The South Korean Trademark Law has been revised to conform to the Trademark Law Treaty and the Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks (“Madrid Protocol”). The principal features of the amended law are set out below.

Geographical names can be registered as trademarks if they are “conspicuous” and have acquired sufficient distinctiveness through use.

In accordance with the provisions of the Paris Convention, the amended law bars the registration of marks consisting of, inter alia, armorial bearings, flags, emblems, official signs and hallmarks of the member countries of the World Trade Organization and the Trademark Law Treaty.

It is now possible to correct serious defects in a trademark application within a reasonable period of time after the filing of the application. In such a case, the date on which the application is corrected is deemed to be the filing date.

A legitimate trademark owner may now request the rejection of an identical or similar mark covering the same or similar goods by a third party at the examination stage, provided the request is well-substantiated.

An applicant can issue a warning notice and seek compensation for business-related losses from a third party using an identical or similar mark for the same or similar goods as soon as the application is published (prior to the revised law the applicant had no claim for compensation before registration). Similar relief is also available to the applicant before official publication of the application, if the applicant notifies the third party of his prior rights and provides a copy of the trademark application to such third party.

It is possible for the applicant to delete some of the goods/services covered at the time of payment of the registration fee and thereby reduce his costs; this was not permissible under the previous law.

The revised law contains provisions for belated payment of registration fees, renewal fees and fees for additional goods in the application if the payment was not made by the due date as a result of circumstances beyond the applicant’s control.

The amended law simplifies the procedure for renewal of a trademark registration and contains provisions for reclassification of goods/services from the old Korean Classification System to the International Classification System.

A third party may seek to cancel a trademark registration if the mark has lost its distinctiveness following registration; this was not possible under the old law.

Increased fines and terms of imprisonment to deter infringement have been provided for in the revised law.

The revised law contains provisions for filing applications for International registrations under the Madrid Protocol based on a trademark registration or pending application in Korea.