goods such as “virtual automobiles” etc. This naturally had the potential to lead to disputes between brand owners operating in wholly different fields.  Under the new guidelines, virtual goods will be sub-classified and compared based on their type, just like their physical counterparts. Thus, just as two applications for similar marks respectively covering “clothing” and “footwear” in Class 25 would not be considered conflicting under Korean examination practice, the same would be true for a pair of applications covering “virtual clothing” and “virtual footwear”. However, there would be a conflict between applications respectively covering “virtual pants” and “virtual clothing”, which are formally similar goods. Relationship between physical and virtual goods The new guidelines specify that physical and virtual goods will by default not be considered conflicting for the purposes of examination. By way of example, a new application covering “virtual clothing” in Class 09 would not be blocked by a senior mark covering “clothing” in Class 25. However, if an application covering virtual goods is filed for a mark which is similar to an established well-known/famous mark, the examination regarding physical and virtual goods would also consider whether there is a likelihood of consumer confusion between the later-filed application and the well-known/famous mark, etc. Recommendations While some may have been on the fence before, now that KIPO has clarified its position on the similarity issue regarding physical and virtual goods, it is now important for brand owners to file in Class 09 if they wish to ensure they have protection for the virtual representation of their physical goods. With Korea being a first-to-file jurisdiction, it is recommended that such filing be done as soon as possible. (As discussed above, the new application must specify all of the virtual goods of interest individually, and it would not be sufficient to simply designate “virtual goods”.) It would also be advisable to ensure that Class 09 is included in any trademark watching services set up for marks of importance or interest, especially given the rapid increase in filing activity for virtual goods.   Written by Jonathan MASTERS and Alex Hyon CHO

2022-07-20
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Practice Notes

Easier restoration of IP rights

When patent, utility model, trademark and/or design rights (collectively “IP rights”) are invalidated or extinguished following a rights holder’s inability to meet a statutory deadline, in certain circumstances it is possible to “restore” the IP right to its pre-invalidation or pre-extinguishment state and continue prosecution. Comparing with other systems around the world, Korean IP laws have traditionally applied strict standards for the restoration of IP rights. However, recent revisions have relaxed these requirements, shifting the acceptable standard from “unavoidable reasons” to “justifiable reasons”. These changes came into effect from April 20, 2022. The previous “unavoidable reasons” were applicable only in very limited situations such as natural disasters or wars, while “justifiable reasons” are applicable in emergency situations where the applicant cannot undertake the necessary procedures, for example due to hospitalization for Covid-19. The detailed requirements for the restoration of IP rights are as follows: Substantive Requirements: There must be “justifiable reasons” for failing to comply with the relevant deadline in spite of all due care demanded by the circumstances having been taken. The key requirement, therefore, is to prove that “due care” was taken. The obligation to exercise due care must be considered in light of the situation as it stood before the missed deadline expired. “All due care” means all reasonable care, i.e., that which a reasonably competent patentee, applicant, or representative would employ in the relevant circumstances. Procedural Requirements: Under current IP laws, actions to restore IP rights must be filed within two months from the date on which the justifiable reasons for non-compliance with the original deadline cease to exist, and at the latest within one year of the original deadline. In order to achieve the restoration of IP rights, a petition for restoration of IP rights must be filed within the aforementioned periods together with a statement and evidence showing the “justifiable reasons”. The petition will be examined by the KIPO division handling the case in question. While it is certainly a positive development that the Korean IP office (KIPO) is being more lenient in its approach to IP rights restoration, with more varied causes not attributable to the rights holder being accepted as the justification for a missed deadline, the specific standards for the required statement and evidence have not been clearly stipulated and so there still remains some uncertainty about the practical implications. However, we expect that these standards will become established based on precedent in the weeks and months to come.     Written by Jonathan MASTERS

