1.Article 51 paragraph 3 of the Trademark Act was amended and promulgated on May 28, 2003. The fourth reason for the amendment indicated that a trademark registration obtained in violation of Article 23, Paragraph 1, Subparagraph 12 of the amended Act and in bad faith shall not be granted duration protection, because the registration itself is for the purpose of obtaining benefits from unfair competition. This refusal of granting duration protection refers to Article 6bis, Paragraph 3 of the Paris Convention on the Protection of Intellectual Property, which stated that it “is not bound by the durational limit of Paragraph 1”. Furthermore, Comment 1 to Article 6ter (3) of the Paris Convention stated that “Generally speaking, if a register or an user of a trademark knows the existence of a famous mark, but he still attempts to take advantage by registering or using a conflicting mark to confuse others, his registration or use is in ‘bad faith.’”

According to this explanation, it is said that “bad faith” stated in Article 51, Paragraph 3 of the Trademark Act includes the situation where a trademark owner simply “knows” the existence of another’s famous mark and attempts to obtain benefits from unfair competition. Therefore, if the trademark owner is in direct competition with the famous trademark owner, knowing the famous mark, but still applies for the registration of the same or similar mark to take advantage of the famous mark, the trademark owner can be said to go beyond the normal range of competition and to attempt to obtain benefits from unfair competition. In this case, the “bad faith” element is met, and the 5-year durational limitation provided in Article 51, Paragraph 1 of the Trademark Act does not apply.

2.Article 54 of the Trademark Act stipulates that “Registration of a trademark of which invalidation was affirmed shall be invalidated. However, in the case where the cause on which the invalidation was based no longer exists at the time of examination for the said invalidation, a decision to dismiss the said invalidation may be rendered upon considering the interests of the public and the concerned parties.” This provision is based on the reason that because the period of applying for invalidation is very long, as contrast to opposition, which can be filed only within three months from the date of publication of the registration. Then based on the doctrines of change of circumstances and legitimate expectation of vested interest, the competent authority of trademark, in a case of applying for invalidation, shall be allowed to consider the fact variation which happens between the acceptance of the application for invalidation and the time of determination.

Bad faith registration, Determination based on circumstances, Invalidation, the doctrine of change of circumstances, Legitimate expectation of vested interest