At a glance: trademark registration and use in South Korea

Registration and use

Who may apply for registration?

Any person or corporation who uses or intends to use a trademark in Korea may file an application to register such a mark and may acquire exclusive rights therein. Actual use of the mark is not required to register a mark.

What may and may not be protected and registered as a trademark?

A trademark is defined in the Korean Trademark Act as any of the following, used on or in connection with goods or services for the purpose of distinguishing them from the goods or services of others:

• a sign, letter, figure, three-dimensional shape or combination thereof, and a combination of colours used with respect thereto;
• any colour that is not combined with other items, combination of colours, holograms, motion or other item that can be visually recognised (effective from 15 March 2012); and
• sounds and scents that are capable of visual representation by means of symbols, characters, figurative designs, etc (effective from 15 March 2012).

Also, under the amended Korean Trademark Act effective from 15 March 2012, certification marks, that are used to certify a particular quality, origin, method of production or other characteristics of goods and services can now be registered.

A trademark application will not be registered, if the trademarks are:

• generic marks;
• marks whose components are commonly used to describe the designated goods;
• marks that are merely descriptive of the goods and services as associated therewith;
• marks consisting only of a well-known geographical name or abbreviation thereof, or of a map;
• trademarks consisting only of a commonly used person’s name or surname;
• trademarks deemed to be composed only of ‘simple and commonplace’ components; and
• trademarks that otherwise might not be understood by consumers as indicating the goods of a certain owner.

Can trademark rights be established without registration?

There are several ways to establish trademark rights without registration.

Korea is a first-to-file or registration-based jurisdiction. Therefore, in principle, the registrant of a mark enjoys the exclusive right in the mark against all later applicants for the same mark in respect of the same or similar goods and services. However, if an unregistered trademark is widely used in Korea or elsewhere to the extent that goodwill is created therein and the mark has become well known in Korea, any mark that is identical or confusingly similar to such a well-known mark should not be granted registration and is vulnerable to invalidation if it is registered.

If a mark that has been used without registration and has become well-known in Korea conflicts with a prior-registered trademark, the owner of the unregistered mark can obtain the right to continue to use the mark in cases where the owner has used the unregistered mark without engaging in any act of unfair competition before the other party’s application was filed.

The Unfair Competition Prevention and Trade Secret Protection Act provides additional means by which to protect a well-known but unregistered trademark from those seeking to misappropriate the goodwill associated therewith.

Is a famous foreign trademark afforded protection even if not used domestically? If so, must the foreign trademark be famous domestically? What proof is required? What protection is provided?

A famous foreign trademark is afforded protection even if it is not used domestically. In particular, the owner of a trademark that is deemed to be famous only in a foreign country can prevent a third party from registering the identical or confusingly similar mark if the third party’s application is filed in bad faith. If a foreign trademark is famous domestically, its owner can prevent registration of the identical or confusingly similar mark by a third party and prevent others from using the identical or confusingly similar trademark.

What are the benefits of registration?

Upon registration of a trademark, the owner has the exclusive right to use the mark on or in connection with the designated goods and services. Also, the trademark owner may seek civil remedies (injunctions, claim for damages and recovery of reputation, etc) and criminal remedies against infringers.

What documentation is needed to file a trademark application? What rules govern the representation of the mark in the application? Is electronic filing available? Are trademark searches available or required before filing? If so, what procedures and fees apply?

If local counsel is used to file a trademark application, a power of attorney is required. No notarisation or legalisation is required. The applicant must submit a specimen of the trademark as it will be used. If the mark cannot be clearly and completely presented, a description or a sample of the mark as used can be filed to precisely illustrate the scope of rights sought and to facilitate third-party recognition of the mark and the scope of rights. Electronic filing is available and trademark searches are not required before filing.

How long does it typically take, and how much does it typically cost, to obtain a trademark registration? When does registration formally come into effect? What circumstances would increase the estimated time and cost of filing a trademark application and receiving a registration?

It generally takes eight to 10 months from the filing of an application with the Korean Intellectual Property Office (KIPO) until a registration is granted, assuming that no preliminary rejection was issued by KIPO and no opposition was filed by a third party. Thus, it will take longer if a preliminary rejection was issued or an opposition was filed.

Applications can receive expedited examination upon request if it is proved that the applicant is already using or has a bona fide intent to use the trademark. If preferential examination of the application is granted, the application will be examined within one to two weeks of the date of grant and the results of whether the mark will be granted registration will be available within two months thereof.

Assuming that no preliminary rejection was issued, official fees payable from the filing to registration of a trademark application are approximately 280,000 South Korean won. If the number of designated goods and services exceeds 20 items in any single international class, additional official fees of approximately 2,000 South Korean won will be charged per item in excess of 20, both when filing an application and again upon registration in respect of applications filed on or after 1 April 2012. Official fees of requesting preferential examination are approximately 160,000 South Korean won.

Attorneys’ fees are different in each law firm. Assuming that no preliminary rejection was issued, attorneys’ fees from filing a trademark application through to registration in one class are approximately US$700 to US$900. Attorneys’ fees increase when responding to a rejection or an opposition.

What classification system is followed, and how does this system differ from the International Classification System as to the goods and services that can be claimed? Are multi-class applications available and what are the estimated cost savings?

The Nice Agreement on the International Classification of Goods and Services (11th edition) has been adopted by KIPO. Also, multi-class applications are available in Korea. Many law firms in Korea offer a discount on attorneys’ fees when filing multi-class applications. However, there is no discount on official fees when filing multi-class applications.

