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Even if a first-registered trademark exists, a path of ‘coexistence’ opens.(News Letter No. 529)

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KH

Post Date 

2024-06-03

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1. Even if a first-registered trademark exists, a path of ‘coexistence’ opens.

- A ‘Trademark Coexistence Agreement’ system has been implemented since May, 1, 2024.
- If an owner of a pre-registered (first-filed) trademark agrees, even a similar trademark may be registered.
- This system is expected to contribute to stable management by preventing losses due to the relevant dispute(s) and trademark change(s).
- Regulations to improve the convenience for an applicant, such as expansion of return of trademark registration fees, have been also implemented.

Even if a pre-registered identical or similar trademark exists, when an owner of the pre-registered trademark right agrees, from May 1, 2024 it is possible to register a trademark of an applicant who later files a trademark application.
According to KIPO, the Trademark Coexistence Agreement system has been implemented based on the amendment of the Korea Trademark Act. Accordingly, this is expected to reduce a concern of a small businessperson who cannot register a trademark that (s)he wants to use due to a pre-registered identical or similar (first-filed) trademark.


Under the Trademark Coexistence Agreement system, if an owner of a pre-registered trademark right or an applicant of a first filed trademark application agrees with a registration of an identical or similar trademark of a later-filed application, the relevant trademark can be registered.
Previously, when an identical or similar trademark had been registered or filed in an application, a registration of a trademark of a later-filed application was rejected and there was no choice but to use the trademark through a transfer thereof. However, as the Trademark Coexistence Agreement system has been implemented, the inconvenience of those applicants is expected to be reduced and the disputes related to trademark rights are expected to be prevented.
Notably, this system is expected to contribute to the stable trademark use and enterprise management of small and medium companies and small businesspeople. More than 40% of the recently rejected trademarks were related to identical or similar pre-registered trademarks and 80% applicants of them were small and medium companies and small businesspeople.

Additionally, when even any one of the trademarks coexisting for consumer protection is used for the wrong purpose causing misidentification and confusion to the consumer, safety measures are also prepared to cancel the registration of the relevant trademark.


Although renewal registration fees are paid before the duration expiration date, when the relevant trademark is extinguished or abandoned before the new duration starts, the already paid registration fees are returned under these regulations.
In addition, the amended regulations include △ allowing a divisional application of an international trademark application and a partial substitution thereof, △ automatically allowing a priority claim when filing a conversion of an application, △ deeming an incorrect ex officio correction as invalid, etc., thereby expecting to contribute to the protection of an applicant’s right and interest and the improvement of an applicant’s convenience in more diverse aspects.


2. A court of second instance after a court of first instance does not recognize AI as an inventor.

- Seoul High Court supports the decision of the first trial, Seoul Administrative Court, which denied AI as an inventor.
- The related agenda results will be announced in the meeting of IP5 commissioners to be held in Seoul in June 2024.

Relating to the administrative litigation (December 2022) raised by appealing against the KIPO’s decision to invalidate the patent application where AI was described as an inventor, KIPO announced that Seoul High Court made the decision (May 16, 2024) that AI is not recognized as an inventor for the reason that only a human is recognized as an inventor under the current Act. This is the second decision following the decision (June 20, 2023) of the first trial of Seoul Administrative Court supporting KIPO’s invalid disposition.
Stephen Thaler, US AI developer, claimed that AI (called DABUS), which was developed by him, invented two different inventions, such as a food container, and he filed patent applications in 16 countries.
It was decided in Supreme Courts (final court) in US, Europe, Australia and GB that AI is not recognized as an inventor. This case is pending in the Supreme Court in Germany. In Asia, for the first time, the Korea Seoul High Court which is a court of second instance made the decision that AI is not recognized as an inventor.
Like these, at present, the decisions from the courts of the major countries do not recognize the inventorship of AI. However, since the number of cases where AI replaces a human who has done technology development (such as ① a semiconductor chip, which it usually took several months, has been completed in just 6 hours, or ② a new drug candidate, such as COVID-19 vaccine, etc. has been quickly discovered) has increased, this is a situation that continues to require multifaceted review of the inventorship of AI.
Considering the speed of the development AI technology, IP5 has created a forum for various discussions to prepare for possible changes in the patent system in the future. As a representative case, in the meeting of IP5 commissioners held in US in June 2023, the subject suggested by KIPO, 「Sharing of AI inventor-related legal status and precedents」, was finally approved as an agenda item.

Accordingly, in the meeting of IP5 commissioners to be held in Seoul in June 2024, KIPO will present results of investigating the ‘major countries’ legal status and precedent trends relating to an AI inventor’ even by reflecting the decision of Seoul High Court. KIPO will also publish the results of an AI inventor-related survey of the people, which was for the first time domestically conducted in 2023, and it will share opinions with the IP Offices of IP5.


3. KIPO clamped down counterfeit products relating to BTS, New Jeans, etc.

- Preparing for the golden week holiday in May this year, KIPO confiscated about 9,000 counterfeit products on a tourist street in Myeong-dong, Seoul.
- Since counterfeit products did not go through safety verification procedures, concern about the safety of children and students was great.

