The Korean Trademark system adopts the First-to-File Rule.
Regardless of who first used trademarks, the right of trademarks is given to the person who first files the application with the KIPO (Korean Intellectual Property Office), except of well-known trademarks.
(1) Korea joined the World Intellectual Property Organization (WIPO) in 1979.
(2) Korea joined the Paris Convention for the protection of Industrial property in 1980.
(3) Korea joined the Agreement on Trade Related Aspects of Intellectual Property Rights (TRIPs), which was formed as a part of the final agreement of the Uruguay Round of the GATT, in 1995.
(4)Korea joined the Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks in 1998
(5) Korea joined the Trademark Law Treaty in 2003.
(6) Korea joined the Madrid Protocol in 2003.
The total time required for an application to be processed may be almost a year or more, depending on the basis for filing and the legal issues that may arise during the examination of the application.
We would like to introduce a new and useful system for filing of trademarks, the so called “expedited examination system”, which may be practical and convenient for you and your clients. This system was introduced to help applicants obtain their trademark rights in Korea on an accelerated basis.
Under the expedited examination system, only approximately six months are required to have trademark applications registered.
Trademark applicants may also request the expedited examination 1) when they are using or preparing to use a trademark in respect of the designated goods to be filed in Korea, or 2)when they have sent a warning letter or applied for a preliminary injunction against the use of a trademark that is identical with or similar to the applicant’s trademark without a justifiable reason by a third party, or 3) they are the petitioners of cancellation actions where the trademark registrations have been cancelled on the ground of nonuse.
It is advisable to conduct a search before filing your application. (Our firm has a long established and experienced trademark availability search team that can conduct diverse searches at competitive rate)
An applicant for trademark registration may designate one or more classes of goods. For a trademark in accordance with the NICE classification of goods and must file one application for each trademark.
The term of trademark is ten (10) years from the registration date.
However, the term may be extended by an application for the renewal of the term every 10 years.
To renew the term of a registered trademark, an applicant must file a renewal application within one year before the expiration of the current term of the registered trademark.
Further, even if the term has expired, the applicant may file an application to renew the term of a registered trademark within six (6) months of the expiration date. In this case, he or she must pay a late filing fee.
Korea became a party to the Paris Convention on May 4, 1980, and thus an applicant can claim a priority right based on an earlier application in any party of the Convention.
A person making a priority claim should file a trademark application within six months from the filing date of the earliest application which forms a basis of the priority claim.
A person making a priority claim should specify the name of the country in which the application was initially filed, and the first filing date of the application, at the time of filing a Korean trademark application.
If an applicant files an application by designating two or more goods as designated goods, the application can be divided into two or more applications for each goods or class of goods. In other words, the division of an application does not entail a division of the trademark, but a division of the designated goods.
The conversion of an application can be allowed among trademark applications, service mark applications, and collective mark applications, excluding collective mark applications for geographical indication and business emblem applications.
The most common reasons for refusing registration are because the mark is:
• Likely to cause confusion with a previous registered or applied mark;
• Descriptive for the goods/services; or
• A geographic term.
The examiner of the Korean Intellectual Property Office(KIPO)may also require amendments due to the reasons, for example, that the description of goods and services listed in the application is too broad or not clear.
Trial against a Final Rejection (Korean Trademark Law Article 70bis)
Trial against a Decision to Reject an Amendment (Korean Trademark Law Article 70ter)
(2) Inter Parte Cases
Invalidation Trial of Trademark Registration (Korean Trademark Law Article 71)
Trial to Confirm the Scope of a Trademark Right (Korean Trademark Law Article 75)
Trial for Cancellation of Trademark Registration(Korean Trademark Law Article 73)
When an applicant has received a Final Rejection issued by the examiner, the applicant can file an appeal within 30 days from the date of receipt of the Notice of the Final Rejection. The due date for filing an appeal against the Final Rejection may be extended to 2 months for a person who resides in an area that is remote or difficult to access.
An invalidation trial may be initiated by either an interested party or an examiner of the KIPO.
The invalidation trial can be demanded at any time, even after the trademark registration has expired.
An invalidation trial can be instituted for each goods or service to be registered.
A trademark registration is established upon payment of a registration fee within two(2)months from the receipt date of a Decision of trademark Grant.
This term may be extended for thirty(30) days upon request.
Deed of Assignment executed by a lawful representative of the assignor;
A notarized Corporate Nationality Certificate;
Power of Attorney executed by the lawful representative of the assignee; and
Power of Attorney executed by the lawful representative of the assignor.
You may challenge the use of your trademark by another party in several ways under Korean law, depending on the factual situation. You should consider contacting a trademark attorney at our firm who will be able to guide and advise you through each step.