APAA e-Newsletter (Issue No. 40, April 2024)

Changes to Requirements for Expedited Examination of Trademark Applications

Sunmi Lee, Y.P. Lee, Mock & Partners (The Republic of Korea)

The Korean Intellectual Property Office (KIPO) offers an expedited examination process for trademark applications. This allows applicants to receive a faster decision on their filing, potentially speeding up the process of securing trademark rights in Korea. However, recent changes implemented in January 2024 have altered the requirements for requesting expedited examination, making it more challenging for some applicants to secure registration.

Prior Search Option Removed:

Previously, applicants had the option to expedite their trademark examination by submitting to the KIPO the results of a prior trademark search conducted by a search agency designated by the KIPO. This option was particularly convenient for applicants who had not yet begun using the mark in Korea.

However, the amendment to the Enforcement Decree of the Trademark Act, effective as of January 1, 2024, has removed this option. Accordingly, the KIPO no longer accepts prior searches from designated agencies as a basis for expedited examination. This change is believed to be a resolution to the backlog in processing regular examination cases caused by the surge in requests for expedited examination since the introduction of this option several years ago.

Remaining Criteria for Expedited Examination:

While the prior search option is no longer available, applicants can still request expedited examination by meeting one or more of the remaining criteria. This includes using or preparing to use the filed mark for all designated goods in Korea, or receiving a written warning from another applicant in relation to the filed mark. More details of the main criteria are as follows:

  • Demonstrated Use of the Trademark: This applies to applicants who are already actively using the trademark on all the designated goods or services listed in their application within South Korea.
  • Preparations for Use: If an applicant has not yet commenced use of the mark in South Korea but it is obvious that they have begun preparations to do so, they may still qualify for expedited examination.
  • Third-Party’s Possible Infringement: This applies to situations where an applicant has issued a cease-and-desist letter to a third party for using a similar or identical mark on similar or identical goods/services, or if a preliminary injunction has been filed against such use.
  • Warning from Another Applicant: If an applicant receives a written warning from another trademark applicant or registrant regarding a potential conflict with their mark, this can serve as a basis for requesting expedited examination.

Overall, the changes to expedited trademark examination in Korea aim to streamline the trademark application process and prioritize applications with demonstrably urgent needs. While these changes may create challenges for some applicants, by carefully considering the remaining criteria, applicants can still ensure a smooth and efficient trademark registration process in Korea.