Protecting a trademark in South Korea is best achieved through obtaining trademark registration. The Trademark Act in South Korea enables the registration of marks and offers enforcement measures for registered marks. The registration process is overseen by the Korean Intellectual Property Office (KIPO), and South Korea is a member of the Madrid Protocol.
All trademark applications undergo a thorough examination, and if no grounds for refusal are found, the applications are published for opposition before being granted registration. Trademark registrations are generally awarded on a first-to-file basis, and expedited examination can be requested by paying additional fees.
Even if a mark is not registered, it can still receive certain protection if it is actively used and has gained recognition. In such cases, the mark can serve as a basis for opposing similar applications that may confuse or deceive consumers regarding the origin of goods. Furthermore, if a mark is internationally well-known, a bad-faith application by a third party can be opposed based on this recognition. If a mark is considered "very" well-known in Korea, it can provide even broader protection, including the prevention of the registration of marks that could lead to dilution.
Regarding enforcement, if a mark is well-known in Korea, the rights holder can take action to prevent others from causing confusion under the Unfair Competition Prevention and Trade Secret Protection Act. Additionally, if a mark is considered "very" well-known in Korea, dilution of the mark can also be grounds for legal action.
Trademark registrations can be canceled based on various grounds, with non-use of the mark being the most common. Any individual can file a non-use cancellation action against a registered mark if it has not been used in Korea for any of the specified goods within the three years prior to filing the cancellation request.
To avoid the cancellation of a registration, trademark rights holders should make efforts to use the registered mark in Korea and regularly gather evidence of such use. It is also advisable for registrants to ensure that their contact information and the details of their Korean attorney are kept up-to-date in the KIPO records to ensure timely notification of any cancellation actions.
Filing an Application
To file a trademark application in Korea, please take note of the following guidelines:
(a) Applicant
Any individual or entity intending to use a trademark in the Republic of Korea can file a trademark application. While Korea follows a first-to-file system rather than a first-to-use system, it is essential that the applicant has a genuine intention to use the trademark within Korea.
(b) Requirements
The following are the general requirements for filing a trademark application:
i) Complete name, address, and nationality of the applicant
ii) Specimen of the trademark
iii) Designation of the international class(es) and the specific goods and services for which the trademark will be used
iv) If claiming priority, provide priority details such as the application number, date, and country, along with the priority document
v) If necessary, a signed Power of Attorney (POA) from the applicant should be included
(c) Designation of Goods/Services
When filing a trademark application, the applicant must specify the goods or services on which the trademark will be used, following the classification system outlined in the Nice Classification of Goods or Services. It is possible to file a multi-class application, which covers goods and/or services spanning multiple classes in a single application.
(d) Claim of Priority
If the applicant wishes to claim priority based on the Paris Convention or other international treaties through bilateral or multilateral agreements, it is allowed. To enjoy the priority right, the trademark application must be filed in South Korea within six months from the filing date of the priority application. The priority document should be submitted to the Korean Intellectual Property Office (KIPO) within three months from the filing date of the application.
Please keep in mind these guidelines when preparing and submitting a trademark application in Korea.
Substantive Examination
(a) Commencement of Examination
All trademark applications undergo substantive examination based on their filing dates. Unlike patent or utility model applications, no separate request for examination is necessary to initiate the substantive examination process. Typically, the examination of a new trademark application in South Korea begins within a period of seven (7) to ten (10) months from the filing date.
However, it is possible to expedite the examination by submitting an individual request, along with supporting documentation that demonstrates valid reasons as stipulated by the Korean Trademark Act. Valid reasons may include actual use or a concrete plan to use the trademark in question. For instance, providing a copy of the New Drug Application filed with the Korean Ministry of Food and Drug Safety can expedite the examination process. Alternatively, the examination can be accelerated by engaging one of the search agents designated by the Korean Intellectual Property Office (KIPO) to conduct a clearance search related to the trademark.
(b) Registration Requirements
The primary requirements for trademark registration are as follows:
i) Absolute Grounds - Distinctiveness (Article 33 of the Korean Trademark Act): The trademark must exhibit inherent distinctiveness or have acquired distinctiveness.
ii) Relative Grounds - Conflict with Earlier Marks (Articles 34 & 35 of the Korean Trademark Act): This involves assessing potential conflicts with earlier pending or registered marks in Korea, including those designated through International Registration, as well as earlier well-known unregistered marks in Korea. Additional factors such as public interest, bad faith filings, and functionality of non-traditional trademarks (such as 3-D trademarks, color/sound marks, or smell marks) are also examined.
