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22 March 2021
The Korean Intellectual Property Office (KIPO) recently updated:
The updates took effect from January or February 2021. The most noteworthy changes are summarised below.
This update to the Similar Goods Examination Guidelines took effect on 1 January 2021.
Previously, KIPO allowed the designation of broad terms (eg, 'software' or 'application software for smart phones') in Class 09. However, given that the purpose or scope of most software is quite limited, allowing such broad coverage has resulted in a crowded register, with new applications for software marks often being blocked by existing marks which are used for software with a different purpose.
For this reason, and considering industry opinion and examination guidelines of other jurisdictions (eg, the United States), applications in Class 09 filed on or after 1 January 2021 must specify the software function.
Software descriptions will be broadly classified as:
To determine the similarity between different software types, game software will be considered different from system and application software. 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, although this will apply only when the marks are identical or very similar. For example, an application for 'software for screen golf games' under Class 09 would be deemed similar to an identical or very similar mark that covers 'operation of screen golf facilities' under Class 41, but not to a mark covering the more general 'leisure sport services' under Class 41.
Reflecting an increase in trademark applications for various kinds of trade dress, the updated Trademark Examination Guidelines contain several notable revisions relating to non-traditional trademarks, which took effect on 1 January 2021. These revisions aim to improve the quality of non-traditional trademark examination.
The following changes have been made in relation to 3D trademark registration:
Position and colour trademarks
The definition of a position trademark has been expanded from "shapes/figures which have acquired distinctiveness when used in a particular position on a product" to include colours that are used in a particular position. This may enable the registration of marks where the use of a specific colour in a specific location acts as a source identifier. Some well-known examples of such registrations in other jurisdictions include the Christian Louboutin red-soled shoe (US Trademark 3361597) and the Prada red tab sneakers (EU Trademark 001027747).
Figure 1: Christian Louboutin red-soled shoe and Prada red tab sneakers
The description of the specific shade for colour and position marks has also been expanded from Pantone colour codes to Hex, RAL, RGB, CMYK and KS A 0062 colour codes, among others.
This update to the Trademark Examination Guidelines took effect on 1 January 2021.
Previously, foreign language text (ie, text that is not Korean) in trademarks was treated as a readable word part if represented using only the English alphabet, Chinese characters or Japanese hiragana or katakana. Such parts could be compared with existing marks in terms of pronunciation. Text in other languages or scripts was treated as a graphical symbol or device for examination purposes.
The updated guidelines clarify this list as follows:
A further exception has been added to include text in any other language if the pronunciation or meaning is well known among consumers.
Updates to the Trademark Act Enforcement Rules took effect on 1 February 2021. The following updates are likely to be of most interest to foreign applicants:
For further information on this topic please contact Jonathan Masters or Sung-Yeon Cho at NAM & NAM by telephone (+82 2 753 5477) or email (firstname.lastname@example.org or email@example.com). The NAM & NAM website can be accessed at www.nampat.co.kr.
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