The Korean Intellectual Property Office has put out a useful guide to recent Korea Trademark Act amendments.  Below is a summary of amendments effective as of April 20, 2022:

Extension of Trial Request Period.  The time to request a trial against an amendment rejection or a final rejection has been extended from 30 days to three months.

Petition for Restoration of Trademarks.   The grounds to restore trademark rights that have been extinguished due to invalidity of trademark procedures and non-payment of registration have been relaxed.   Specifically, a trademark owner can now seek restoration for “justifiable reasons.”   This is defined as emergency situations where the applicant cannot undertake trademark procedures due to hospitalization or COVID-19.

Priority claims in divided applications.   For the first time, when dividing applications with a priority claim, the date of priority of the resulting applications will be automatically recognized.  This rule applies only to domestic applications.

Ex-officio reexamination.   If an examiner identifies obvious grounds to refuse an application for which registration is granted before its trademark right is established, the decision to register may be cancelled and the application reexamined.

There are additional amendments to the Trademark Act that will take effect February 4, 2023.  These include:

Partial Refusal to register.  If the refusal to register is limited to certain goods or services only, then the application will be granted as to the remaining goods or services.

Reexamination.  In limited circumstances, a reexamination will be permitted after a registration rejection.  This is where the reasons for rejection can be readily overcome.  An example would be a conforming amendment of designated goods.

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Photo of James Hastings James Hastings

James Hastings is an attorney with the U.S. Trademark Trial and Appeal Board Practice Group of Practus, LLP.  He is a certified mediator of the INTA Panel of Mediators, an international roster of select professionals with expertise in trademark dispute resolution.

James is…

James Hastings is an attorney with the U.S. Trademark Trial and Appeal Board Practice Group of Practus, LLP.  He is a certified mediator of the INTA Panel of Mediators, an international roster of select professionals with expertise in trademark dispute resolution.

James is the publisher of Trademark Opposition Lawyer, an online advisory dedicated to helping brand owners understand important issues that arise in proceedings before the U.S. Trademark Trial and Appeal Board.  His commentary has been featured on Corporate Counsel, Law.com, LegalZoom,and other digital publications.

He devotes his practice to trademark opposition and trademark cancellation proceedings before the Trademark Trial and Appeal Board of the United States Patent and Trademark Office.  Over the course of his career, he has represented the interests of numerous national and international brand owners in trademark litigation matters in both the U.S. District Courts and before the U.S. Patent and Trademark Office.

Prior to his current affiliation with Practus, LLP, James was in-house counsel to a New England-based catalog retailer, where he was responsible for developing trademark portfolio acquisition, protection, and licensing strategies.  Earlier in his career, he was a partner and associate at intellectual property law firms in New York, where he was engaged in trademark portfolio and intellectual property protection work on behalf of well-known fashion and personal care brands.

James is a member of the New York and Connecticut bars.  He has lectured at University MBA programs and legal education conferences on the issues of trademark protection and e-commerce law.

Past and Present Membership

  • International Trademark Association
  • Association Corporate Counsel
  • National E-tailing and Mail Order Organization of America