I. CHANGES RELATING TO THE MADRID PROTOCOL
Collection of Damages before Registration

In line with Article 4(1)(a) of the Madrid Protocol, the proposed amendment confers the applicant of a trademark application the right to collect damages upon its registration, in the event the mark is used by an unauthorized party. This provision will apply to fresh applications or supplemental applications first filed on or after July 1, 2001.

The amount of monetary damages will be equivalent to the loss of profits suffered by the trademark holder between the time of dispatching a warning letter to the infringer and the date of registration of the trademark. The warning letter may be issued even before the publication of the trademark application if it is accompanied by a copy of the Korean trademark application or the entry into the international register. The applicant must also establish by evidence that the applied trademark is in actual use.

Korean Intellectual Property Office ("KIPO") as Office of Origin

Any person who is a national or domicile of Korea or has a place of business in Korea may file an international trademark application at KIPO based on their pending trademark application or registration at KIPO.

KIPO, as the Office of Origin, shall examine whether the particulars in the international application are within the scope of the parent application or registration. Upon completion of the examination, KIPO shall transmit the same to the International Bureau.

A request for territorial extension subsequent to the international filing, payment of renewal fee for the international registration, and request for recordal of change of ownership in the international registration may be made at KIPO or directly at the International Bureau.

KIPO as Designated Office

An international application designating Korea would be considered to be a trademark application having been filed in Korea on its international filing date. When Korea is designated after the international registration (territorial extension), the local application will be deemed to have been filed on the date of such a designation. International applications designating Korea will be treated as the same as other Korean applications filed independently from the Madrid Protocol.

It should be noted that the new KTA does not allow recordation of a change of the name or address of the trademark owner, an amendment to the trademark, a division and/or conversion of the international application at the KIPO. Amendment to the description of designated goods or services are allowed only when it is made as a response to a preliminary rejection, which is notified within 18 months from the date of notification of the designation from the International Bureau to the KIPO.