The Korean IP Office (KIPO) has amended the examination guidelines for trademark and design with effect from January 1, 2020 and March 1, 2020 respectively. The most noteworthy changes are summarized below:

TRADEMARK (from January 2020)

1. Amended guidelines for acquired distinctiveness

The content previously detailed in an earlier post relating to acquired distinctiveness (see here) has now been incorporated into the examination guidelines. The major considerations are:

(1) Period of trademark use
The fact that a trademark has been used non-competitively and continuously for more than five years will be considered an important ground for recognition of acquired distinctiveness, with the specific product and market conditions also considered.

(2) Consumer awareness surveys
KIPO has specified criteria to be used when evaluating the credibility of consumer awareness surveys. Surveys must be conducted by a reputable organization with the necessary personnel and material requirements in place, and the location, gender, age etc. of actual or potential consumers of the same kind of product must be represented. When the number of survey respondents is over 500 and more than 50% of respondents consider the mark in question to belong to a specific entity, the survey results may be viewed as reliable.

(3) Evaluation process
An applicant’s claim of acquired distinctiveness will be evaluated by a three-examiner team including a team leader. If this initial evaluation is positive, a special committee for judging acquired distinctiveness will make a final assessment before the decision is rendered.

2. New guidelines for collective marks with geographical indication related to processed goods

Going forward, when examining applications for registration of collective marks with a geographical indication which relate to processed goods, the history and fame of the goods attributable to the geographic environment will be considered when evaluating the correlations between particular qualities of the goods and the geographic environment.

This reflects the reality that the characteristics of processed food are often more closely associated with human factors such as the historical nature of the goods and traditional methods of production, rather than the natural conditions of the climate and soil, etc.

3. New guidelines for applications related to medicines

As interest in medication safety management increases, new guidelines have been added concerning applications for medicine name trademarks:

• When an application is filed for a mark identical to a third party’s pharmaceutical name already registered with the Ministry of Food and Drug Safety (MFDS) for manufacture/sale/importation, a refusal will be issued based on suspected lack of intention to use the mark.
• When an application is filed for (i) a mark identical or similar to an existing famous pharmaceutical name of the same applicant which covers different types of pharmaceutical products, or (ii) a mark identical or similar to a third party’s pharmaceutical name, a refusal will be issued based on the potential to mislead consumers with respect to the quality of the goods.

4. Expansion of applications eligible for accelerated examination

An update to the Enforcement Decree of the Trademark Act in July 2019 expanded an already-existing provision based on third-party warnings, and added a new provision based on submission of prior mark search results from an authorized agency (a similar provision already existed for patent and design prior art searches). This has now been reflected in the examination guidelines:

• If a third party trademark owner objects to a trademark application, the following may be considered when deciding whether the application is eligible for preferential examination: (i) evidence of objection (copy of received warning letter, materials showing that the applicant has received a verbal warning or warning via SNS, or information brief filed by the third party); and (ii) the prior-filed application number on which the third party trademark owner’s objected is based.
• If a specialized agency (designated by KIPO) has been requested to perform a search for prior marks, the applicant can apply for preferential examination indicating the relevant facts on the application for preferential examination.

For reference, when applying for accelerated examination of a trademark application, the applicant may expect confirmation of whether the request has been accepted within approximately 10 days (may take longer in some cases), with actual examination to start within 45 days of such confirmation. This contrasts with the 6+ months average time until first official action for regular-examination track applications (see here for more information on examination times). International (Madrid) applications are not eligible for accelerated examination.

DESIGN (from March 2020)

1. Relaxed guidelines for English article names

The guidelines relating to article names described in English will be relaxed for new applications, and even names entirely represented in English will be accepted if they are the ordinary name for the article or a name in common use. For example, “smart watch”, “MP3 player”, “cellular phone” etc. This contrasts with the previous requirement that article names be provided in Korean-language, with a foreign-language description following in brackets.

2. Examples of confusion-causing designs

The updated guidelines include the following new examples of design applications that would be refused due to causing confusion with respect to another party’s business (specifically, similarity to well-known trademarks).

Example 1		Example 2
Filed Design	Famous 3D Trademark	Filed Design	Famous Trademark

3. Relaxed requirements for repeating design drawings

For 3D products with a continuous form, or flat products with a repeating or continuous pattern, it was previously necessary for the repeating unit to be indicated at least 1.5 times in the drawings. Under the relaxed requirements, the repeating unit need only be indicated once so long as an explanation of the nature of repetition is provided separately in the application.

Example: a textile design with vertically continuous/repeating pattern

Before Amendment (Acceptable)	After Amendment (Acceptable)
		(Explanation of vertical repetition should be provided separately)