Reducing occurrences of a ground for rejection due to mistaken goods descriptions
-Automatic guidance on proper descriptions for designated goods at the time of filing an electronic trademark application-
It is hoped that trademark rights being delayed or a mark being unregisterable due to unclear descriptions of goods will significantly decrease.
In relation to this, the Korean Intellectual Property Office (KIPO, Commissioner, Park Won-joo) recently announced that an application service system which automatically guides improper goods descriptions towards proper descriptions at the time of filing an electronic trademark application has been instituted as of September 19, 2019 as a part of the “reinventing government” initiative.
At the time of filing a trademark application, an applicant should clearly describe the mark which the applicant intends to use and which goods the mark will be used for. At this time, if goods are designated more than once or a description is too vague, such could be a reason for unregistratability since the scope of the mark’s right becomes unclear.
For instance, cases of describing goods belonging to a mark which is intended to be used for shoes as ‘miscellaneous goods’ or describing ‘toy robot’ rather than ‘robot’ correspond to the above circumstances.
In such cases, the KIPO trademark examiner in charge demands that the description of goods be amended in the trademark filing application. If said description is not amended into a proper description within two months, registration of the trademark is not allowed.
* Article 38 of Trademark Act (One Application for One Trademark) ① Any person who intends to make an application for a trademark registration shall designate one or more categories of goods in accordance with the classification of the goods and apply for each trademark.
It is a problem that the rate of refusal for trademarks due to mistaken descriptions of goods is consistently over 10%.
* Annual rate of refusal due to mistaken description of goods 2014 (19.6%) → 2015 (17.5%) → 2016 (12.9%) → 2017 (11.6%) → 2018 (11.4%)
Also, in the case that there are some mistakes in goods descriptions, even though there are no other grounds for refusal, such registration will be delayed for at least two months. And, if such descriptions are not amended properly, it will be difficult to secure the right because the corresponding mark will be rejected.
The newly introduced filing system is to guide towards proper descriptions by blocking at the filing stage ‘unclear descriptions of goods’ which are commonly misdescribed by applicants.
In the case that an applicant inputs an ‘unclear description of goods’ in the formatter (e-filing SW), a message with examples of possible clear descriptions for the goods will pop-up and the corresponding unclear description will not be included in the application for filing.
For instituting this, KIPO has selected 100 unclear goods descriptions which are commonly misdescribed by applicants and applied those descriptions to the system.
※ Raking of unclear descriptions often mistakenly described by applicants in 2018: 1st - food services (467 cases), 2nd - restaurant business (459 cases), 3rd - mask packs (371 cases)
Also, for those applicants who file paper applications rather than filing the applications electronically, KIPO has made available to the public a list of ‘easily mistaken unclear descriptions’ via licensed information search services (www.kipris.or.kr) and KIPO’s website (www.kipo.go.kr).
The trade/service mark examination bureau stated that they will continue to look for additional unclear goods and apply them to the system in order to guide applicants to clear goods descriptions at the filing stage. They also said it is anticipated that cases of registrations being delayed or rejected due to misdescription of goods’ descriptions will be reduced through these services.
Meanwhile, KIPO recommends filing electronic trademark applications so that applicants will not need to be concerned with being rejected due to unclear goods descriptions and also because an approximately 10% discount (KRW6,000) is applied to such filings.