Expansion of Preferential Trademark Examination Objects on July 9, 2019 and Revision of Related Examination Guidelines in 2020
Ⅰ. Outline of the preferential examination system for trademarks
The preferential examination system for trademarks is to examine eligible trademark registration applications preferentially over other applications. Although it is a principle to examine trademark applications according to the order in which the applications are filed, sometimes public interest or an applicant’s right cannot be appropriately protected by applying such principle to every application without any exception. Accordingly, the Trademark Act, etc. regulates preferential examinations so that some applications can be examined preferentially over other applications regardless of order filed when those applications are eligible, such as where applicants are obviously already using such marks with all designated goods or are prepared to use them, etc. (refer to section III below) Such preferential examination system exists not only in the Korea, but also in the USA and Japan, etc.
The internal preferential examination processing period is regulated as follows (source: materials from a presentation on the Trademark and Design Examination Processing Plan for 2020):
A. Whether a preferential examination should be made will be determined within 10 days from the later between the date of classifying goods or devices and the date of receipt of a request for preferential examination.
B. Preferential examination will be started within 45 days from sending a written decision for preferential examination.
Ⅱ. Addition of preferential examination targets and revision of related examination guidelines
According to a revision to trademark act enforcement regulations dated June 11, 2019 (enforced on July 9, 2019), trademark application targets which can request for preferential examination were added as below. Also, the 2020 Examination Guidelines reflect the above revised items of the enforcement decree and specify documentary evidence methodology by requirement.
A. In the case that an applicant of a trademark registration received an appeal from another trademark right holder in relation to the corresponding application (new addition as Article 12 (2)(ii))
※Method of documentary evidence (2020 Examination Guideline 6 (2) 2.3.1): Materials such as a copy of a warning letter, a copy of certification of contents, records of verbal warnings, submission of information and SNS messages, etc. which can prove the fact that an applicant received an appeal from a holder of a trademark right or a trademark registration number by prior application constitutes grounds for establishing the fact of receiving an appeal from a trademark right holder.
B. In the case that a person who plans to file a request for preferential examination requests a search for prior registered trademarks from a specialized institution notified by the Commissioner of the Patent Office and also requests for the corresponding specialized institution to notify the result to said commissioner (new addition as Article 12 (8))
※Method of documentary evidence (2020 Examination Guideline 6 (2) 1.2.9): One should describe the fact that he or she requested a search for a prior trademark from a specialized institution (search institution and request date) on the application form for a request for preferential examination.
Ⅲ. General requirements for requesting preferential examination
A. Applicants who may request preferential examination
An applicant who filed a trademark application or an interested person
(exception: a person who filed an international application by designating South Korea as a designated state or a person who filed an application for registration of additional designated goods without filing a request for preferential examination of a parent application)
B. Period for Requesting preferential examination
It is possible to file a request for preferential examination simultaneously or after filing an application for which examination has not yet been initiated (However, in the case that an examination is close at hand [within 2 months], such request could be rejected since there would be no actual advantage in requesting preferential examination)
C. Request for preferential examination fees
Request for preferential examination fees are KRW160,000 per 1 class. (In the case of a preferential examination made with a prior trademark search by a specialized institution, additional search fees should be paid to the specialized institution)
D. Preferential examination targets
In the case that an applicant for trademark registration is clearly using a trademark registration with all its designated goods or planning to use it
In the case that an applicant for trademark registration received a written warning in relation to the corresponding application from another applicant under Article 58 (1) of Trademark Act
In the case that a trademark registration holder received an appeal from another holder regarding the corresponding trademark application
In the case that an applicant for trademark registration sent a written warning in relation to the corresponding application under Article 58 (1) of Trademark Act
In the case that an application for trademark registration which is the basis for an international application per the Madrid Protocol under Article 167 (hereinafter “Madrid Protocol”) is filed and the international registration date or date of subsequent designation according to the Madrid Protocol is registered in the international register
In the case of a collective mark which is filed by a corporation established by a person from a small or medium-sized business as a joint founder under Article 9 (2)(1-2) of 「Government Procurement Act」
In the case that an application for trademark registration is filed which is the basis of a priority claim under the Paris Convention and the filing procedure for this application with priority claim is pending at a foreign patent institution
In the case that a trademark right holder of a expired trademark registration filed an application for trademark registration and the corresponding mark and designated goods are entirely the same as the expired trademark registration
In the case that a person who tries to file a request for preferential examination requested a search of prior marks in relation to a registered trademark application from a specialized institution which is designated and notified by the Commissioner of the Patent Office and also requested the corresponding specialized institution to notify said commissioner of the result