* Accelerated examination systemAccording to Article 61 of the Patent Act, the Commissioner of KIPO may have a particular category of patent application examined ahead of other patent applications. KIPO’s regulation concerning the procedure for handling requests for accelerated examination provides that applications eligible for such expedited examination are limited to the following categories:(1) in case it is considered that an invention has been commercially worked by a person who is not the applicant, after his application has been laid-open;
(2) in case the application is one of the kinds of applications stipulated in the Presidential decree and regarded as urgent
(i) it relates to goods for defense industry and processes for the preparation thereof, as defined in the Special Measures Act Relating to Defense Industry.
(ii) it relates to facilities for the prevention of environmental pollution or a process thereof.
(iii) it is directly involved in the promotion of export as evidenced by export records, a letter of credit, a request for validating patent rights from the buyer of expected goods, or documents related to the adoption of international standards.
(iv) it is made officially by an employee of the central government, a local government(including application filed by exclusive organizations for technology transfer and commercialization, which were established in national and public school).
(v) patent applications that the KIPO Commissioner and the heads of patent offices in other countries agreed to examine on a priority basis
(vi) applications about which anyone requests one of the KIPO-approved agencies(namely the Korea Institute of Patent Information/WIPS Co., Ltd./the Korea IP Protection Technology Institute Co., Ltd./and the IP Solution Co., Ltd.) to conduct the prior art search and asks the agency to forward the search results to the KIPO commissioner
(vii) and so forth A person who desires an accelerated examination of his application must submit a written request together with a statement explaining the necessity thereof in detail and any evidence supporting the statement Flow chart of an accelerated examination
* Deferred examination system
If necessary, Applicants can have the examination deferred for up to six months from the date of the examination request.
Instead of specifying a preferred date, applicants can get first action from KIPO within three months of the preferred examination date provided the preferred date is at least 18 months after the date of the examination request and within five years of the application date.
* Divisional application
An applicant who has filed a patent application comprising two or more inventions may divide the application into two or more applications Flow chart of a divisional application
* Converted application
An applicant can convert a patent application to a utility model application or vice versa, but may not convert the application if thirty days have elapsed since the date on which the person received a certified copy of the first decision to reject the utility model registration application.
Flow chart of a converted application
* Priority claim under treaty
The system of making a priority claim under treaty is recognized by the Paris Convention and by the member countries of the WTO. Whenever an application filed in one country is filed again in another member country within a year of the first filing, the filing date of subsequent application is deemed to be the filing date described in the original application.
Flow chart of a priority claim under treaty
* Claim for domestic priority
An applicant for a patent may make the priority claim based on a invention disclosed in the description or drawing(s) originally attached to a written application of an earlier application for a patent or utility model registration within a year of filing the earlier application, for which the applicant has the right to obtain a patent or utility model registration.
Flow chart of a claim for domestic priority
* Ex officio amendment
If an examiner determines that an application is patentable but has minor defects such as misspellings or wrong reference numbers, the examiner can make an ex officio correction of the minor defects without having to request the applicant to submit a written opinion.
(For decision of registration made after July 1, 2009.)
* Request for reexamination (reexamination before a trial)
Whenever an examiner refuses an application, the applicant can simply request a reexamination after amending the description or drawing(s) . This process is permitted under the revised Patent Act.
Previously, if an application was refused after examination, an applicant had to appeal the examiner’s decision of refusal and amend the description or drawing(s) for examination before a trial. On the other hand, according to the revised Patent Act, however, an applicant does not need to appeal but simply request reexamination with amendment.
Flow chart of a request for reexamination (application filed after July 1, 2009)
①Reasons for refusal from before the date of giving notice of the first refusal, but were not mentioned
②Reasons for refusal which were created by the amendments made after giving notice of refusal, but were not mentioned
③Reasons for refusal mentioned in previous notice of refusal
Flow chart of a reexamination before a trial (for applications filed before June 30, 2009, and after July 1, 2001)
①Reasons for refusal from before the date of giving notice of the first refusal, but were not mentioned
②Reasons for refusal which were created by the amendments made after giving notice of refusal, but were not mentioned
③Reasons for refusal mentioned in previous notice of refusal
* Pendency period
– The pendency period starts when an applicant requests an examination and ends when the examination begins.
A prolonged pendency period delays the enforcement of rights and hinders the commercialization
and profitability of new technologies
– To shorten the pendency period, KIPO has increased the number of patent examiners, expanded outsourcing
services on prior art searches, maximized its examination capabilities through performance-based management,
developed an automatic search system, and introduced Six Sigma management methods.
