| When a trademark applicant files a trademark application and also files a non-use cancellation trial against an existing registered trademark, the examination on the sameness or similarity of the applied for trademarks to the others (e.g. existing registered trademark) is conducted as of the examination date of the trademark application. The old law provided that the examination was to be conducted as of the filing date of the trademark application as opposed to its examination date.
The amended trademark act also abolished the 6-month grace period given to the complainant of the non-use cancellation trial within which the complainant could enjoy monopoly rights to file a trademark application that is the same as or similar to the trademark at issue regarding the non-use. Non-use of a registered trademark on the designated goods for more than 3 years could be suitable grounds for cancellation under Korean trademark practice.
Before the amendment, the grace period was being intentionally abused by a person concerned with the owner of the trademark to be cancelled. When attacking the owner of a trademark for non-use, the concerned person also files a non-use cancellation trial, followed by the owner intentionally abandoning the trademark. The next day, the concerned person files the same to avoid losing the trademark due to the attack.
With these amendments, it is highly recommended for a person to first file a trademark application before (or at the same time as) initiating a non-use cancellation attack against another’s registered trademark in order to secure a trademark right of the same or similar mark after the cancellation.