Patent Office "Protection for Prior Users of Famous Trademarks... If No Fraudulent Intent"

#Mr. A was selling toys using the B trademark, which was not registered, when he received a demand (warning letter) from Mr. C to stop using the trademark. This was because the trademark used by Mr. A was similar to Mr. C’s trademark. In Mr. C’s case, he had gained great popularity through TV commercials and SNS promotions while selling toys under a trademark similar to the one used by Mr. A, and had achieved the number one sales position in the domestic toy sector.

However, going forward, even if a trademark first used without registration (by Mr. A) becomes famous due to another party (Mr. C), the prior user (Mr. A) will be allowed to continue using the trademark provided there is no improper intent. This is due to the establishment of protection regulations for prior users of famous trademarks.

Provided by the Korean Intellectual Property Office

The Korean Intellectual Property Office (KIPO) announced on the 28th that the amendment to the “Act on the Prevention of Unfair Competition and Protection of Trade Secrets” (hereinafter referred to as the Unfair Competition Prevention Act), which includes these provisions, will be promulgated and come into effect on September 29.

Before the amendment, even if a person like Mr. A had used a trademark first, if the same or similar trademark became famous due to someone else, there were restrictions preventing the use of that trademark.

In particular, even if the trademark was used first, economic losses had to be borne, such as discarding or replacing products or business signage bearing the trademark.

The amendment was proposed with the purpose of improving such unfairness and protecting bona fide prior users.

However, even after the amendment takes effect, prior users cannot actively exercise rights such as preventing others from using their trademark. Therefore, according to KIPO, to have one’s trademark recognized as an active right, it is still necessary to file and register the trademark before others under the current system.

The amendment also includes measures to prevent confusion or misunderstanding that may arise from the coexistence of the prior user’s trademark and the famous trademark. It contains provisions allowing the owner of the famous trademark to request the prior user to display necessary markings to prevent confusion or misunderstanding.

Additionally, the statute of limitations for claims regarding prohibition of idea theft is clarified. The amendment stipulates that claims can be exercised within three years from the date the unauthorized use of the stolen idea is recognized or within ten years from the start of the unfair competition act.

Furthermore, the amendment expands administrative investigations of unfair competition acts to include digital files in addition to documents, ledgers, and products as targets for on-site inspections, and includes provisions to compulsorily recover subsidies received by trade secret original certification institutions from the government if used for other purposes.

Kim Si-hyung, Director of the Industrial Property Protection Cooperation Bureau at KIPO, said, “Recently, there has been an increase in cases where certain products or businesses gain fame in a short period through SNS and other means. The amendment is meaningful in that it can protect those who have used trademarks first in good faith in such cases.”

This content was produced with the assistance of AI translation services.