On 30 December 2016, the Ministry of Law and Human Rights passed Regulation No. 67 of 2016 on Trademark Registration (Regulation 67). Regulation 67, which became effective on 30 January 2017, provides more detailed provisions on trademark registration procedures, criteria to determine similarity of goods/services, as well as criteria on well-known trademarks.
Regulation 67 does not clearly revoke Government Regulation No. 23 of 1993 on Procedure of Application for Registration of Trademarks (Regulation 23). Therefore, Regulation 23 is still valid to the extent that the provisions do not contradict Regulation 67, and the Ministry of Law and Human Rights has not issued a new regulation to replace Regulation 23.
Below are some of the noteworthy provisions of Regulation 67:
I. Trademark Depiction to be Filed for Three-Dimensional Trademark, Sound Trademark and Hologram Trademark
- For three-dimensional trademarks, trademark depiction should be in the form of characteristics of the trademark that provide a visual description and a description of the protection claim.
- If the trademark is a sound trademark, the trademark depiction is in the form of notation and a sound recording. For sound trademarks which cannot be presented in notation form, the trademark depiction should be in the form of a sonogram.
- For a hologram trademark, the trademark depiction is a visual representation of the trademark in several views.
II. Specification of goods or services
Regulation 67 provides the following:
- If there are any goods and/or services that do not belong in the applied class(es), the Trademark Office will delete the specification of those goods and/or services.
- If the applicant has put the classification of goods and/or services in error, the Trademark Office will correct the classification of goods and/or services in accordance with the prevailing law. The Trademark Office will inform the applicant about the deletion and correction within 30 days after the filing date.
- The applicant may re-file an application for goods and/or services that are deleted from the specification of goods and/or services applied for.
III. Rejection of Trademark Applications
Regulation 67 provides that a trademark application will be rejected if it has similarity in principle or as a whole to any of the following:
- A prior registered trademark/pending trademark applications in the name of other parties for the same kinds of goods/services
- A well-known trademark in the name of other parties for similar kinds of goods/services
- A well-known trademark in the name of other parties for different kinds of goods/services (with certain requirements)
- A registered geographical indication
Further, Regulation 67 also stipulates more specific provisions on assessment of similarity in principle, criteria to determine similarity of goods and/or services, and criteria on well-known trademarks.
Assessment of similarity in principle
Similarity in principle is assessed by observing the resemblance of the dominant element of the two trademarks that may create the impression that there is similarity between these trademarks, whether it is because of the form of the dominant element, the position of the dominant element, the way the dominant element is written, or a combination of those, or of phonetic similarity.
Criteria to determine similarity of goods and/or services
Regulation 67 provides the following criteria to determine whether goods, or goods and services, are similar:
(i) Nature of goods and/or services
(ii) Purpose and method of use of goods
(iii) Complementarity of goods and/or services
(iv) Competition of goods and/or services
(v) Channel distribution of goods and/or services
(vi) Relevant consumers
(vii) Source of goods and/or services
Criteria of well-known trademarks
Regulation 67 provides that the following should be considered in establishing whether a trademark is well known:
(i) Public knowledge or acknowledgement regarding the trademark in related business
(ii) Sales volume and profit gained by the owner from the use of the trademark
(iii) Market share controlled by the trademark on goods/services distribution in the public
(iv) Coverage of trademark use
(v) Duration of trademark use
(vi) Intensity and promotion, including value of investment in promotion
(vii) Registration and application for registration of the trademark in other countries
(viii) Enforcement of the trademark and acknowledgement of the trademark as a well-known trademark by competent authorities
(ix) The value of the trademark gained from the reputation and the quality assurance of the products bearing the trademark
A trademark application will be rejected on the basis of its similarities with a prior well-known trademark for different kinds of goods if the trademark owner files an opposition to the trademark application and the well-known trademark has been registered.
IV. Requirements of Trademark Renewal
Regulation 67 provides that an application for trademark renewal, whether electronically or non-electronically filed, must be accompanied by complete supporting documents, namely, a power of attorney and statement of use, together with payment of fees. The Trademark Office will not accept renewals without complete supporting documents.
V. Requirements and Procedures for Recordation of Change of Name or Address
Regulation 67 stipulates that a request for recordation of a change of name or address can be filed for pending trademark applications. A recordation of a change of name or address will be recorded within two months after the filing date of the request for recordation.
VI. Requirements and Procedure of Recordation of Assignment of Trademark Rights
Regulation 67 provides that a request for recordation of assignment of trademark rights can be filed for pending trademark applications. A request for recordation of an assignment of trademark rights will be recorded within six months after the filing date of the request for recordation.
Regulation 67 also provides that assignment of rights to a registered mark by a trademark owner who has more than one registered mark which have similarities in principle or in their entirety for similar goods and/or services can only be done if all those registered marks are assigned to the same party.
VII. Transitional Provisions
Trademark applications, renewals, requests for recordation of assignment of trademark rights, requests for recordation of change of name and address, requests for registration of collective trademarks and requests for official excerpts that have been filed and processed but not yet completed before the effective date of the new regulation will be processed based on the previous regulations.