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Trademarks, and service (Trademark hereinafter)
marks may be protected in the Republic of Korea
under the Trademark Act; and for such
protection, marks should be registered with the
Korean Intellectual Property Office ("KIPO").
The use of a trademark is not a prerequisite for
filing an application for the registration of a
trademark. Unregistered marks are not protected
under the Trademark Act, although the owner of a
well-known or famous mark is given some
protection under the Trademark Act by way of
preventing others from obtaining a trademark
registration for an identical or similar mark.
There is no course of action against
infringement of a well-known or famous
unregistered trademark under the Trademark Act,
but an action may be brought under the Unfair
Competition Prevention Act.
The Korean Trademark Law is characterized by : |
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First-to-File Rule ;
Substantial Examination
Pre-grant Opposition |
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Filing an Application |
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弘) Applicant |
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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 registration system, not a use system,
the applicant of a trademark application should
have a bona fide intent to use his trademark in
the Republic of Korea.
Nonetheless, trademarks
which will not actually be used are also
registered. Such trademarks, however, will be
subject to cancellation if they remain unused
for three or more consecutive years after their
registration. |
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弗) Document Required |
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For a trademark application, the following
documents should be submitted to KIPO: |
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an application stating the following: the
name and address of the applicant (including the
name of an executive officer, if the applicant
is a juristic person); the trademark; the
designated goods and class thereof; the date of
submission; and the country and filing date of
the priority application, if the right of
priority is claimed; |
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10 specimens of the trademark (7cm x 7cm or
smaller in size); |
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if the right of priority is claimed, the
priority document; and |
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a power of attorney, if necessary. |
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Only document (a) must be submitted at the time
of filing the trademark application. The name of
an executive officer of the applicant may be
added later on the applicant's own initiative or
in response to a notice of amendment issued from
KIPO.
If the applicant fails to submit specimens of
the trademark or power of attorney at the time
of filing the trademark application, KIPO will
issue a notice of amendment requesting the
applicant to submit them, designating a time
limit therefor. The priority document must be
submitted within 3 months from the filing date
in the Republic of Korea of the trademark
application. This time limit cannot be extended. |
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必) Designation of Goods/Services: Nice Classification |
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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 for the Purpose of Registration of
Marks. The Republic of Korea adopted the Nice
Classification as of March 1, 1998.
A trademark application may be filed for the
registration of trademark for goods or services
which fall under several classes in accordance
with the Nice Classification. In this case, the
applicant has to pay additional fees for each
classification. |
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戊) Claim of Priority |
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The right of priority can be claimed in a
trademark application for a applicant whose
country of origin is a party to the Paris
Convention or under a bilateral agreement
between two relevant governments or on a
reciprocal basis. In order to enjoy the priority
right, an application should be filed in the
Republic of 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 his/her
application. |
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Formality Examination |
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According to Article 2(1) of the Enforcement
Regulation of the Trademark Act, the application
will be returned to the submitter without any
application number being assigned thereto and
will be treated as if it had never been
submitted in any of the following circumstances: |
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where the kind of the application is not
clear; |
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where the name or address of a person (or
juristic person) who takes the procedure (i.e.
the applicant) is not described; |
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where the application is not written in
Korean; |
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where a specimen of the trademark is not
attached to the application paper; |
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where the designated goods/services are not
described in the application paper; or |
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where the application is submitted, by a
person who has no address or place of business
in the Republic of Korea, without coming through
a patent agent in the Republic of Korea. |
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Once the application has satisfied such
requirements, KIPO assigns an application number
and examines as to whether or not other
formality requirements under the Trademark Act
have been met. If anything is found missing or
wrong, the Commissioner of KIPO will issue a
notice of amendment requesting the applicant to
supplement the missing data or amend it, and
within specified a time limit. If the applicant
does not comply with such request, the trademark
application will be nullified. |
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Substantial Examination |
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弘) Initiation of Examination |
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Unlike patent or utility model
applications, trademark applications are
automatically examined in order of their filing
date. No request for examination is needed for
the initiation of substantial examination.
Furthermore, the Trademark Act does not provide
for the expedited examination system which is
available for patent, utility model and design
applications.
The examination of a trademark application
generally takes about 1 year from its filing
date. |
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弗) Requirement for Registration |
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For a trademark to be registered under the
Trademark Act, it should meet the following
requirements: |
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It should fall under the definition of a
trademark prescribed in the Trademark Act: |
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It should be distinctive so as to serve as
an indication of goods or services or, if it is
not inherently distinctive, it should have
acquired a secondary meaning; |
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It should not fall into any of the
categories of unregistrable trademark prescribed
in the Trademark Act. |
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In addition to the reason for rejection, an
opposition against the application can be filed
by the owner of a trademark registered in the
territory of a member country of a treaty to
which the Republic of Korea has acceded, if both
the trademark and the designated goods of the
application are identical with, or similar to,
those of the foreign trademark registration and
if the application is filed by a person who is,
or used to be, an agent or a representative of
the owner of the registered trademark within 1
year prior to the filing date of the application
concerned without obtaining the authorization or
consent from the owner of the registered
trademark. |
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Publication and Pre-Grant Opposition |
If the examiner finds no ground for rejection of
a trademark application, or he considers that
the rejection has been overcome by the
applicant's response (argument and/or
amendment), he shall render a decision to
publish the trademark application.
Once a trademark application is published in the
official gazette, called the "Trademark
Publication Gazette," any person may file an
opposition within 30 days from the publication
date. The thirty-day period cannot be extended.
A notice of opposition containing a brief
statement on the grounds for opposition must be
submitted within the thirty-day period. Then,
the opponent may amend, add or supplement the
grounds for opposition within 30 days after the
expiration of the thirty-day period. |
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Rejection, Registration, Appeal and Trial |
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Rejection, Registration, Appeal and Trial
procedure is same with those of patent. |
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Renewal |
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The duration of the protection of a trademark
right is 10 years from the date of registration
of the trademark, which may be renewed every 10
years. For the renewal of a trademark
registration, an application for the renewal
should be filed with KIPO. Once a renewal
application has been duly filed, the trademark
registration is deemed to have been renewed on
the expiration date of the original
registration. |