As a result of those efforts, KIPO had the fasted examination service in the world by the end of 2006
1908: The Trademark Decree promulgated
1946: The Patent Institute was established and patent laws were enacted.
1949: The Trademark Act was enacted.
1977: The Korean Intellectual Property Office (KIPO) was established as an independent office under the Ministry of Commerce, Industry and Energy.
1979: Korea joined the World Intellectual Property Organization (WIPO).
2002: Application to join the Trademark Act Treaty submitted to the WIPO
2003: Application to join the Madrid Agreement submitted to the WIPO
* Concept of a trademark in trademark act
As a social fact, a trademark refers to all sensible expression methods used to distinguish my goods from another person’s goods. However, it is difficult to protect all such marks legally and technically.
Accordingly, trademark act limits the protectable constituents of a trademark. In the past, the constituents of a trademark were limited to the symbol, character, diagram, three-dimensional shape, or any combination of these as well as a combination of color with each of these. As the scope of protectable trademarks was expanded from July 1, 2007, trademark act additionally protects a mark formed by a single color or a combination of colors, hologram marks, motion marks, and all types of marks which are visually recognizable.
However, a trademark in Trademark Act has still been limited to devices which are visually recognizable. Even though marks unidentifiable by the naked eye ??? characterized by such senses as sound, smell, taste ??? are used to distinguish my goods from another person’s goods in real transactions, they cannot be protected by Trademark Act. (Provided, the act is under amendment consultation so that marks identifiable by means other than the naked eye, like sound, smell, and taste, can also be covered.)
In addition, even though a mark is used on products, a mark that does not distinguish my goods from another person’s goods is not a trademark. Therefore, if a design is used to inspire users with an aesthetic sense only or as a price mark irrelevant to the identification of owners, it shall not be deemed a trademark in accordance with the Trademark Act. In a wider sense, service marks, collective marks, and business emblems may be also regarded as trademarks.
* Concept of a service mark
A “Service Mark” refers to a mark used by a person who conducts a service business (advertisement, communication, banking, transportation, restaurant, etc.) to distinguish his/her service business from the service businesses of others.
In other words, a trademark is the identification mark of a “product”, while the service mark is an identification mark of a “service business.”
* Concept of a collective mark
A “collective mark” refers to a mark intended for use by a legal entity founded in association with persons who conduct business activities such as producing and selling goods; members of the legal entity can use the mark for their goods and services.
* Concept of a business emblem
A “business emblem” refers to a mark used by a person engaged in a nonprofit business like the YMCA or Boy Scouts ??? to indicate that person’s business (e.g. Republic of Korea National Red Cross, Junior Chamber, Rotary Club, Korea Consumer Agency, etc.)
* Trademark and trade name
A trademark is an affixed mark that distinguishes my goods from another person’s goods, thereby preserving the identity of products. A trade name is a name used by a merchant (legal equity or individual) to indicate his/her service business and to maintain the identity of business. A form of personal name, the trade name is depicted and formed by characters, and must be used in the case of companies. On the other hand, the trademark is a symbol to distinguish my goods from another person’s goods, and may consist of symbols, characters, diagrams, a combination of these, or a combination of color with these.
As per international trends (a trademark composed of a trade name or vice versa), a trade name conforms to a trademark in accordance with the Corporate Identification Program. If a trade name is used for a product mark and is registered in accordance with trademark registration requirements, it may be protected as a legal trademark. As the number of trademarks composed of trade names gradually increases, there are many cases in which overlap occurs between two parties.
* Trademark and geographical indication
Both a trademark and a geographical indication have the function of representing the origin and quality of goods, relate to business profits and are marks protected under the scope of the intellectual property. To this extent, they resemble a trademark. Thanks to such similarities, there are some countries in which geographical indications are protected like trademarks under trademark and geographical indication protection act; there are also countries which protect geographical indication as a collective mark or a certification mark under trademark act.
However, a trademark is a mark that identifies a “specific business subject” providing goods or services, while a geographical indication is an indication that identifies a “specific region” in which business subjects using the relevant indication are located. The geographical indication enables one business to exclude other competitors from using a given mark like a trademark, but unlike a trademark it has no “exclusive owner.”
