Going Forward, a Design Application Can Be Filed Based Only on an English Product Name!
- Revision of Design Examination Guidelines, Enforced from March 1 –
The Korean Intellectual Property Office (KIPO) announced they will implement the revised Design Examination Guidelines from March 1, which include main contents, such as, the approval of English product names that are newly coined in relation to digital and multimedia technology development, and the strengthened examination for the applications in which famous trademarks and designs are partially changed.
Until now, foreign words that are not recognized as common nouns in Korean have not been recognized as product names. However, going forward, in the case in which a word composed only in English is commonly used in a related design field (e.g., smart watch, etc.), it is decided to be recognized as a proper product name. This improvement is to match up with international standards and the status of transactions under the circumstance of the increasing number of new products due to the 4th industrial revolution.
Meanwhile, there has been a lack of clarity regarding a ground for rejection in a case of filing an application by imitating some constituents of a famous mark or design, but protection for famous marks and designs is being strengthened by the presentation of examples of specific grounds for rejection.
Also, in relation to the requirement for registration of a repeated design that requires repetition of the same design or previous pattern over 1.5 times and submission of a design explanation regarding such repeated status in the design application, even if a unit shape is only illustrated once, it can be registered in the case that the design can be clearly specified through a ‘design explanation’, so prompt design registration becomes possible since such requirements are eliminated.
The Trademark and Design Examination Chief of KIPO announced, “The Design Examination Guidelines were proceeded with the focus being on enhancement of applicants’ convenience and on strengthening design right protection”, and “Going forward, KIPO will proceed with continuous development of its system so as to provide for quick and easy securing of design rights by actively reflecting international standards and reducing applicants’ inconvenience.”
<Main Revised Contents of Design Examination Guidelines Enforced on March 1, 2020>
1. Approval of English names for reflecting international standards and transaction status
○ Easing of the requirement in relation to acceptance of an English name
: (previously) Foreign words which were not recognized as common nouns in Korean were not approved as product names.
: (revision) Even words composed only in English are acceptable when they are commonly used.
(e.g., smart watch, MP3 Player, cellular phone)
2. Strengthened examinations for strengthening protection of famous trademarks and designs in relation to application designs that are only partially changed therefrom
○ Presenting specific examples
: (previously) A ground for rejection regarding a case of filing an application by imitating some constituent parts of a famous mark or design was unclear
: (revision) Strengthening protection of famous trademarks and designs by presenting specific examples of a ground for rejection
3. Mitigation of the requirement for repeated designs to allow quick securing of design rights
○ Mitigation of the requirement for registration of designs whose patterns are continued
: (previously) Repetition over 1.5 times of the same shapes or patterns and submission of a design explanation regarding the repetition were required.
: (revision) Even though a unit shape is illustrated only once, it can be registered in the case of clearly specifying the design through a ‘design explanation’.
<An example of a case in which a unit shape is illustrated once, the repeated condition is described in the ‘design explanation’ section, and the repeated condition can be clearly confirmed>
(Product) Textile paper
Being repeated above and below and left and right with a unit shape of the filed figure