Trademark Registration - When in a Hurry, File a Request for Preferential Examination
- 10 Years After Introducing Trademark Preferential Examination System, Definite Growing Trend of Filing Preferential Examination Applications –
Under the current circumstance that trademark applications have been rapidly increasing, obtaining a fast trademark application examination by requesting a preferential examination is in the limelight.
The Korean Intellectual Property Office (KIPO) announced that recently, preferential examinations of trademark applications have been significantly increasing.
In principle, trademark examinations are processed in application order. However, in the case of applying such principle for all applications without exception, there are problems in that an applicant’s right cannot be appropriately protected for cases in which prompt securing of a right is needed or there is a concern of infringement of a right.
Accordingly, the Trademark Acts of main countries such as US, JP, etc., as well as that of KR, regulate a preferential examination system such that applications satisfying certain requirements can be examined first over other applications. Korea has proceeded with this system for over 10 years, beginning in 2009.
Initially, although merely 654 cases requested for preferential examination, a trend of continuous increase* has been shown. There was a surge to 5,734 cases in 2018 and 7,595 cases in 2019, so after a 10-year time span, such cases have rapidly increased by almost 12 times.
* (’09) 654 cases → (’12) 2,895 cases → (’18) 5,734 cases → (’19) 7,595 cases
<Number of Cases, Rate of Increase and Examination Process Duration for Requests for Preferential Examination, Per Year (Based on Files)>
Recently, one reason for the rapid increase of requests for preferential examination is considered to be that trademark examinations have typically been delayed due to the increase in trademark applications since 2018, and accordingly, applicants who desire fast examination results are proactively using the preferential examination system. This system is analyzed to have been put in the limelight by applicants because whether a mark can be registered in the case of requesting preferential examination can be confirmed by an applicant after about 2 months*.
* As of January 2020, examinations are generally taking about 7 months.
Before, only in limited cases such as in a clear case that an applicant is using or is preparing to use all goods in relation to a filed mark, could a request for preferential examination be filed.
However, from July 2019, an applicant’s convenience was reconsidered by relieving requirements such that a request for preferential examination can be filed even in the case of requesting a mark search from an institute which professionally searches marks published by the KIPO commissioner. After introducing the new requirements, expedited examinations were proceeded with for about 250 cases by using this system, and it is anticipated that requests for preferential examination will further increase in 2020.
The Trademark Examination Policy Division Chief of KIPO announced, “As the preferential examination system is a system introduced for applicants who need to quickly secure rights, it will not only be a good alternative for applicants who wish to promptly confirm examination results but will also play a role of minimizing troubles through the prompt setting of rights relationships.”