For trademark owners, ‘use’ of a trademark is not a prerequisite for filing an application for the registration of a trademark in Korea. In addition, ‘proof of use’ is not required for renewal of the mark. With such relatively low hurdles, trademark owners tend to file trademarks for overly broad descriptions to obtain a broader scope of protection. Consequently, many registered trademarks are partly or wholly unused by their registrants in Korea.

Cancellations

However, if a registered mark is not used for three consecutive years, it becomes vulnerable to cancellation. A non-use cancellation trial can be filed by ‘anybody’, not just by an interested party, against some or all of the goods. Not even submission of an investigation report to prove non-use of the mark is required.


This ruling is based on the reasoning that a person having ordinary skill in the art may be able to disassemble and analyse a product covered by the invention to understand the invention.

For an invention directed to a chemical substance or medicine, the Patent Court recently held that even if a product was publicly sold before the filing date, if a person skilled in the art was unable to determine its compositional ratio or components by using an analysis method available before the filing date, without undue effort, it cannot be considered that any person could have recognised the invention embodied in the product (Patent Court Decision 2016Heo7954 rendered on January 11 2018, which was upheld by the Supreme Court).


When inventions/designs are disclosed to the public by one of the inventors/designers or applicants, a one year grace period is available in Korea for patent, utility model, and design applications.

Grace period is not based on the effective filing date

The duration of such grace period is one year before the Korean filing date (for patent applications filed before March 15 2012, governed by the old law, six months before the Korean filing date), not the effective filing date. To enjoy the grace period, therefore, either (i) a direct Korean application or (ii) an international application (followed by later national phase entry into Korea) must be filed within one year of the prior disclosure date, regardless of whether the application claims foreign priority.
That is, the grace period is not extended further, even for cases claiming priority to a foreign application.

ii) whether the infringer knew the act of infringement would cause harm to a patent owner;

iii) the significance of any such damages;

iv) the economic benefits to the infringer from the infringement;

v) how frequently and how long the infringing activity was committed;

vi) the criminal penalty for the infringing activity;

vii) the infringer’s financial status; and

viii) what efforts the infringer has made to reduce the harm to the patent owner.

The amended provision applies to infringing activities committed on or after July 9 2019.

In the past, the prevalent market sentiment was that it was more profitable to take advantage of someone else’s patented invention without permission and pay damages later than to pay the legitimate royalty, since damages for patent infringement acknowledged by the court were quite tolerable.

Article 52bis(1) will be grounds for rejection, grounds for third-party observation, and grounds for invalidation.

Limitation

A separated application is not allowed to use an option to file a request for re-examination along with an amendment when a notice of allowance or a notice of final rejection is issued (Article 67bis(1)); thus, it has fewer opportunities to file an amendment compared to a divisional application.

Further, separated applications are banned from further continuing the application since they cannot be a basis for filing a next generation of divisional or separated applications, or filing a conversion between patent and utility model applications (Article 52bis(4)).

Significance

With recent legal updates, South Korea has changed to a more flexible system that allows more procedural options to applicants.

If a foreign application is filed within the grace period and a direct Korean application or international application claiming priority to the foreign application is filed after the grace period, the Korean application cannot benefit from the grace period, and thus the prior disclosure would serve as prior art.

In what circumstances does the grace period apply?

Conditions for the grace period should be contemplated when an invention/design is disclosed before filing an application. Disclosures such as a public use, a presentation at an academic conference, or a printed publication are eligible for the grace period.

Buyers actually bought the physical item and the NFT together, appealing to the more traditional high-fashion clientele and explaining the high price achieved.

While NFTs normally do not come with any digital applications let alone physical renditions, the Dolce and Gabbana NFTs even have the option of having collaborator UNXD transfer the digitally animated fashion items that are part of the NFT to a metaverse of choice.

The collection Fewo Sneakers by collectable brand RTFKT – recently acquired by Nike – runs on a similar model and brought in more than $3 million. The sneakers can be worn in real life and in the Decentraland metaverse.

In this regard, there is an explicit provision in the Korean Trademark Act that limits the scope of registered marks (Article 90 of the KTA), which is similar to the fair use exception of other jurisdictions.

As for fair use, Korean courts ruled that (i) an indication of ‘HMC’, a trademark owned by Hyundai Motor Company for automobiles and parts thereof, on the packaging of the car air cleaner to show the applicable vehicle of the cleaner; and (ii) an indication of ‘EBS’, a trademark and well-known trade name of the Educational Broadcasting System, on teaching materials for broadcasting lectures, were deemed to be fair use (Supreme Court decisions 2001Do1355, 2010Do5994). However, when the use of a mark implies any sponsorship or endorsement by or affiliation with the trademark owner, such use would not be considered fair use.

This does not apply if there is a reasonable ground for the alleged infringer to refuse the submission of the materials.

3) The provisions of Articles 132, Paragraphs 2 and 3 shall apply mutatis mutandis to the previous paragraph (2). In such cases, “when it is necessary to prove the infringement or calculate the amount of damages” in Article 132, Paragraph 3 shall be construed as “when it is necessary to determine whether there is a reasonable ground for not being able to describe the details of the working acts.”

Article 132 (Submission of Materials)

(2)Where a person possessing the materials argues that he/she has a reasonable ground to refuse to submit them pursuant to paragraph (1), the court may order the presentation of the materials to determine whether the argument is reasonable.

Article 2 of the Unfair Competition Prevention and Trade Secret Protection Act, but it is necessary to prove the infringement or calculate the amount of damages, it shall not be considered a reasonable ground pursuant to the proviso of paragraph (1). In such cases, the court shall designate a scope in which an inspection is allowed or a person for whom an inspection is allowed within the purpose of the submission order.

4) Where a party fails to describe the details of the working acts without any reasonable grounds, the court may determine that the details of the infringing working act that the patentee or exclusive licensee asserts are true.

Generally, the burden is on the plaintiff in a patent infringement lawsuit to prove the details of the allegedly infringing product/process.

Burberry’s items can be donned and resold in the digital party game Blankos Block Party.

Givency, Gucci and Louis Vuitton, on the other hand, went the more traditional NFT route by selling NFTs based on graphic designs from a collection, a movie featuring their fashion and a video game that they have brought to market, respectively. However, the sales proved less profitable, bringing in only around $159,000 for Givency and $25,000 for the movie NFT by Gucci.

The later examples show the initial idea behind NFTs being collectibles that base their value on an exclusivity promise by the minter.

Using a re-filing strategy

It is not unusual for brand owners to follow a ‘re-filing strategy’, namely, filing the same trademark in connection with the same goods to reset the non-use ‘vulnerability clock’ in Korea. According to the law, it is not permissible to re-file an identical mark with the same designated goods under Article 38 of the KTA (one application for one trademark).
However, in practice, by slightly changing the font, typeface, letter case, or colour of the specimen of the mark, or the descriptions of the designated goods, substantially identical marks can be registered for actually identical goods.

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