• Trademark
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  • Overview

    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.

  • Filing an Application

    (a) Applicant

    Any person who uses or intends to use a trademark in the Republic of Korea may file an application for the registration of a trademark. Although the Korean Trademark Act adopts a first-to-file system, not a first-to-use system, the applicant should have a bona fide intent to use the trademark in the Republic of Korea.

    (b) Requirements

    General requirements for filing a trademark application are as follows.

    i) Full name, address, and nationality of the applicant

    ii) Trademark specimen

    iii) International class(es) and the designated goods and services

    iv) Priority details (number, date, and country) and priority document, If priority is claimed

    v) a Power of Attorney (POA) signed by the applicant, if necessary

    (c) Designation of Goods/Services

    A person who desires to file a trademark application must designate goods/services on which the trademark is to be used in accordance with the Nice Classification of Goods or Services.

    Filing a multi-class application, which covers goods and/or services spanning multiple classes in a single application, is possible.

    (d) Claim of Priority

    The right of priority can be claimed for a trademark application under the Paris Convention or international treaties based on a bilateral or multilateral agreement. In order to enjoy the priority right, an application should be filed in South Korea within 6 months from the filing date of the priority application. The priority document should be submitted to KIPO within 3 months from the filing date of the application.

  • Substantive Examination

    (a) Initiation of Examination

    All trademark applications are examined in order of their filing date. No request for examination is needed for initiating such substantive examination, unlike patent or utility model applications. Currently, the examination of a new trademark application usually begins between seven (7) to ten (10) months from the filing date.

    Such examination, however, can be expedited by filing an individual request, together with a supporting document to demonstrate any of the valid reasons stipulated by the Korean Trademark Act: for examples, the actual use or concrete plan to use the trademark at issue (e.g., a copy of New Drug Application as filed with Korean Ministry of Food and Drug Safety). Alternatively, the examination could be expedited by entrusting one of the KIPO’s designated search agents to conduct a clearance search regarding the trademark.

    (b) Requirement for Registration

    The main requirements for a trademark to be registered are as follows.

    i) Absolute grounds – Distinctiveness (Article 33 of the Korean Trademark Act) Inherent distinctiveness or acquired distinctiveness must be satisfied.

    ii) Relative grounds – Conflict with Earlier marks (Articles 34 & 35 of the Korean Trademark Act)

    The Earlier marks mainly include earlier pending or registered marks in Korea, such as those designated Korea via International Registration and earlier well-known unregistered marks in Korea.

    Other factors, such as public interest, bad faith filings, and functionality of non-traditional trademarks (3-D trademark, color/sound or smell marks) are further examined.

    Such requirements, including the relative grounds, are subject to ex-officio examination. In addition, any trademark filed in bad faith, through a contractual or business transactional relationship (e.g., partnership or employment), may be refused only when the Examiner becomes aware of such trademark filing through an Information Brief or an Opposition.

  • Publication and Pre-Grant Opposition

    If the examiner finds no grounds for rejecting a trademark application, or the examiner considers that provisional refusals have been overcome by the applicant's response (arguments and/or amendments), the examiner will render a decision to publish the trademark application.

    Once the trademark application is published in the official Trademark Gazette, any person may file an opposition within 2 months from the publication date. This two-month period for filing an Opposition cannot be extended under any circumstances while an Opposition Brief containing detailed grounds and evidence can be filed later.

  • Rejection

    If the examiner finds a ground for rejection of a trademark application, a notice of preliminary rejection will be issued, and the applicant will be given an opportunity to submit a response to the preliminary rejection within a time limit designated by the examiner. Such time limit is extendable upon the request for an extension by the applicant.

    In responding to the preliminary rejection, the applicant may file an argument with or without an amendment to the filed mark. If the examiner determine that the argument is without merit and the ground for rejection has not been overcome, he will issue a notice of final rejection of the trademark application

  • Registration

    A trademark application matures into registration upon the payment of the registration fees within two (2) months from the date of receipt of a Notice of Decision for Registration.

    This 2-month period can be extended by 30 days if an extension request is filed before the expiration of the term. If the registration fees are not paid within the above period, the trademark application will be deemed to have been abandoned.

  • Renewal

    A trademark registration is valid for 10 years from its registration date and is renewable every 10 years. Renewal of a trademark registration is made by the registrant’s Korean attorney by filing a renewal petition along with a Power of Attorney and paying the renewal fees. No declaration or evidence concerning use of the mark is required as a condition for granting renewal.

    Once a renewal petition is granted, the trademark registration is deemed to have been renewed on the expiration date of the original registration. If the registrant wants, some of the goods covered can be deleted by simply indicating the goods to be deleted in the renewal petition.