On May 2, 2024, according to KIPO, its trademark special judicial police (hereinafter, referred to as the ‘trademark police’) arrested four people without detention on charges of violating the Trademark Act, including “K”, age:47, who sold and distributed the counterfeit products of famous characters, such as Pokémon, and fan goods of K-pop idols, such as BTS, New Jeans, etc.
Ahead of the golden holiday in May, the trademark police conducted an intensive crackdown on a tourist street in Myeong-dong, Seoul (April 23, 2024) and confiscated about 9,000 counterfeit products in 2 K-pop and character goods stores.


According to the trademark police, those including “K” were suspected of selling, in the offline stores, the fan goods including the photo cards, keychains, posters, etc. of K-pop idols leading the Korean Wave, such as BTS, New Jeans, etc.
Those were also caught on the spot selling the counterfeit products, which include the bedding, dolls, key chains, cell phone handles, name tags, etc. of the famous characters, such as Pokémon, Catch! Teenieping, Hello Kitty, etc.
It was discovered that those people sold the counterfeit products to tourists and students in the Myeong-dong area, where foreign tourists and students would mainly gather.
The trademark police considered that the number of domestic and foreign tourists to visit Myeong-dong, a representative Korean wave street, in May (when it would be a golden week in Japan and a Labor Day holiday in China) would increase and therefore the sale of counterfeit products to these people would increase. In this regard, the trademark police conducted a crackdown on the counterfeit products in the tourist street area of Myeong-dong, Seoul.



The major items of the counterfeit products of K-pop fan goods and famous characters which were confiscated by the trademark police were the character stationery and bedding which children and teenagers could easily purchase in everyday life, which were confirmed as those that did not go through the procedures of the KC certification and safety confirmation, etc.
Since children and students as major consumers can be easily exposed to harmful substances, there is great concern and anxiety about health and safety.
The trademark police requested the National Forensic Service to conduct an accurate analysis of ingredients of parts of the counterfeit products confiscated. The trademark police which also believed that there would be more counterfeit products sold by them has been in process of investigating other crimes, exact distribution scale, etc.


4. Bio industrial competitiveness is supported by IP.

- KIPO held an IP meeting with the bio industry.
- Support measures for a request for rapid and accurate patent examination from the relevant industry are reviewed.

KIPO had an on-site communication meeting with the bio industry in the Korea Biotechnology Industry Organization (KBIO).
This meeting was arranged to share patent examination supporting directions and to listen to the voice in the relevant industrial field, to support the bio healthcare industry, which is attracting attention as a key industry that will lead Korean future, to secure competitiveness. KIPO’s commissioner’s assistant manager, KBIO officials, and IP staff of 15 companies including CJ, SK Bio Science, etc. attended the meeting.
While an explosive growth from 580 billion dollars in 2021 to 790 billion dollars in 2025 (1,050 trillion Korean Won) is expected in the bio healthcare market, the number of patent applications filed in the world increased by 87% over 10 years, showing that competition to lead the future market has been intensified.
The companies participating in the meeting emphasized that securing patent rights would be important to secure competitive advantages in the global bio industry and they suggested that preferential examination is needed in the bio field as well as the semiconductor and secondary battery fields.
KIPO has been reviewing the designation of an application in the bio field as a target for preferential examination. KIPO also has a plan to positively review the examination supporting measures, such as shortening of an examination process period, improvement of examination quality, expansion of examiner recruitment of an expert in the bio field, etc.


5. KIPO listens to the voices from the field of excellent companies responding to overseas patent disputes.

- On May 17, 2024 KIPO visited THINKWARE, an excellent company in the ‘project to support response strategies to a patent dispute’.
- Since the more promising a technology is, the more patent disputes there are, a joint response with similar companies is effective.

As part of active administration, KIPO visited the THINKWARE (Seongnam-si, Gyeonggi-do), company specializing in vehicle location-based service, to hold an on-site communication meeting.

This company site visit was arranged to listen to the voices from the field of the company which successfully overcame the risk of overseas patent disputes through KIPO’s ‘project to support response strategies to a patent dispute’, to find effective government support directions.
The ‘project to support response strategies to a patent dispute’ provides a customized response strategy consulting to a company which has difficulties due to a patent dispute with a foreign company during an export process. Through this project, companies are able to solve the risk of overseas patent disputes and to expand entry into overseas markets.

Based on the solid IP performance data collection (portfolio) of about 1,400 cases at home and abroad, THINKWARE developed a vehicle black box, a navigation product, an advanced driver assistance systems (ADAS) solution, etc. and had patent disputes during the process of exporting them to US, Japan, etc. However, this company solved the risk of disputes through KIPO’s support for response strategies to the disputes and through the joint responses with domestic similar companies, thereby achieving export performance of about 90 billion Korea Won in 2023 and signing an export contract for driving recorders (black boxes) worth 27 billion Korea Won with global European car companies in 2024.
 

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