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Practice Notes

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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Practice Notes

Updates on Korean trademark law change during COVID-19 (in effect from August 2022)

As a new year has dawned in the midst of the pandemic, the National Assembly, Korea’s legislative branch, gave encouraging gifts to trademark owners by approving amendments to the Trademark Act. The amendments introduce features such as a partial rejection system, a re-examination system, and an expansion of the ways in which trademark holders can prove “use” of their registered trademarks. The revisions were promulgated in early February. The partial rejection and re-examination systems will take effect from February 4, 2023 (one year after promulgation), while the expanded scope of trademark use will take effect from August 4, 2022 (six months after promulgation). What is changing? (Partial Rejection System) Under the current system, where one or more designated goods/services under a trademark application have reasons to be refused, the entire application is doomed to the same fate. It’s an all or nothing game. The only way to save the application without an appeal process is to file an amendment to remove the problematic goods/services (i.e. giving them up entirely through deletion, or splitting off into a divisional application), inevitably at the expense of time and dollars. However, the amended Trademark Act will allow partial rejections of applications. Specifically, examiners may refuse some of the designated goods/services while granting registration of the application for the remaining specification. In cases where the applicant is content to forfeit the refused goods/services, no further action is required on their part to have the application registered for the remaining non-problematic goods/services. This is comparable to practices in other jurisdictions like the US, China, and EUIPO. Also, in line with the partial rejection system, applicants will be able to file an appeal with the IP Trial and Appeal Board (IPTAB) with respect only to the refused goods/services (as a whole, or in part), as opposed to the entire specification of designated goods/services. For further convenience to the appellant, it will be possible to abandon certain goods/services while the appeal is pending with the IPTAB. (Re-examination system) Currently, once an application is finally rejected, the only recourse is to appeal to the IPTAB, no matter what the grounds of rejection are. This is the case even if the application was rejected for non-substantial reasons that can be cured simply by amending the mark or the designated goods/services. The revised Act introduces a re-examination system, where in such straightforward cases applicants may request re-examination and simultaneously file an amendment to cure the rejection grounds. Re-examination by examiners is faster, more convenient and less costly compared to an appeal. This gives applicants another option to choose upon deciding how to respond to an examiner’s final rejection. (Expanding types of trademark use) A trademark registration confers an exclusive right to the use of the registered trademark. Traditionally, trademark “use” has been premised on possession and transfer of ownership of physical products. By legal definition, the term “use” of a trademark means, inter alia, transferring or delivering goods or packages of goods on which trademarks are displayed. There have been discussions as to whether this definition is optimal or adequate for digital products. The amended Trademark Act addresses this issue by including the provision of trademarked goods via a telecommunications line (i.e. online provision) within the core definition of “use of a trademark”, in addition to exhibiting, importing, or exporting trademarked goods for the same purpose. Common examples of this type of use may include uploading or providing subscription services for trademarked computer programs, transmitting e-books and digital files, and providing apps, e-coupons or emoticons via app stores. What to expect? These changes are expected to aid applicants, especially individuals or small and medium sized enterprises who are often unfamiliar with trademark prosecution, in securing trademark rights while also saving time, money, and effort that previously had to be spent analyzing trademark examiners’ grounds for refusal. In addition, the expansion of the types of online trademark “use” reflects the growing increase in the number of digital transactions in the e-commerce market. The new Act will be welcome news for trademark owners, for example whether they need their own online use to be recognized as legitimate “use” to defend a non-use cancellation action, or when their trademarks have been used online by others without authorization and they wish to pursue a claim of infringement.   Author Recent Posts Ben YUU Latest posts by Ben YUU (see all) Author Recent Posts Samuel PARK (Legal Intern) Latest posts by Samuel PARK (Legal Intern) (see all)

