Korea is a first-to-file jurisdiction. Accordingly, the rights to a particular trademark generally belong to the first person who files an application for the mark and successfully prosecutes the application to registration. However, Korea is moving to provide better protection to the owners of original trademarks. In this regard, the Korean Intellectual Property Office ("KIPO") has recently adopted the policy of rejecting an application for a mark that is an imitation of another's mark, which is well known and/or recognized as a particular person's mark among general consumers and dealers in Korea. Accordingly, if a mark that is well known and/or recognized in Korea is not registered, it may be protected under the provisions of the Korean Trademark Law ("KTA") and/or the Unfair Competition Prevention Act ("UCPA"). However, in order for an unregistered mark to qualify for protection under said laws, specific conditions must be satisfied. Accordingly, registering a trademark is the most effective method of protecting a trademark in Korea.
NICE Classification System
Korea adopted the International Classification System of Goods and Services on March 1, 1998. Also, on January 1, 2002, the Implementing Regulations under the Korean Trademark Act were revised to be consistent with the eighth edition of the Classification of Goods and Services under the Nice Agreement.
Multiple Class Application
As of January 1, 1999, Korea adopted the Multiple Class Application System. A multiple class application may be beneficial in that it may reduce the costs associated with the filing and registration of a trademark in multiple classes. However, if a rejection is issued with respect to one of the classes designated in a multiple class application, it may result in the delay of the registration of the application in the other unrelated classes. In such an event, a divisional application may be filed in order to expedite the registration of the application in the classes other than those pertaining to the rejection.
General Power of Attorney
While maintaining the existing Individual Power of Attorney System, Korea adopted a General Power of Attorney System on January 1, 1999, and revised the system again on December 13, 2001. Under the General Power of Attorney System, if an applicant submits a General Power of Attorney, he is not required to submit a separate Power of Attorney with respect to the proceeding in any subsequent application, renewal application, information brief, opposition or trial.
1. First-to-File rule
Where two or more applications for trademark registration relating to identical or similar trademarks which are to be used on identical or similar goods are filed on different dates, only the applicant who filed the application with the earlier filing date may obtain a trademark registration for the trademark.
2. Registration of Trademark Administrator
To apply for a trademark in Korea, one must file application documents as prescribed by the Trademark Law. Persons having neither domicile nor residence in Korea (or a business establishment in the case of a legal entity) must file an application through a trademark administrator having a domicile or residence in Korea.
Simultaneously with the application, a document must be filed specifying the name of the country party to the Paris Convention in which the application was first filed, and the date of filing of the application in that country.
Documents including a copy of the application certified as correct issued by the original filing country must be presented to the KIPO within one year and 4 months from the earliest priority date.
3. Requirements for filing trademark application
A person who uses or intends to use a mark, including a trademark, service mark, collective mark and business emblem, requires the followings.
Name, address and nationality of the applicant;
Specimen of the mark;
Original executed Power of Attorney signed by on applicant or a representative if the applicant is a legal entity.
A specification of the goods/services
A certified copy of the priority document, if claimed.
1. Substantive Examination
All trademark applications are subject to a substantive examination by the KIPO. In order to obtain a trademark registration, a trademark must be distinctive with respect to the designated goods and/or services. In addition, it must not fall under any of the categories of unregistrable marks prescribed in the KTA.
2. Notification of reasons for Rejection
An examiner shall, when he intends to make a decision of rejection of trademark registration, notify the applicant of the reasons for rejection and give the applicant an opportunity to submit a written argument within the fixed deadline. The deadline can be extended upon request for two months on a monthly basis. The applicant must submit the amendment or response within the fixed deadline to overcome the reasons for rejection. The examiner shall make a decision that a trademark registration application is to be rejected when the applicant could not overcome the reasons for rejection.
If the KIPO finally rejects the application, the applicant can file an appeal with the Industrial Property Tribunal (IPT) of the KIPO. The applicant can file a further appeal to the Patent Court, and then to the Supreme Court of Korea, if deemed necessary.
3. Publication of Application
Where an examiner finds no reasons for rejecting an application for trademark registration, he shall render a decision to publish the application. After an application for trademark registration is published, the applicant may give written warning to a person who uses an identical or similar trademark.
4. Opposition to Trademark Registration
Within 30 days from the date of publication of an application, any person may raise an opposition to the grant of a trademark registration with the Korean Intellectual Property Office on the ground of same reasons for rejecting an application for trademark registration.
5. Trademark Registration
If an opposition is not filed within 30 days after the mark is published in the Gazette, a Notice of Granting Registration will be issued. If the registration fees are paid within two months from the receipt of the Notice of Granting Registration, the KIPO will issue a Certificate of Trademark Registration. It generally takes approximately twelve to fifteen months to register a mark, assuming that there are no adverse office actions or oppositions
6. Payment of Registration fee
Any person who desires to obtain the registration of the establishment of a trademark right, the supplementary registration of designated goods, or the registration for renewal of term of a trademark right, shall pay registration fees. Upon request, the Korean Intellectual Property Office may extend the period for paying the registration fees by a period not exceeding thirty days.
