1. Why register a trademark?
For both commercial and protection reasons, trademarks should be registered. The risk of not registering a trademark is that others may register an identical or similar mark that could impede the ability to use or register the mark in Korea. Registration is prima facie evidence of ownership and validity. Registration can generate royalties through licensing.
2. Is registration of a mark mandatory?
Registration is not compulsory, but it is advisable. In the absence of registration, it is not possible to prevent others from using the mark if it is not well known in Korea, and there is a risk that others may register it.
3. What is registrable?
Distinctive word marks, devices, signs, and combinations thereof with or without color limitations are registrable. Three-dimensional shapes can, per se, also be registered as of March 1, 1998. Service marks can also be registered.
4. Can a trademark be registered for retail and like services?
No. However, a trademark can be registered for retail agency services and retail mediating services.
5. How are domain names protected?
Domain names are protected by the Unfair Competition Prevention Act and a registration with the Korea Network Information Center (KrNIC). New domain name dispute mediation rules, similar to the UDRP, were introduced for resolution of disputes regarding the .kr domain names as of the year 2002.
6. Should a trademark be searched before filing?
It is not compulsory, but the applicant usually makes a trademark search before filing, through a trademark search database in Korea, in order to secure possibility of registration of the trademark. Applications are officially searched as to prior marks through the examination proceedings by the examiner, but this takes about 10 to 12 months.
7. How do I file?
A foreign applicant may file a trademark application only through a Korean trademark attorney.
8. What information must be provided before filing?
Before filing, an applicant must provide one specimen of the mark unless the mark can be represented in plain block capital letters, full details of the applicant, a list of goods/services to be covered, and a power of attorney appointing a Korean trademark attorney simply signed by the applicant.
9. Is local registration the only option, or are there international alternatives?
A Korean application only has effect in Korea. The Republic of Korea acceded to the Madrid Protocol on April 10, 2003.
10. Is it necessary to file more than one application if a mark is used in more than one class of goods and/or services?
No. A single application may cover goods or services in more than one class.
11. Is it possible to take advantage of a home application or registration?
If an applicant抯 home country is a member of the Paris Convention, and provided its home application has been filed within the six months preceding a Korean application, the filing date of the home application can be claimed as the filing date in Korea.
12. Must a trademark be used after registration, and what happens if a trademark is not used?
A mark must be used within three years of the registration date. If not, the registration becomes vulnerable to cancellation for nonuse. However, late use after the three-year term may restore registration, provided that in the interim no third party has filed an action for cancellation for nonuse.
13. Is using a variation of the trademark allowable?
If the difference is slight and does not alter the substance of the registration, use of the different form would not affect the enforceability of the registration. However, if the difference is significant, a new application may be necessary. A Korean trademark attorney should be consulted on this issue.
14. Is there any advantage to using a trademark before filing an application?
Generally, no. There is an exception for owners of well-known, currently used marks in Korea, where the first to file is entitled to registration. Prior use of a mark is not a requirement.
15. For an application to be valid, are there any particular requirements that must be met?
No. The first person who applies for registration is entitled to it.
16. What information is first published about an application/ registration and when is it published?
The application number, application date, name and address of an applicant, class and descriptions of goods/services, trademark and name of representative is first published approximately a year after the application date.
17. What kind of examination (if any) will a new application undergo?
For the purpose of official examination, there is a discretionary search for prior conflicting trademarks that can be cited against the application; however, there is no mandatory official search. An application is examined to determine if the mark complies with local rules as to distinctiveness and deceptiveness.
18. What response to official objections is required?
The applicant is entitled to reply within a given period that is extendible in all cases. If rejections are confirmed, the applicant is entitled to appeal, but the goods/services of the application might need to be amended if the reason for rejection is related to the problems of the goods/services.
19. How long is the registration process?
The registration process takes approximately 12 to 18 months.
20. What rights does an application confer?
The application can be cited against, or used to oppose, a subsequent conflicting application. Korea has adopted the first-to-file rule, and therefore any relevant similar pending application can be officially cited against any later application, or used in opposition proceedings against such a later application.
21. What is the legal effect of a registration?
The registrant can sue for infringement and invalidation of subsequent registrations and applications. The registrant may also obtain an injunction to prevent unauthorized use and seize infringing goods. After the expiration of five years, the registration may not be invalidated based only on reasons such as violation of the first-to-file principle, or similarity to a prior registered mark.
22. Can an application be opposed or cancelled by third parties?
Yes. An opposition may be filed by any person within a non-extendible period of 30 days from the date of publication of the application.
23. Can an application or registration be assigned?
Yes. Applications and registrations are assignable. Consult a Korean trademark attorney.
24. Must an assignment include goodwill?
No.
25. Does an assignment have to be recorded?
Assignments must be recorded to be effective.
26. Can an application or registration be licensed?
Yes. Consult a Korean trademark attorney.
27. Does a license have to be recorded?
No. However, an exclusive license must be recorded to be effective and a nonexclusive license must be recorded to be effective against third parties.
28. What is the territorial limit of a registration?
The territorial jurisdiction is Korea.
29. How long does a registration last?
The term of registration is ten years from the date of registration, and is renewable for like periods.
30. What is required to renew a registration?
A renewal application must be filed within one year preceding expiration of registration, accompanied by a power of attorney simply signed by the applicant. It can be filed within six months after said expiration, if an additional fee is paid. In case of a trademark filed before March 1, 1998, an application for change in goods classification must also be filed from the old Korean class to the current international class when filing a renewal application.
31. Is it necessary to indicate a trademark registration on goods or services?
Marking is not compulsory. However, to indicate that the mark is registered in Korea, it is advisable that the mark be used in commerce with the Korean symbols for 揜egistered Trademark?and be followed by the registration number. The ?is also considered a sufficient marking of a registered trademark.
32. Does the International Classification System apply?
Yes. The International Classification system applies as of March 1, 1998.
33. Is your national office accessible online?
Yes. The Korean Intellectual Property Office is accessible online through its website, www.kipo.go.kr. |
