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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 :
■ First-to-File Rule ;
■ Substantial Examination
■ Pre-grant Opposition
FILING AN APPLICATION
1. 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 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.
2. Document Required
For a trademark application,
the following documents should be submitted to KIPO:
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;
■ 10 specimens of the trademark (7cm x 7cm or smaller in size);
■ if the right of priority is claimed, the priority document;
and
■ a power of attorney, if necessary.
3. Designation of Goods/Services:
Nice Classification
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 Classifica-tion. In this case, the applicant
has to pay additional fees for each classification.
4. Claim of Priority
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.
5. Formality Examination
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:
SUBSTANTIAL EXAMINATION
1. Initiation of Examination
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.
2. Requirement for Registration
For a trademark to be
registered under the Trademark Act, it should meet the
following requirements:
■ It should fall under the definition of a trademark prescribed
in the Trademark Act:
■ 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;
■ It should not fall into any of the categories of unregistrable
trademark prescribed in the Trademark Act.
3. 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.
4. Rejection, Registration,
Appeal and Trial
Rejection, Registration,
Appeal and Trial procedure is same with those of patent.
5. Renewal
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.
6. Protection of Foreign
well-known Trademarks in Korea
Regardless of whether
or not they are registered under the Trademark Act,
well-known or famous marks are protected by way of barring
the registration of a mark which is identical with,
or similar to, such marks. An application for the registration
of such mark filed by a person other than the owner
of the famous mark will be rejected; and, if the registration
is erroneously granted, it will be subject to invalidation.
Even if goods and/or
service concerning a trademark application are not identical
with or similar to those of a well-known trademark,
the application shall be refused due to the possibility
of misleading the consumers about the origin of goods
or services. Furthermore, an interested party may request
a trial or invalidation of registration of such a trademark
if it has been registered.
It is prescribed in the
revised Trademark Act which became effective as of March
1, 1998 that the registration of a trademark shall be
refused when the application is made for unfair purposes,
such as the aim of free-riding on the reputation of
the marks which are well-known in the Republic of Korea.
In addition to the Korean
Trademark Law, the Unfair Competition Prevention Act
also provide the protection of well-known trademarks.
Any person who is, or is likely to be, injured by acts
of unfair competition such as acts causing confusion
with another person's goods or business facilities by
using an indication identical with or similar to another
person's name, tradename or marks, including well-known
trademarks, may bring a civil action before the court
seeking an injunctive relief, monetary damage and/or
restoration of injured business reputation or goodwill.
Furthermore, the Law also set forth criminal provisions.
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