Korean Intellectual Property Office (KIPO) has revised the Trademark Examination Criteria, and the revised Criteria has been implemented as from January 1, 2019.  The main points of the revised Criteria are summarized as follows.

1.    Set examination criteria on cartoon characters and the names of the characters

According to the previous examination criteria, if the famous cartoon characters or their names have been used on the goods of stationery, toys, etc., the trademark applications of these famous cartoon characters or their names that may cause misunderstand or confusion to consumers about the goods and their sources should be rejected.  However, according to the revised examination criteria, even if the famous cartoon characters or their names have not yet been commercialized, trademark applications for the marks similar to these famous cartoon characters or their names over the goods with high possibilities of commercialization in areas such as clothing, shoes, hats, stationery, toys, etc. will still be rejected.  For those applications for marks similar to the commercialized famous cartoon characters or their names, the examination criteria defines a wider scope over the goods that may cause misunderstand or confusion over the sources of goods.

2.    Specify the examination criteria over being lack of distinctiveness

For those terms with a high public welfare nature, such as “YOLO” (Note: the abbreviation of “You Only Live Once”) and “K-POP” (“Korean Pop Music”), which are used over kinds of goods, or have been used or may be used in many areas, the KIPO holds that the exclusive right of these words should not be granted to any specific individual or entity and decides that such marks should be rejected as it will be considered as lack of distinctiveness.

3.    Set examination criteria for marks of “well-known geographical name (s) + University”

A trademark of “well-known geographic name (s) + University” will be considered as lack of distinctiveness.  However, if the mark has been already used by the applicant and has already been regarded as a name of the specific university by customers, this mark could be considered as having its own distinctiveness. Besides, the KIPO has also set criteria over whether the “well-known geographic name (s) + University” marks used over goods other than education related services will be considered as gaining distinctiveness or not.

4.    Set regulations about the signature of Power of Attorney by foreign entities

The revised examination criteria states that, for the Power of Attorney of a foreign entity, it is generally presumed that the signatory has the right to sign the document.  However, for those special authorization matters (such as general power of attorney), or if there is any reasonable doubts, or when the power of attorney is challenged, certifying documents (a notarized certificate or a legalized certificate for signature authority and the confirmation) will be needed.

5.    Improvement for the confirmation of the use intention for the chain brand trademark applications

The revised examination criteria rules that: for the chain brand trademarks applied by a natural person such as the legal representative of the headquarters (legal person), reasonable doubts could be raised about the use intention of the trademark and confirm that the applicant has the intention to use.  Besides, the registration right of the chain brand trademarks needs to be obtained by the affiliated headquarters (legal person).

6.    Set regulations about geographical-indication (GI) collective trademarks

With the revision of relevant laws recently, applicants for GI collective marks have been expanded from existing producer groups with legal personality and processor groups or the associations to producer groups, processor groups, and producing processor groups including the manufacturing processor groups and the associations.  The revised criteria have reflected this modification, and have established relevant regulations on the applicant's qualifications.

7.    Add provisions about re-filing trademarks by those original trademark owners  whose marks were cancelled

The Korean Trademark Law stipulates that if a trademark is cancelled because the trademark owner violates the relevant regulation, such as that he does not use the mark after registration, the trademark owner and user cannot apply for application for trademarks that are same or similar to this mark, unless it has been three years since the mark is officially cancelled.  The revised criteria sets requirements for this situation.