- First-to-File Rule: and used trademark can be protected only in the case of well-known or prominent trademark:
- Automatic examination:
- Opposition before registration (for 30 days after the Publication date):
- Registration (10 year from the registration date); every 10 years can be renewed from one year prior to the expiration date; grace period of 6 months after that with penalty;
- Madrid Protocol applicable.
Prosecution for the Trademark Application
In Korea, 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.
A. Filing a Trademark Application
Any person who uses or intends to use a trademark in Korea may file a trademark application. 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 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 the 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; This document 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 the KIPO.
- Ten (10) specimens of the trademark (7cm x 7cm or smaller in size). If the applicant fails to submit specimens of the trademark or power of attorney at the time of filing the trademark application, the KIPO will issue a notice of amendment requesting the applicant to submit them, designating a time limit thereof.
- If the right of [riority is claimed, the priority document. 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.
3. Designation of Goods/Services followed by 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 foregistrati nof Marks.
A trademark application may be filed for the registrationof 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.
4. Claim of Priority
The right f 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 the KIPO within 3 months from the filing date of his/her application.
5. Power of Attorney
B. Substantial Examination
1. 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 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.
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 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 registerd trademark.
C. 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 Gazetote,” 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.
The duration of the protection of a trademark right is 1O years from the date of registration of the trademark, which may be renewed every 1O years. For the renewal of a trademark registration. an application for the renewal should be filed with the KIPO. Once a renewal application has been duly filed, the trademark registtration is deemed to have been renewed on the expiration date of the original registration.
E. 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. A trademark application filed by a person other than the owner of the famous mark will be rejected; and, if the registratin 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 Act, 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, trade name 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 Act also set forth criminal provisions.