2022-02-07
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Practice Notes

Revisions to Korean Patent Act in effect from April 2022

Introduction On September 29, 2021, a bill to revise the Korean Patent Act was passed at the National Assembly. The revisions were promulgated on October 19, 2021 and will go into effect from April 20, 2022. The Korean IP office (KIPO) announced that the purposes of the revisions are to help remedy applicant mistakes and expand opportunities to acquire IP rights. The revisions meaningful to foreign applicants include: 1) extending the period for requesting trial or re-examination in response to a final rejection; 2) enabling re-examination to be requested along with an amendment to the claims after allowance; 3) introducing a “split application” so that if an appeal from a final rejection is dismissed by the IP Trial & Appeal Board, the non-rejected subject matter can be split off from the rejected application; and 4) easing of the requirements for re-establishment of patent applications and patent rights on a reasonable basis in order to expand the remedies of patent applicants and patent holders. These will be discussed in turn below. 1. Extension of response period following final rejection In response to a final rejection, an applicant may request re-examination along with an amendment (for further consideration by the KIPO examiner), or instead may directly appeal to the IP Trial & Appeal Board (IPTAB) without making an amendment. Under the current provisions of the Patent Act, following a final rejection the applicant is given thirty days to respond. Within this thirty-day period, the applicant has to determine whether the rejection is reasonable and how to amend the claims. However, this is often not long enough to carry out the required work. The revised Patent Act will extend the response period from 30 days to 3 months. A maximum extension of sixty days will still be available per the current Patent Act. 2. Re-examination after allowance Under the revised Patent Act, it will be possible to request re-examination and amend the allowed claims even after receiving a Notice of Allowance. For example, any errors in the allowed claims may be corrected. Under the current Patent Act, some procedures do exist which enable an applicant or patentee to amend the allowed claims, for example a trial for correction. However, re-examination after allowance is more advantageous compared to other existing procedures in view of time and cost. The allowed scope of amendment in re-examination is limited to narrowing the claims by canceling a claim or adding a limitation to a claim, correcting a clerical error, or clarifying an ambiguous description. 3. Split applications Under the current Patent Act, for first final rejections, the easiest way to secure the unrejected or allowable claims is to request re-examination while canceling the rejected claims. If an applicant still wishes to pursue the rejected claims, then an applicant may file a divisional application with the canceled claims. For second final rejections, however, the applicant has to proceed with an appeal. If the appeal succeeds, it is possible to retain the subject matter in a single patent, which may be advantageous in terms of administration and management. However, if the appeal fails, the application is rejected as a whole. At this stage, it is not possible to file a divisional application, and there are no procedures to secure the unrejected claims. The revised Patent Act introduces a ‘split application’. A split application is a unique application that can be filed only when an appeal against a final rejection is dismissed. The subject matter that is not rejected in the final rejection can be claimed in a split application. Split applications may be filed within thirty days of receiving the trial decision. 4. Easing of requirements for re-establishment of rights The Patent Act provides for re-establishment of rights that have been invalidated, or deemed withdrawn or abandoned, due to a failure to observe a time limit set forth by law. These provisions are applied when the time limit was unable to be observed due to a cause “not attributable” to an applicant or patentee. For example, a breakdown of communication resulting from a natural disaster may be a cause deemed not attributable to the applicant. In this case, the applicant is given an opportunity to take action to re-establish their rights. The re-establishment actions should be taken within two months after the cause of the failure has terminated. However, under the current Patent Act, the requirements of acts deemed “not attributable to an applicant or patentee” are too strict, and have rarely been applied in practice. The revised Patent Act eases the requirement to “a justifiable cause.” For example, assume that an applicant has been hospitalized for a long time due to a serious disease. Under the current law, such hospitalization may be deemed attributable to the applicant, and so it is not possible to apply for re-establishment of rights based on this cause. In the KIPO press release regarding the revised Patent Act, hospitalization was exemplified as a justifiable cause. Author Recent Posts Jeong-seok LEE Latest posts by Jeong-seok LEE (see all) Author Recent Posts Ji-woong KIM Latest posts by Ji-woong KIM (see all)

2021-12-08
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