The aim of the revisions, which were implemented in June this year, is to reinforce the position of trademark owners, which the following examples will indicate.
The article handling the protection of well known trademarks has become clearer. Now it is clearly stated in the Trademark Act that applications for trademarks which are likely to cause confusion with, or harm the distinctiveness of, well known trademarks will be refused.
Further, the issue of unfair competition is addressed in the Trademark Act. If a brand owner is using or is planning to use their mark and a trademark applicant is aware of this, e.g. through a partnership, business transactions, employment, business contract/transaction or the like, and despite this files an application for an identical or similar mark for identical or similar goods, the application will be refused.
The Trademark Act is now also referring to the Korean Unfair Competition Prevention Act (Unfair Competition Act) in which amendments also has taken place. The Unfair Competition Act is amended and indicates that any act that infringes another person’s commercial profits through the use of the fruits of that person’s efforts without due cause against fair trading practice or efforts, for the sake of own benefit, constitutes an unfair act.
The Trademark Act now indicates that any use of a registered mark which is hit by the above article of the Unfair Competition Act is prohibited, unless the trademark holder obtains the consent of the other party involved. Any use of such registered trademark without consent of the other party will be vulnerable to cancellation.
By comparison, a similar article against unfair competition has earlier this spring also been added to the new Chinese Trademark Act.
Finally, the protection of non-distinctive due to actual use has been enhanced, since the standards for determine the establishment of a secondary meaning of non-distinctive marks through actual use are lowered. Thus, if the applicant of a mark lacking distinctiveness can establish a certain level of renown of the mark through use it will be possible for the application to pass. A long this lines the distinctiveness of marks consisting of only two letters will also be recognized.
Altogether, the above amendments to the Korean Trademark Act open up further possibilities for trademark holders to safeguard their registrations and also opens up for a possibility to register trademarks that previously would have been difficult to register.
At last, a few words regarding proposed revisions to the Japanese Trademark Act.
The aim is to enlarge the scope of protection for additional types of trademarks. Hence, it is suggested that inter alia colour marks, sound marks, hologram marks, position marks and moving marks (the above examples are particularly mentioned) and the like will be possible to register under the Japanese Trademark Act.
The above examples are not exhaustive and there is an opening that other marks, such as sent and taste marks could be considered for protection in the future via stipulations in the JPTO Examination Guidelines.
Also the Japanese revisions are in line with changes in the Chinese Trademark Act, where inter alia sound and colour marks now are recognized.
The revisions to the Japanese Trademark Act are expected to come into force during 2015.
On the whole, the above indicates that major Asian economies are embarking on the same route as the west, moving towards a bit more flexible system with a wider range of possibilities to protect different types of trademarks as well as offering more tools to protect trademark registrations.
Peter Hermansson, Attorney at Law
