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NAM & NAM always strives to consider what clients want from their intellectual property rights, and collaborates with clients to satisfy their aims. Proud to be the IP law firm with the longest history in South Korea, we are doing our utmost so that our clients can have the most effective protection for their intellectual property rights, which is facilitated through discussion and appropriate suggestions based on our unparalleled accumulated experience and know-how in Korean IP law.

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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

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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