Non-use cancellation actions

Under the current act, non-use cancellation actions have no retroactive effect - in other words, an application that is filed before a senior conflicting mark has been successfully cancelled through a non-use cancellation action will remain blocked by the senior mark. Successful petitioners of non-use cancellation actions are instead granted an exclusive six-month period in which to file an application for a mark identical or similar to the cancelled mark.

Non-use cancellation actions will have some limited retroactive effect under the amended bill. An application that is blocked by a senior conflicting mark will be able to overcome this issue if the senior mark is successfully cancelled by a non-use cancellation action.

However, the amended act will remove the exclusive six-month period provision. Therefore, once the amendments enter into force, petitioners must to file an application for their mark as early as possible, even before introducing a non-use cancellation action, to avoid the risk of a third party filing an application for an identical or similar mark while the action is pending.

Prior use of trade names

Under the amended act, a party that uses its name, trade name or any other personal identifiers as a trademark without bad-faith intent, in accordance with customary practices, will be able to continue such use without risking trademark infringement claims from the owner of an identical or similar registered mark, provided that such use started before the application date of the identical or similar registered mark.

One of KIPO's goals in relation to this reform of the act is to grant greater protection to the owners of small businesses in Korea. Previous interpretations of the law had reduced the possibility for these owners to protect themselves against attacks by new trademark owners and forced many of them to modify their trade names as a consequence. KIPO hopes that this amendment will allow small business owners in Korea to continue prior fair use of their trade names without interference from owners of new identical or similar trademarks.

Relief measures following failure to comply with filing deadline

The amendments also include relief measures for applicants that failed to file a response to an office action within the two-month deadline. Such applicants will be granted an additional two-month period from the deadline in which to file a request to reopen the examination of their applications. However, the response to the office action must be filed in combination with the request to reopen the examination.

[Reference] Lexology (June 10 2013)