Notable changes affecting Korean trademark practice in early 2021
The Korean Intellectual Property Office (KIPO) has made a number of updates to the Trademark Examination Guidelines, Similar Goods Examination Guidelines, and Trademark Act Enforcement Rules effective from January/February 2021. The most noteworthy changes are summarized below:
Similar Goods Examination Guidelines: Class 09 software descriptions [From Jan 1 2021]
Until now, KIPO has allowed the designation of broad terms such as “software” and “application software for smart phones” in Class 09. However, given the reality that the purpose or scope of most software is quite limited in practice, allowing such broad coverage has resulted in a crowded register with new applications for software marks often being blocked by senior marks which are actually used for software with an entirely different purpose.
For these reasons, and considering industry opinion and examination guidelines in other jurisdictions such as the US, KIPO will now require the specific function of software to be specified in applications filed on or after January 1, 2021.
Software descriptions will now be broadly classified either as (i) system software, (ii) game software, or (iii) application software. In determining similarity between different software types, game software will be considered different to system/application software, while the similarity of system and application software will be decided on a case-by-case basis.
Software may also be deemed similar to directly related services, though this will only apply when the marks are identical or very similar. One example is that an application for “software for screen golf games” (Class 09) would be deemed similar to an identical or very similar mark covering “operation of screen golf facilities” (Class 41), but not to a mark covering the more general “leisure sport services” (Class 41).
Trademark Examination Guidelines: Non-traditional marks [From Jan 1 2021]
Reflecting an increase in trademark applications for various kinds of trade dress, the updated Trademark Examination Guidelines contain a number of notable revisions relating to non-traditional trademarks, aimed at improving examination quality:
3D trademarks
Formal recognition that solid and dashed/dotted lines can be used to indicate claimed and non-claimed parts of a 3D trademark.
Store design trademarks (“interior/exterior of a place at which goods are sold or services are provided”) are now classified as a distinct type of 3D mark, and specific guidelines pertaining to their examination are included for the first time. Incidental parts of a store design which the applicant does not wish to claim rights in (such as windows or other building materials) may be indicated with dashed/dotted lines, so long as consistency in the overall appearance is maintained. Like other 3D marks for product packaging etc., store design marks will be essentially considered as having weak distinctiveness, and so showing evidence of acquired distinctiveness will be required to achieve registration.
Non-traditional trademarks, particularly 3D trademarks, will be examined more strictly for functionality in order to avoid granting potentially unlimited trademark rights in elements which should be protected under patent. This will in practice comprise a check of (i) whether a relevant patent or utility model exists, (ii) whether there have been advertisements etc. directed to the functionality of the product, (iii) whether an alternative form exists, and (iv) the ease and economic feasibility of such alternative forms.
Position/color trademarks
The definition of a position trademark has been expanded from simply “shapes/figures which have acquired distinctiveness when used in a particular position on a product” to now include “colors” when used in a particular position. This will potentially allow for registration of marks where the use of a specific color in a specific location of a product acts as a source-identifier, as per some well-known examples in other jurisdictions such as the Christian Louboutin red-soled shoe (US Reg. No. 3361597) and Prada red tab sneakers (EU TM No. 001027747):
US Reg. No. 3361597
EU TM No. 001027747
The description of the specific shade for color trademarks (and color position marks) has also been expanded from just Pantone to now include Hex, RAL, RGB, CMYK, KS A 0062 etc.
Trademark Examination Guidelines: Foreign-language trademarks [From Jan 1 2021]
For trademarks containing text in a foreign language (i.e. not Korean), such text has until now been treated as a readable word part if represented using the ‘English’ alphabet, Chinese characters, or Japanese hiragana/katakana. Such parts could then be compared with senior marks in terms of pronunciation etc., while text in other languages/scripts was treated as a graphical symbol/device for the purposes of examination.
This list has now been clarified to cover text in English language, languages using the Latin alphabet (French, German, Spanish etc.), Chinese (traditional or simplified), Japanese (hiragana/katakana) etc., and a further exception has been added to include text in any other language if the pronunciation/meaning is well-known among consumers.
Trademark Act Enforcement Rules: Various [From Feb 1 2021]
Among the numerous minor revisions to the Enforcement Rules, the following are likely to be of most interest to foreign applicants:
The number of drawings/photographs which must be submitted when applying for a 3D mark has been amended from “2 to 5” to “1 to 5”, allowing for submission of a single drawing/photograph if it allows the mark to be clearly represented. This brings Korea into line with other jurisdictions such as the US, EU and Japan which also allow for a single drawing. (Movement and hologram trademarks will still require 2-5 drawings/photographs, as these marks include a change in form which cannot be shown in a single drawing/photograph.)
The time period for submission of files/samples for International Registrations for sound/smell marks designating Korea has been extended from 1 month to 3 months (in consideration of delays attributable to international post).
The acceptable methods of indicating a registered trademark have been expanded to include barcodes, QR codes etc. which point to an internet location where the registration number and registration status are presented. Previously acceptable methods were indication of the registration number itself, or provision of a URL where the registration number and registration status are presented.
Written by Sung-yeon CHO, Jonathan MASTERS