In the Republic of Korea, the trademark act (Act No. 7290) was amended on December 31, 2004; “geographical indication” has been protected as a collective mark from July 1, 2005. The geographical indication is not a simple place name. If a product has a specific quality, reputation, and characteristic like “Indie Yonder Hangtag” (walleye pollock) and these features originate from a geographic characteristic such as the climate, soil, or topography of the region, the geographical indication denotes the place in which the goods are produced, manufactured, and processed. When the features distinctive to a region like quality or reputation are essentially attributable to geographic characteristics including natural conditions like the climate, soil, or topography of the region, or personal conditions like traditional production methods, the geographical indication indicates that the goods are produced, manufactured, and processed in that region.
* Trademark and domain name
A trademark is a mark affixed to goods to distinguish my goods from another person’s goods. A domain name refers to an address (IP Address) composed of digits corresponding to the address of a host computer in Internet and is composed of a combination of alphabetic characters and digits. The trademark originated from the function of indicating the source of goods, while the domain name originated from the function of indicating the location of a host computer in Internet. Thanks to the emergence of e-commerce, the domain name itself serves as an indicator of the origin of goods or services. As the frequency of cyber squatting increases (in which a person registers another person’s trademark under his own name and then resells that trademark to the rightful owner for an exorbitant price), disputes involving trademarks and domain names will also increase.
In Korea, the registration of a trademark does not in principle grant its owner the right to register a domain name corresponding to the trademark, and vice versa. (For more information, refer to trademark and domain.)
The purpose of a trademark system is to ensure the maintenance of the business reputation of persons using trademarks by protecting trademarks so as to contribute to the development of industry and to safeguard the interests of consumers. (Article 1 of the Trademark Act)
* Distinguish my goods from another person’s goods
Distinguish my goods from another person’s goods by affixing a trademark to the goods
* Indicate the origin
Inform consumers which products with a same trademark come from the same origin
* Guarantee quality
Guarantee consumers that all products with a same trademark have the same quality
Remind consumers of the goods associated with a trademark as one sales promotion method in commercial transactions
This refers to the property and economical value inherent in a trademark, which may be realized by the free assignment and establishment of the rights for use.
* Personal Requirements (a person who is entitled to register a trademark)
Any person (legal equity, individual, joint manager) who is using and intends to use a trademark, as a person who is entitled to be granted trademark rights in Korea, may register a trademark as prescribed by Trademark Act.
All Koreans (including legal equity) may be trademark right owners. The qualification of foreigners is subject to treaty and the principle of reciprocity.
* Substantive requirements
Trademark registration requirements are classified into procedural requirements, like application type, and substantive requirements (positive requirements, passive requirements) to ensure that the composition of a trademark itself has sufficient distinctiveness to distinguish my goods from other person’s goods, or corresponds to grounds of unregistrability. In Trademark Act the substantive requirements are important.
1) Positive requirement
The most important function of a trademark is to distinguish my goods from another person’s goods. For registration, the trademark must have a distinctive feature from the onset. In Trademark Act, the distinctiveness enables traders or common consumers to recognize whose goods are indicated by the mark
The existence of distinctiveness is generally decided subject to designated goods. The Article 6(1) of Trademark Act enumerates the grounds by which a trademark cannot be registered due to lack of distinctiveness as follows:
a.Usual name of the goods
The mark indicates only the name of the goods, regarding specific goods, (e.g. snack goods – corn chip, confectionery – walnut cake, automobile – car)
b. Mark customarily used on the goods
The mark is customarily used on a specific kind of goods among businesses engaged in the same industry (e.g. confectionery – dry cake, alcohol – refined rice wine, textiles – Tex)
c. Mark describing the features of goods
Origin mark: Indicates the origin of the goods (e.g. apple – Daegu, ramie fabric – Hansan, dried croaker – Yeonggwang)
Quality mark: Indicates the quality and superiority of the goods (e.g. Low, Middle, High, Special, Super) Indicates the quality and superiority of the goods (e.g. Low, Middle, High, Special, Super)
Raw material mark: Indicates the name of raw materials used in the goods (e.g. suit – wool, necktie – silk)
Performance mark: Indicates the effect or performance of the goods (e.g. TV – Hteck, copier – quick copy)
Usage mark: Indicates the usage of the goods (e.g. bag – student, clothes – lady)
Quantity mark: Two pairs, 100m, etc.