7. Renewal
The term of a trademark registration is ten (10) years. A renewal application for the trademark registration can be filed within the year prior to the expiration of the registration. A six-month grace period to renew the registration is granted after the expiration date of the trademark registration upon the payment of the prescribed fees. Evidence of the use of the trademark is not required when filing a renewal application.
8. Information Brief
An information brief asserting the unregistrability of an application can be filed, together with reference materials, before the examination of the application is completed. If an information brief is timely filed, the Examiner in charge will refer to the information brief in determining the registrability of the application, and issue a rejection if he finds the information brief persuasive.
1. Imitation Trademarks
If an unauthorized third party registers a mark that is an imitation of another party's famous mark, said party will be able to exercise its rights to the mark until the registration of the imitation mark is nullified. Accordingly, if an application for an imitation mark is filed or published in a Trademark Gazette, the owner of the original mark should attempt to prevent the registration of the imitation mark by filing an Information Brief and/or an Opposition.
2. Registration of Trademarks in Actual Use
A trademark should be used in the form that it is registered. If the registered trademark is used in an amended form, the use of the amended mark may not be recognized as valid use of the registered mark, and expose the registration to cancellation based on non-use. Accordingly, if a registered trademark is actually used in any amended form, a legal opinion should be obtained to confirm whether the amended mark falls within the scope of the registered mark. If the amended mark is determined not to fall within the scope of the registered mark, the registrant should consider obtaining a separate registration for the amended mark.
3. Registration of Trademarks in Korean Characters
Under local practice, the Korean transliteration of an English mark may be slightly different. In addition, such differences in the Korean transliteration of an Enlish mark may have an effect on the scope of protection of the mark. Accordingly, if a foreign company uses a mark in Korean characters that corresponds to the English mark, it is advisable to obtain a registration for the mark in Korean characters in order to obtain the broadest scope of protection for the mark.
4. Customs Registration System
In an attempt to prevent the importation and/or exportation of counterfeit products, a foreign company may consider registering its trademarks with the Korean Customs Office (KCO). If a trademark is registered with the KCO, the KCO will undertake spot checks for shipments of products reported for customs clearance for import and/or export. In addition, the person who registers the trademark with the KCO may demand that the KCO suspend customs clearance for, and/or seize, the alleged counterfeit products.
5. Measures against infringement
Although it is difficult in practice to prevent all acts of infringement, the owner of a trademark should take all appropriate measures to minimize any acts of infringement. In Korea, the owner of a trademark may send a cease and desist letter to the infringer based on the provisions of the KTL and/or the UCPA. In addition, a complaint requesting injunctive relief and/or compensatory damages may also be filed against the infringer.
6. Recordation of License
The two types of trademark licenses recognized under the KTL are: Exclusive and Non-Exclusive. An exclusive licensee cannot exercise its rights to the relevant trademark based on the provisions of the KTL until it is recorded with the KIPO. However, the recordation of the non-exclusive license is not compulsory. Accordingly, a non-exclusive licensee can legitimately use the trademark based on the license agreement concluded with the registrant without recording the non-exclusive license with the KIPO.
If an exclusive license is recorded with the KIPO, the exclusive licensee
is granted the exclusive right to use the trademark in the territory;
is granted the right to exert as much authority over the use of the trademark as the registrant, which includes the right to bring a legal action against any third parties for infringement of the trademark under its own name; and
can qualify to register as the representative of the registrant of the trademark with the Customs Office.
A non-exclusive licensee only has the right to use a registered mark and cannot assert any rights in the trademark against a third party. However, it is advisable to record a non-exclusive license because of the following:
The use of the mark by the licensee will be considered valid "use" of the mark by the registrant in a cancellation trial based on non-use. If the license is not recorded, and a cancellation trial based on non-use is filed by a third party, use of the trademark by the licensee will not be considered "use" unless documents proving that the licensee is an authorized licensee under the license agreement are submitted at the trial; and
Recordation of the license serves as a notice to third parties that the marks are being used and deters third parties from bringing cancellation trials based on non-use.
7. Recordation of Change of Ownership
It is not compulsory to record the transfer of a trademark right via an assignment or merger, or the change of the registrant's name/address with the KIPO. However, in order for the current owner of the trademark to exercise its trademark rights in Korea, the transfer of ownership and/or the name/address change must be recorded.
Revisions to the Korean Trademark Act have been passed to take effect on March 1, 1998 and July 1, 2001.
1. Effective from March 1, 1998
International Classification System Adopted
The Korean local classification system was replaced with the international classification system from March 1, 1998. All renewal trademark applications filed after this date must be filed according to the NICE classification.
