The first comprehensive amendment to the South Korean Trademark Act will take effect on September 1, 2016. Key changes include the following:
- Legal standing will no longer be required to file non-use cancellation actions.
- Relative-grounds rejections may be based only on third-party marks that are active at the time the applied-for mark is examined, instead of at the filing date, thus avoiding rejections based on marks removed from the register due to non-renewal after the filing date.
- Applicants need no longer wait one year before registering a mark that is similar or identical to one expunged from the register.
- The agent or representative of a party that owns a registered mark in a treaty member country may not register a similar or identical mark in Korea at any time (presently, there is a bar of one year from termination of the relationship). Further, the trademark owner may seek to invalidate any such registrations at any time (presently, there is a five-year statute of limitations).
- “Electronic use” of trademarks will be recognized as trademark use.
- Administrative scope confirmation actions may be filed for a limited number of goods (presently, they must be filed for all classes in a registration, with attendant class-by-class costs).