Shape mark: Indicates the ordinary shape and size of the goods (e.g. small, large, capsule, slim)
Production method, processing method, business method marks: Indicate how the goods are produced, processed, and used (e.g. farm produce – natural agricultural method, shoes – handmade, desk – fabricated)
Time mark: Indicates when the goods are used (e.g. tire – all-weather; clothes – spring, summer, autumn, winter)
d. Conspicuous geographical name, an abbreviation, or a map
The mark consists solely of a sign indicating a conspicuous geographical name, its abbreviation or map (e.g. Mt. Geumgang; Mt. Baekdu; New York, etc.)
e. Common surname or name of legal entity
The mark indicates the surname of ordinary persons, or the name of legal entity/group, or a trade name (e.g. Lee, Kim, President, commercial company, association, Chancellor, etc.)
f. Simple and commonplace sign
The mark consists solely of a very simple and commonplace sign (e.g. 123, ONE, TWO, etc.)
g. Other marks without distinctiveness
Common slogans, catchwords, expressions used in greetings (e.g. Believe it or not, I can do it, www, etc.)
The necessity for distinctiveness is judged based on when the registration of a mark is concluded. In a combined mark, the distinctiveness is judged based on the whole of the constituents of the mark, and common traders or consumers related to the designated goods. If one does not have to consider the relation with the designated goods, it is judged by the common average recognition criteria.
“Mark indicated by a common method” refers to a mark which is represented with printed or italic-type Korean, Chinese, or Roman characters.” “To consist solely” indicates that if a mark includes a common name, but it is just part of the distinguishing mark, or it is absorbed in the distinguishing mark and constitutes a coordinated whole, the distinctiveness is wholly recognized, except in cases in which two or more technical marks are combined.
Even if a trademark falls under Paragraphs c, d, e, f above, when, as a result of using the trademark before the application for registration, consumers are easily able to recognize the person whose goods are indicated by the trademark, the trademark may be registered (Article 6(2) of Trademark Act). Also, notwithstanding marks that are subject to Paragraph c (applied only to the origin) or d above, whenever the mark is used as a geographical indication on specific goods, a collective mark for a geographical indication may be registered for the designated goods that use the geographical indication (Article 6(13) of Trademark Act).
2) Passive requirement (grounds of unregistrability)
Even if a trademark has distinctiveness, when it grants an exclusive license, or when it infringes public good or another person’s profit, the trademark registration needs to be excluded. The grounds of unregistrability are restrictively enumerated in Article 7 of the Trademark Act.
a. Trademarks that are identical or similar to the following: the national flag, the national emblem, as well as colors, medals, decorations or badges of the Republic of Korea, official signs and hallmarks indicating control and warranty of the Republic of Korea or its public institutions
1-2. Trademarks that are identical or similar to the following: the national flags of the allies of the [Paris Convention for the Protection of Industrial Property] (hereinafter referred as the “Paris Convention”), or of the members of the World Trade Organization or of the signing parties to the Trademark Act Treaty (hereinafter referred as “the allies” in this clause)
1-3. Trademarks that are identical or similar to the following: the titles, the acronyms or marks of the International Red Cross, the International Olympic Committee or well-known international organizations. But this is not applied in cases where the International Red Cross, the International Olympic Committee or well-known international organizations have applied for trademark registration on their titles, the acronyms or marks.
1-4. Trademarks that are identical or similar to the following: the national flag, the national emblem as well as colors, medals, decorations or badges of the allies of the Paris Convention, or the titles, the acronyms, the national flag, the national emblem, as well as colors, medals, decorations or badges of inter-governmental international organizations (in case the allies are members), which are designated by the commissioner after being informed by the World Intellectual Property Organization(WIPO) based on Article 6, Clause 3 of the Paris Convention. But this is not applied in cases where allies or inter-governmental international organizations apply for trademark registration on their titles, the acronyms (limited to the inter-governmental international organizations) or marks.
1-5. Trademarks that are identical or similar to the following: official signs and hallmarks indicating control and warranty of the allies or public institutions, which have been designated by the commissioner after being informed by the World Intellectual Property Organization based on Article 6, Clause 3 of the Paris Convention; application regarding the same or similar products with those signs and hallmarks
b. Trademarks that falsely indicate a connection with, or that criticize, insult or are liable to defame, any nation, race, ethnic group, public organization, religion or well-known deceased person (i.e: Yankee, Negro, etc.);
c. Trademarks that are identical or similar to well-known marks that indicate a nonprofit business of a state, a public organization or its agencies or public corporations, or a nonprofit public service (e.g. YMCA, KBS, RED CROSS, etc.);
d.Trademarks whose meaning and details are perceived by users as being liable to contravene public order or morality (e.g. obscene shapes or characters, words like swindler or pickpocket, etc.);
e. Trademarks comprised of a mark that is identical or similar to a medal, certificate of merit or decoration awarded at an exhibition held by or with the authorization of the Government of the Republic of Korea or at an exhibition held by or with the authorization of the government of a foreign country.;
f. Trademarks containing the name, title or trade name, portrait, signature or seal, famous pseudonym, professional name or pen name of well-known persons, or an abbreviation of these (e.g. DJ, JP, KEPCO, LH, etc.)