What procedure does the trademark office follow when determining whether to grant a registration? Are applications examined for potential conflicts with other trademarks? Are letters of consent accepted to overcome an objection based on a third-party mark? May applicants respond to rejections by the trademark office?

Once all the formal filing requirements are satisfied, the examiner will then examine an application to determine whether the mark satisfies the substantive requirements for registration. Upon examination, if the examiner does not identify any grounds for rejecting the trademark (or if any initial rejection is overcome by arguments or amendments), the examiner will approve the trademark for publication in the Korean Trademark Gazette. Applications are examined for potential conflicts with other trademarks and applicants can respond to rejections within the predetermined period.

Does use of a trademark or service mark have to be claimed before registration is granted or issued? Does proof of use have to be submitted? Are foreign registrations granted any rights of priority? If registration is granted without use, is there a time by which use must begin either to maintain the registration or to defeat a third-party challenge on grounds of non-use?

Since Korea is a first-to-file jurisdiction, use of a trademark or service mark does not have to be claimed before registration is granted or issued. Therefore, registration is granted even without use and no proof of use is required in principle. However, the Korean Trademark Act became effective from 15 March 2012 whereby an examiner may require evidence of prior use, proof of intent to use or a declaration from an applicant regarding the extent of its intent to use a mark in Korea if the application is filed in five or more international classes, or if numerous unrelated goods or services are claimed in a single application.

Further, the mark can be renewed perpetually without any proof of use. However, if a registered mark has not been used by the owner or a licensee thereof on or in connection with the designated goods in Korea for a period in excess of three years without justifiable reason immediately prior to the date on which a cancellation action is instituted, it is vulnerable to cancellation.

What words or symbols can be used to indicate trademark use or registration? Is marking mandatory? What are the benefits of using and the risks of not using such words or symbols?

The Korean Trademark Act provides that a trademark owner can use the ® registration symbol if the mark is registered in Korea. It is permissible to use the ™ symbol as a trademark indication regardless of whether the mark is registered or the application is pending.

Under the Korean Trademark Act, a person who infringes upon another person’s trademark rights in cases where it is marked as a registered mark is deemed to have intentionally engaged in trademark infringement. Accordingly, if the owner of a registered mark indicates that the mark is registered in Korea, it would not need to prove that a person who infringed upon its trademark rights was intentionally engaged in trademark infringement.

The Korean Trademark Act also provides that if the ® registration symbol is used in connection with a mark that is not registered in Korea, it is deemed to be false representation. Any person found to be in violation of this provision is subject to a fine of up to 20 million South Korean won or imprisonment for up to three years.

Is there an appeal process if the application is denied?

The applicant can file an appeal with the Intellectual Property Tribunal Appeal Board (IPTAB) of KIPO within 30 days of the date of receiving a notice of final refusal. The IPTAB panel is comprised of three experienced examiners, as opposed to the primary examination stage, wherein the examination of the mark is performed by a single examiner. At the next level, the applicant can appeal to the Patent Court seeking reversal of the intellectual property tribunal decision. Finally, the decision of the Patent Court may be appealed to the Supreme Court.

Are applications published for opposition? May a third party oppose an application prior to registration, or seek cancellation of a trademark or service mark after registration? What are the primary bases of such challenges, and what are the procedures? May a brand owner oppose a bad-faith application for its mark in a jurisdiction in which it does not have protection? What is the typical range of costs associated with a third-party opposition or cancellation proceeding?

After the substantive examination, KIPO will either accept the mark for publication or issue an office action refusing the mark. If KIPO accepts the mark, it will then be published for opposition in the Korean Trademark Gazette for two months. Once a mark is published in the Korean Trademark Gazette, anyone may file an opposition against the registration thereof within two months. Only a notice of opposition and a brief statement of the grounds for opposition must be filed during the notice period. The opponent thereafter may amend and supplement the grounds for the opposition for a period of 30 days, which can be extended for an additional two months.

The primary bases of opposition include the following:

• a mark that is merely descriptive of the goods and services as associated therewith;
• a mark deemed to be composed only of ‘simple and commonplace’ components;
• a mark that is identical or confusingly similar to a prior-registered mark;
• a mark that is identical or similar to another trademark that is well known among consumers as indicating the goods of that other party or goods similar thereto;
• a mark that is likely to mislead or deceive consumers as to the nature or quality of the goods; and
• a mark that is identical or similar to another mark that is well known in or outside of Korea as indicating goods that are used for unlawful purposes, such as obtaining unjust profits or inflicting harm on the owner of the other mark.

How long does a registration remain in effect and what is required to maintain a registration? Is use of the trademark required for its maintenance? If so, what proof of use is required?

Trademarks are registered in Korea for an initial period of 10 years and can be renewed perpetually without any proof of use. At present, there is no substantive examination of renewal applications. Thus, it takes only approximately two to three months to complete a renewal procedure.

What is the procedure for surrendering a trademark registration?

A trademark right may be surrendered by submitting:

• a deed of abandonment signed by the registrant; or
• a notarised corporate or individual nationality certificate of the registrant with KIPO.

Can trademarks be protected under other IP rights?

Trademarks can be protected under designs and copyrights if they can meet the requirements of the Design Protection Act and the Copyright Act.

What regime governs the protection of trademarks online and domain names?

The relevant authority for the protection of trademarks online and domain names is the Korean Court.