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Our trademark consultation services, based on such tools as detailed knowledge of Korean examination practices, efficient screening searches and meticulous watching services, provide assistance to clients at each stage from choosing their new mark and the optimum strategy for obtaining maximum protection to enforcing their valuable trademark rights after registration in Korea.

As Korea is a member of the Madrid Protocol, we can provide comprehensive assistance with international registrations.

Our trademark team works closely with our general attorneys, who provide legal advice and services in connection with infringement litigation, domain name disputes, licensing and other IP transactions.

 

We work closely with our clients to prepare applications that are well- positioned to mature to registration, especially with respect to drafting descriptions of the goods/services that will meet the requirements of Korean guideline and practices, while providing clients with the broadest protection possible.

 
 

We inform clients within 5 working days from receipt of office actions from the Korean Intellectual Property Office (“KIPO”).Trademark attorneys carefully study the file history of the subject case, and inform the client of the reasons of refusal with comments to overcome them. In case the determination is made that it will be difficult to overcome the refusal, we suggest at least one alternative proposal to clients.

 
 
 

When a trademark application has been filed, anyone may submit an information statement with evidence supporting a ground for rejection of such trademark application to the KIPO before it is published for soliciting oppositions.

Once a trademark application is published in the official Trademark Gazette, any person may file an opposition within two months from the date of publication.

We closely and continuously watch the KIPO's database and the official Trademark Gazettes, so that we may inform our clients of any third party trademark applications that are identical with or similar to our clients' marks.

We have extensive experience representing clients with information statements/oppositions from both side of the process, i.e. from the point of view of an applicant and an opposers .

 
 

Our trademark team provides clients with timely reminders of trademark renewal deadlines, not to be expired their trademark rights without their own intention.

 
 

All Patent Court cases and major Tribunal cases are normally handled by a team of patent attorneys and attorneys at law. Senior patent attorneys take responsibility for Tribunal cases and Patent Court cases as main attorneys. We have extensive experience and know-how for handling trials and appeals.

In appeals against final rejection, applicants may amend the designated goods/ services within the scope of the original goods/ services within 30 days from the date of filing an appeal to overcome the original examiner's rejection.

Thus, we carefully review the goods/services being rejected and suggest our clients to amend the goods/services in order to overcome the original examiner's rejection.

 
 

With respect to our clients' famous or well-known marks, our firm has developed the Trinity System & Self-Funding System to provide integrated and enhanced protection at all possible levels of counterfeiting / infringement, i.e. at the levels of the Korean Intellectual Property Office, Korean Customs and Korean online and offline markets, and we collaborate with the Customs and the Prosecutor's Office to undertake raids and seizure of counterfeit goods.

 
 

The amended Trademark Act reflecting The Republic of Korea–U.S. Free Trade Agreement(FTA) has come into effect March 15, 2012. The amendments to the Trademark Act reflecting the revision stemming from the FTA are as follows.

1. Introduction of Sound and Scent Trademarks
Korea has started to extend protection to sounds and scents, which are not visible to the naked eye, as a trademark such as "Intel's" sound effect or "MGM's" lion roar (sound trademark), and a "laser printer toner's" lemon scent (scent trademark).

2. Introduction of Certification Marks
Korea has begun to adopt certification marks as trademarks. The term "certification mark" means any word, name, symbol, or device, or any combination thereof.
A person seeking to register a certification mark shall file an application along with the articles of association that govern the use of the certification mark, and submit documentary evidence that the applicant, the owner of a certification mark, can use to certify the quality, geographical origin, or mode of manufacture in respect of the designated goods or services.
Trademarks or service marks and certification marks are different and distinct types of marks, which serve different purposes. Using the same mark for two contradictory purposes would result in confusion and uncertainty about the meaning of the mark and would invalidate the mark for either purpose. Thus, if a party owns a registration as a trademark or service mark for any goods or services, he or she may not register the same mark as a certification mark for those goods or services. Conversely, a registration as a certification mark precludes registration of the same mark by its owner as a trademark or service mark for any goods or services to which the certification mark applies.
A geographical term may be used, either alone or as a portion of a composite mark, to certify that the goods originate in the geographical region identified by the term. A geographical name may be registered as a certification mark even though it is primarily geographically descriptive.
Any person may institute a petition to cancel a registration of a certification       mark on the following grounds;
a) The registrant does not control over the use of such mark, or
b) the registrant engages in the production or marketing of any goods or services to which the certification mark is applied, or
c) the registrant permits the use of the certification mark for purposes other than to certify, or
d)the registrant discriminately refuses to certify the goods or services of any person who maintains the standards or conditions which such mark certifies.

3. Abolishment of the Obligation to Register an Exclusive License
Before March 15, 2012, an exclusive license, which had not been recorded on the trademark register concerned, was not effective. However, as of March 15, 2012, according to the amendment of the Trademark Act, an exclusive license no longer needs to be recorded on the trademark register to obtain its effect.

4. Introduction of Statutory Damages (Pre-established Damages)
The Republic of Korea has adopted the statutory damages system as of March 15, 2012, which is a damages award system, in which the amount awarded is stipulated to within KRW 50,000,000 (approximately USD 44,000.00 ) rather than being calculated based on the degree of harm to the plaintiff (a trademark owner or its licensee).
The adoption of this system could be due to the fact that the calculation of a value is impractical in trademark cases where the volume of the infringement cannot be ascertained. It could also be due to the fact that the nature of the injury is subjective, such as in cases of a violation of a person's rights. The award serves as a both as deterrent and compensation.



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