Obtaining a trademark registration is generally the most effective way to have a trademark protected in South Korea. The Trademark Act allows the registration of marks and provides of enforcement measures of the registered marks. The Korean Intellectual Property Office ("KIPO") administers the registration system. South Korea (KR) is a member of the Madrid Protocol. All trademark applications undergo substantive examination and, if no refusal grounds are found during the examination, the applications are published for opposition before grant of registration. Registrations are generally granted on a first-to-file basis, and fast-track examination can be requested by paying additional fees. If a mark has been actively used and has become well-known, the mark can enjoy certain protection as outlined below, whether or not the mark is registered:
- In terms of opposing an application or invalidating a registration, if a mark is well-known in Korea, it may be a basis of refusing an application of a mark that could confuse or mislead the consumers as to the origin of the goods. If a mark is well-known only abroad, a third party’s bad faith application may be opposed based thereon. If a mark is “very” well-known in Korea, it may bar a broader scope of marks that could cause dilution. - In terms of the enforcement, if a mark is well-known in Korea, the right holder of the well-known mark may prevent others from causing confusion under the Unfair Competition Prevention and Trade Secret Protection Act. If a mark is “very” well-known in Korea, dilution of the mark can additionally be a cause of action.
A trademark registration can be canceled based on various grounds, and the most common ground is non-use of the mark. Anyone can file a non-use cancellation action against a registered mark on the grounds that the registered mark was not used in Korea (i) for any of the goods targeted in the cancellation action, (ii) at any time within the past 3 years prior to the date of filing the cancellation action. Therefore, a trademark right holder should make efforts to have the registered mark used in Korea and to regularly compile evidence of such use in order to avoid cancellation of the registration. Also, to prevent a failure of being timely notified of a cancellation action, it is advisable for the registrant to check the KIPO records regarding the responsible Korean attorney and the registrant’s address and ensure that they are up-to-date for each registered mark.