2022-05-27
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Practice Notes

Designs troubled by trademarks

To achieve registration a design must satisfy several prerequisite requirements, such as novelty and creativity. Novelty signifies that the design, before application, must not have been included in publications or catalogues, publicized through sales or exhibition, or exposed in any other manner such that somebody could identify it. Further, creativeness signifies that a person with ordinary skill in the art could not easily create a given design based on pre-existing internationally or domestically known designs, well-known shapes, patterns, or colors, or any combination thereof. Interplay between designs and trademarks However, even if the aforementioned requirements are satisfied, designs which are liable to create confusion over articles connected with another person’s business cannot be registered and shall be invalidated if granted. Typical examples include designs which use another person’s well-known trademarks, service marks, collective marks, or business emblems (including 3D trademarks). Here, a question arises as to whether a likelihood of confusion requires that there be similarity between the design article and the designated goods of the trademark. Likelihood of confusion Regarding the above question, the court recently answered that similarity between the design article and the designated goods of the trademark is not required in finding a likelihood of confusion. (Patent High Court, 2020heo6255, November 18, 2021) The registered design in question is shown as below and was for a “handbag accessory”. Fig. 1 Fig. 2 Fig. 3    (original 3D file)         (front view)      (Side view) This case examines whether or not the plaintiff’s registered design possesses the possibility of confusion with the defendant’s products related to the trademarks as below, and if so, whether the plaintiff’s registered design should be invalidated. Pre-existing Trademark 1  Pre-existing Trademark 2             (Classes 6,9,14,18,20,24)                  (Classes 14,25,26) Well-known or remarkably famous trademarks are protected, regardless of whether they are registered under the Trademark Act, by restricting the registration of any identical or similar marks. An application for the registration of a similar mark filed by a person other than the owner of such a well-known/famous trademark will be rejected; and, if registration is erroneously granted, the mark will be subject to invalidation. Registration of a similar mark may also be rejected even if the goods of the trademark application are not identical or similar to those of the well-known/famous trademark due to the possibility of misleading the consumers about the origin of the goods as well as anti-competitive practices. Given the global brand recognition of Chanel, whether or not the defendant’s pre-existing trademarks met the legal standards for being ‘famous’ was not in question. Rather, the key issue was with respect to whether or not the plaintiff’s registered design was likely to cause confusion over articles connected with the defendant’s business. The court ruled that there indeed was a possibility of confusion. The following outlines the court’s reasoning: The registered design is comprised of two overlapping circular rings similar to the English letter “O”, and is closed overall, while the pre-existing trademarks consist of two “C”s overlapping in different directions, with both sides open. The registered design shows five thin “O” shaped rings that are connected to form a single ring, while the pre-existing trademark is in the shape of a thick, black English letter “C”. The design differs from the trademark in that the two disk rings are combined in a ring shape to form a three-dimensional effect, while the trademark is flat and two-dimensional. A key similarity between the registered design in question and the pre-existing trademarks involves an intersection and overlapping of two characters featuring the same thickness while both converge at the same angle. The area that intersects and combines symmetrically is the dominant aesthetic feature of the trademarks and designs as well. Despite the above-mentioned differences therebetween, they are too minor to offset the overwhelming similarity in their dominant aesthetic features. Therefore, overall, the two are similar enough to reasonably conclude that it may create confusion over articles connected with the trademark owner’s business. It is important to note that plaintiff’s argument that “the designated products on which the design is to be applied differ in purpose and function from the defendant’s products, and are therefore unlikely to cause confusion”, was rejected by the court. According to the court, it is because as long as there is a possibility of confusion between the registered design and the articles connected with another person’s business, the products of the registered design and the products of the pre-existing trademark are not required to be the same or similar for the purposes of invalidating the registered design. However, there were two important additional factors that the court considered in reaching its decision. First, the product of the plaintiff, in this case a handbag, was comprised of zippers, straps, and materials that were used in the same or similar fashion to those of the defendants’ products. Second, the plaintiff’s design was separately applied for and registered as a trademark for the same design in class 18, which pertains to leather and leather imitation products, which includes handbags. Notes Well-known trademarks are legally protected under both the Trademark Act and the Design Protection Act. According to the Trademark Act, any trademark likely to cause confusion with the goods or business of another person that is remarkably recognized by consumers is ineligible for trademark registration. Similarly, the Design Protection Act states that the application of a design likely to cause confusion with an article associated with another person’s business may be rejected if it is found to be to identical or similar to a pre-existing trademark. Here, as long as there is a possibility of confusion over articles connected with another person’s business, the products of the design and the goods of the trademark are not required to be the same or similar for the purposes of rejecting a design application or invalidating a registered design. When considering filing a design application, it is important to do a similarity search not only for prior designs but also pre-existing trademarks which are well known or famous in the market.   Written by Ben Yuu (Managing Partner)

2022-04-20
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