Multiple Class Application and Registration System Adopted
Consistent with the Trademark Law Treaty, the revised Korean Trademark Law allows a single application and registration to cover one or more classes. The new system offers a cost-effective way of trademark protection for clients who wish to cover multiple classes of goods for a single trademark. The official and professional charges for the trademark filing in each additional class is 80% of the charge for filing in one basic class.
Three-Dimensional Mark Becomes Registrable
The revised Trademark Law also adopts the three-dimensional trademark system to adapt to the modern diversified market. However, the shape of a specific product or its packaging which is inherently functional is specifically provided to be non-registrable. Further, the KIPO has determined that three-dimensional use of two-dimensional representations which are well-known before the revision, is not recognized as justifiable use of the registration. In addition, it is impossible to claim infringement against a third party who uses trademarks identical with or similar to the two-dimensional registration only in three-dimensional forms.
Trademark Registrations for Unlawful Purposes to be Dismissed
The registration of trademark applications based on unlawful intentions are dismissed. This applies stricter enforcement of the rule against those who file another's widely-recognized trademarks based on unlawful purposes.
Associated Mark System Repealed
Associated marks are no longer required to be assigned together. The new law allows a cancellation action to be commenced by an interested party in the event the use of similar marks by different owners creates confusion among consumers as to the source of the related products.
Cancellation Trial Procedure Revised
The new law provides that a failure to record a trademark license is no longer a ground for cancellation.
2. Effective from July 1, 2001
Collection of Damages before Registration
In line with the Madrid Protocol, revisions to the Trademark Act confer the applicant of a trademark application the right to collect reasonable compensation from a third party for unauthorized use subsequent to publication of the trademark application until the registration of the trademark application with the KIPO, once the trademark application is registered. This revision is applicable to applications or supplemental applications filed on or after July, 1, 2001.
KIPO as Office of Origin
Any person who has Korean Nationality, domicile in Korea, or place of business in Korea, may file an international trademark application with KIPO based on their pending trademark application or registration at KIPO.
As the Office of Origin, KIPO shall examine whether the particulars in the international application are within the scope of the parent application or registration. Upon completion of the examination, KIPO shall transmit the same to the International Bureau.
A request for territorial extension subsequent to the international filing, payment of renewal fee for the international registration, and request for recordal of change of ownership in the international registration may be made at KIPO or directly at the International Bureau.
KIPO as Designated Office
An international application designating Korea would be considered to be a trademark application having been filed in Korea on its international filing date. When Korea is designated after the international registration (territorial extension), the local application will be deemed to have been filed on the date of such a designation. International applications designating Korea will be treated as the same as other Korean applications filed independently from the Madrid Protocol.
Simplification of Renewal Procedure
Consistent with the Trademark Law Treaty which eschews any substantive examination of a renewal application, the new law establishes a voluntary system wherein a separate application may be filed to amend the local classification of goods and services to the NICE Classification. Such applications, which can be filed concurrently or separately with a renewal application, can only be filed within the last 12 months of the registration period before the expiration date, and within the first 6 months after the expiration date.
However, re-classification amendments are compulsory to the extent that, in the event a registration renewed after July 1, 2001 is not re-classified in accordance with the NICE Classification, the next renewal for the registration is not allowed.
Amendment Possible to Avoid Return of Application
Under the new Trademark Act, before returning a trademark application even due to a material deficiency, the applicant is given an opportunity to amend the application. If the defect is rectified by such an amendment, that date of filing the amendment is regarded as the local filing date.
Invalidation of Generic or Descriptive Marks
In order to ensure free use of trademarks that have become generic or descriptive after its registration, the new law provides that a person who is or will be damaged by the existence of such registrations, may file an invalidation action against them.
Geographical Names Registrable if Acquired a Secondary Meaning
The new law acknowledges that, although a geographical name indicating the location or origin of goods or services is regarded as being devoid of any distinctive character, it may still be registrable as a trademark if it is established that the applied trademark acquired a secondary meaning of distinctiveness as a result of extensive past use.
Recordation of Non-exclusive Trademark License is Not Necessary
From July 1, 2001, there is no need to record a non-exclusive license from July 1, 2001. Under the current law, non-exclusive licenses granted to trademarks registered before March 1, 1998 are required to be recorded whereas such recordation is not necessary for those registered after March 1, 1998. This interim measure is abolished in the new law though no party is permitted to file a cancellation action based on unregistered non-exclusive license from July 1, 2001.
Protection of Registered Trademark Owner
The same revisions have been made as in the Patent Act and the Design Act in relation to assumption damages, and criminal penalty against infringement of registered trademark. That is to say, the new law raises the criminal penalty from five (5) years to seven (7) years imprisonment, and the criminal fine from 50 million Korean won to 100 million Korean won.
In a damages suit based on trademark infringement, the trademark owner has been required to show the amount of damage caused by the infringing activities of the defendant. The new law ameliorates the trademark owner's burden of showing damages by allowing the calculation of damages based on multiplying the trademark owner's expected profit per unit by the quantity of the products having been sold by the infringer.
