III. Other Miscellaneous Changes

Invalidation of Generic or Descriptive Marks

Under the present law, there is no mechanism which can eliminate trademarks that have become generic or descriptive after its registration. In order to ensure free use of such trademarks, the new KTA provides that any person who is or will be damaged by the existence of such registrations, may file an invalidation action against them.

Geographical Names Registrable if Acquired a Secondary Meaning

The new KTA acknowledges that, although a geographical name indicating the location or origin of goods or services is regarded as being devoid of any distinctive character, it may still be registrable as a trademark if it is established that the applied trademark acquired a secondary meaning of distinctiveness as a result of extensive past use.

Recordation of Non-exclusive Trademark License Not Necessary

Under the current KTA, non-exclusive licenses granted to trademarks registered before March 1, 1998 are required to be recorded whereas such recordation is not necessary for those registered after March 1, 1998. This interim measure is abolished in the new KTA through no party is permitted to file a cancellation action based on unregistered non-exclusive license from July 1, 2001. Hence, there is no need to record a non-exclusive license from July 1, 2001.

Amount of Damages

In order to prove the existence of any damages in a civil action, the plaintiff, whom the burden of proof is generally levied on, is required to ascertain such items as the volume of sales, costs and deductions, etc. of the defendant.

In order to alleviate the burden of the trademark owner, the new KTA includes a provision whereby the amount of damages can be presumed by way of multiplying the plaintiff's expected profit per unit by the quantity of the products having been sold by the infringer. As such, the amount of damages can be readily calculated and presumed by identifying only the number of infringing units sold.

Criminal Penalties Strengthened

The new KTA stipulates more severe imposition of penalties by increasing the maximum fine for trademark infringement from 50,000,000 won to 100,000,000 won and the maximum term of imprisonment from five(5) years to seven(7) years.