These requirements, including relative grounds, are subject to ex-officio examination. Furthermore, a trademark filed in bad faith through a contractual or business transactional relationship (such as partnership or employment) may be refused if the Examiner becomes aware of such filing through an Information Brief or an Opposition.
Please note these procedures and requirements when considering the substantive examination of a trademark application in South Korea.
Publication and Pre-Grant Opposition
When the examiner determines that there are no valid reasons to reject a trademark application, or if the applicant has successfully addressed any provisional refusals through arguments or amendments, the examiner will issue a decision to publish the trademark application.
After the trademark application is published in the official Trademark Gazette, any individual has a period of 2 months from the publication date to file an opposition. This two-month timeframe for filing an opposition cannot be extended under any circumstances. However, it is possible to submit an Opposition Brief at a later stage, which should include comprehensive grounds and supporting evidence.
Rejection
When the examiner identifies a reason to reject a trademark application, a notice of preliminary rejection will be issued, providing the applicant with an opportunity to respond within a specified time limit set by the examiner. The applicant can request an extension of this time limit.
In their response to the preliminary rejection, the applicant may submit an argument with or without making amendments to the filed mark. If the examiner determines that the argument lacks merit and the grounds for rejection have not been overcome, a notice of final rejection for the trademark application will be issued.
Registration
The trademark application transitions into registration once the registration fees are paid within a timeframe of 2 months from the date of receiving the Notice of Decision for Registration.
If necessary, the 2-month period can be extended by an additional 30 days by submitting a request for an extension before the initial term expires. However, if the registration fees are not paid within the aforementioned period, the trademark application will be considered abandoned.
Renewal
A trademark registration remains valid for a period of 10 years starting from its registration date and can be renewed every 10 years thereafter. The renewal process involves the registrant's Korean attorney filing a renewal petition, along with a Power of Attorney, and making the necessary payment for the renewal fees. There is no requirement for the submission of a declaration or evidence regarding the use of the mark as a condition for the renewal.
Upon the approval of the renewal petition, the trademark registration is considered renewed as of the original registration's expiration date. If desired, the registrant has the option to delete certain goods covered by the registration by indicating those specific goods in the renewal petition.
DAEILPAT
Trademark
Many foreign companies entering the Korean market often overlook the importance of registering their brand or logo as a trademark. This oversight can lead to potential legal issues such as piracy or infringement, which could have been easily prevented by seeking expert advice and registering their trademark. Conversely, numerous industry leaders understand the significance of securing full protection for their brand and products or services through successful trademark registration, contributing to their overall success.
To enhance brand value and streamline the process, foreign clients ranging from individuals to well-established market leaders are seeking guidance from DAEILPAT's Trademark team. What sets our service apart is our strategic counseling and proactive approach at every step, ensuring a comprehensive trademark registration. This enables our clients to benefit from a cost-effective and tailored service that significantly reduces the lengthy and expensive registration process, without unnecessary delays or additional expenses.
Learn more about Trademarks Registration and Protection in Korea
Our Expertise
DAEILPAT’s great strength in Trademark is brought by the experts with unrivalled professionalism in our team. Our team consists of excellent talents who are a pioneer in developing unprecedented trademark ideas, a true veteran with extensive knowledge and experience as a examiner at KIPO and IP specialists with more than 10 years of experience. We are fully competent in handling any cases in both Korean and English, and our network of foreign agents allows us to offer a fuller service for both domestic and international clients.
We offer a full suite of Trademark services including strategic counseling, analysis of trademark trends, prosecution, handling of oppositions and cancellation actions, domestic and international disputes, negotiations and coexistence agreements and many more. Our thorough and in-depth analysis and reports guide our clients to effectively select and leave out specific elements of their mark to increase the chance of registration. Moreover, we showcase total transparency by offering timely updates through a transparent reporting process and keep our clients up-to-date with deadlines and proceedings without any error and omission.
If you have any questions or needs related to this, please feel free to contact us.
Read more:
- Utility Model System in Korea
- Copyright Protection in Korea for Works of Foreigners
- Protecting Trade Secrets in Korea
- Patent and Trademark Litigation in Korea
- Patent and Trademark Trial System in Korea