g. Trademarks that are identical or similar to another person’s registered trademark.
h. Trademarks that are identical or similar to another person’s registered trademark when no more than a year has elapsed since the date on which the trademark right expired;
h-1. Trademarks that are identical or similar to another person’s registered collective mark for a geographical indication when no more than a year has elapsed since the date on which a registered collective mark for a geographical indication expired;
i. Trademarks that are identical or similar to another person’s trademark when that other person’s trademark is well known among consumers;
i-1. Trademarks that are identical or similar to another person’s geographical indication when that other person’s geographical indication is well known among consumers;
j. Trademarks that are liable to cause confusion with the goods or services of another person because consumers easily recognize the trademark as designating the goods or services of the other person;
k. Trademarks that are liable to mislead or deceive consumers regarding the quality of the goods;
l. Trademarks that are identical or similar to a trademark that consumers inside or outside the Republic of Korea easily recognize as indicating the goods of a particular person, and which are used to obtain unjust profits or to inflict harm on a particular person and so on;
l-1. Trademarks that are identical or similar to a geographical indication that consumers inside or outside the Republic of Korea easily recognize as indicating the goods of a certain region, and which are used to obtain unjust profits or to inflict harm on a legitimate users of the geographical indication and so on;
m. Trademarks that consist solely of three-dimensional shapes that are essential for securing the functions of goods, or their packages, that require trademark registration; or ;
n. Trademarks that consist of a geographical indication or include a geographical indication of the origin of wines or spirits of a member state of the World Trade Organization, and which are used for wines, spirits or other similar goods. However, this provision does not apply if a legitimate user of a geographical indication applies to register a collective mark for a geographical indication and the relevant goods are the designated goods.
o. Trademarks that are identical or similar to the form names registered in Article 111 of the [Seed Industry Act, or trademarks used regarding the same or similar products with those form names Under Article 7(5) of Trademark Act, if a trial for the cancellation of trademark registration is requested, and if any of the following subparagraphs occurs after the date of requesting the cancellation trial, the owner of the trademark rights and any person using the trademark may not obtain trademark registration for a trademark that is identical or similar to a registered trademark extinguished with respect to goods that are identical or similar to the designated goods of the extinguished registered trademark, unless three (3) years have elapsed since the day on which each of the following subparagraphs occurs:
a. Where the trademark right has been extinguished because the term has expired;
b. Where a person with the trademark rights abandons the trademarks right or some of the designated goods;
c. Where the trial decision on the cancellation of a trademark registration has been finalized.
* A single application for a single trademark
An applicant for trademark registration shall designate one or more classes of goods for the classification of goods prescribed by ordinance of the Ministry of Knowledge Economy, and file an application for each Trademark; this is referred to as the Doctrine of a Single Application for a Single Trademark. Filing for two trademarks with one application is not allowed.
This doctrine is principally applied to an application for new trademark registration, an application for the additional registration of designated goods, and an application for renewal of the term of a trademark right.
Under the Enacted Trademark Act of 1997, the “Principle of a Single Application for a Single Trademark” was abolished from March 1 1998, while the “Principle of One Multiple Class Application for Single Trademark” was applied. As a result, an applicant can file an application for every trademark and also simultaneously designate both the trademark and service business when filing an application.
* Designation of articles to use a registered trademark
When a person files an application for trademark registration, he/she may designate a trademark to be protected and also the goods using the trademark as one class or multiple classes in accordance with the Classification of Goods and the ‘Notice of the Name and Classification of Goods and Service Businesses’ as specified in Article 6 of the Enforcement Regulations of Trademark Act. The Addendum of the Enforcement Regulations of Trademark Act specifies 34 classifications of goods from 1st class to 34th class and 11 classifications of service businesses from 34th class to 45th class.
Before March 1, 1998, the Korean Intellectual Property Office used the classification of goods class prepared by KIPO. After that, KIPO has used the ‘Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks.’
