An amendment to the Trademark Act, effective from October 24, 2019, will remove the current stipulation that all owners of a jointly-owned trademark registration must apply for renewal together. Going forward, it will be sufficient if any one of the owners applies to renew the mark.
The Korean IP Office ("KIPO") has stated that the rationale for the change is to avoid situations where renewal is not possible despite a mark being used by one owner who cannot contact the other owner(s) for various legitimate reasons, as well as more malicious circumstances such as one owner refusing to agree to renewal of the jointly-owned mark in order to secretly apply for an identical trademark application alone. According to KIPO, of 179 jointly-owned trademarks for which renewal was refused in the three-year period prior to April 2019, some 43 instances (23%) were due to the renewal application not being made by all joint owners.
Following the amendment, this will mean that the Korean agent handling the renewal of a jointly-owned trademark on behalf of an international client will require a signed Power of Attorney from only one of the joint owners in order to proceed.
It is worth mentioning that the new provision applies only to maintenance of the trademark right, and the permission of all joint owners will still be required for other actions such as the recordal of licenses/pledges, as well as any disposal (via assignment, etc.) of the trademark right.
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