* Additional application of designated articles
If the scope of designated goods needs to be enlarged subject to the situation after application or registration, an owner of trademark rights or an applicant may receive a permit for the additional registration of designated goods which adds new articles to the goods designated by the registered trademark or the trademark application, as a result, extend the scope of trademark rights to be protected as an owner of trademark rights.
An applicant may designate one article or two or more articles at one time. However, if the designated goods need to be added after filing an application or registration, the applicant may additionally file an application for goods designated separately and add them.
To register the designated goods additionally, an owner of original trademark rights or an application for original trademark registration must exist; an applicant must be the same as the owner of a registered trademark or an applicant for trademark registration; the trademark to additionally register designated goods must be same as the relevant registered trademark or trademark application; these must not correspond to any refusal reason against common trademark applications.
When there is an additional registration of designated goods, the goods registered additionally are incorporated into the original trademark rights as a combined whole. As the original trademark rights are extinguished, the additional registration is extinguished as well. However, whether there are any grounds for invalidation or whether trademark rights are infringed shall be independently construed and judged, irrelevant of the original registration.
Under Trademark Act before March 1, 1998, in case of the same trademark in the same classification of goods class, only one trademark could be registered. After that, as the Registration System of Multiple Class by Single Application has been performed, the additional registration articles were limited to the same classification of goods class in the past, while an applicant can separately file an application and a registration for every article.
* Divisional application
If an applicant files an application by designating one or more goods as designated goods, the application can be divided into two or more applications for each good or the Classification. In other words, the division of an application does not entail a division of the trademark, but a division of designated goods.
* Converted application
The conversion of an application can be allowed among trademark applications, service mark applications, and collective mark applications, except collective mark applications for geographical indication and business emblem applications.
An application to register the renewal of the term of trademark rights or an application for the additional registration of designated goods can be converted into an application, except if an invalidation trial or a cancellation trial is requested in relation to a registered trademark that served as the basis of an application to register the renewal of the term of trademark rights or an application for additional registration of designated goods. To prevent the misuse of this system, the conversion does not apply where an invalidation trial or a cancellation trial is requested.
In addition, the conversion of an application through other Acts (mutual conversion of an application among trademark, patent, utility model, and design) must not be allowed – including reciprocal conversion of an application among an application for new trademark registration, an application for additional registration of designated goods, or an application to register the renewal of the term of trademark rights.
* Application to renew the term of a registered trademark
The term of trademark rights is ten (10) years from the registration date. However, these may be extended by an application to register the renewal of the term of trademark rights every 10 year. As long as the trademark rights are continuously used, they may have semi-permanency.
To renew the term of registered trademark rights, an applicant shall file an application to renew the term of a registered trademark within one year before the expiration of the term of a registered trademark. Although the term has expired, the applicant may file an application to renew the term of a registered trademark before the lapse of six (6) moths. In this case, he or she shall pay a required negligence fine.
* Application trend
The number of trademark applications in 2009 was 162,682, revealing a decline of 8.7% compared to 178,211 in 2008; there were 180,257 trademark applications in 2007.
* Click here to see application trend in detail
* Term of a trademark right
Trademark rights are commences when the trademark right is registered; it ends 10 years after the registration date. However, it may be extended every 10 years by an application to register the renewal of the term of trademark rights. As long as the trademark rights are continuously used, they may have semi-permanency.
To renew the term of registered trademark rights, an applicant shall file an application to renew the term of a registered trademark within one year before the expiration of the term of a registered trademark. Although the duration has expired, the applicant may file an application to renew the term of a registered trademark before the lapse of 6 moths. In this case, he shall pay a required negligence fine.
* Expiration of a trademark right
If the term of trademark rights expires as a result of a default of the renewal of the term, or an applicant gives up the trademark right at his/her disposal, or he/she does not apply for registration of the reclassification of goods within a given period for goods registered under the previous classification of Korean goods, the trademark rights are extinguished. In addition, if an application to transfer a registered trademark is not filed by a successor in title within 3 years of the death of the original owner of the trademark, the trademark rights are extinguished on the day after the expiry of a three-year period following the death of the original trademark owner.
* Application to register the reclassification of goods
A trademark rights owner who has obtained trademark registration, a supplementary registration of designated goods or a registration for renewal of the term of a registered trademark for designated goods in accordance with the Korean Classification of Goods before March 1, 1998, shall reclassify the designated goods under the Classification of Goods (NICE Classification) as prescribed by the Ordinance of the Ministry of Commerce, Industry and Energy.
An application to register the renewal of the term of a registered trademark and an application to register the reclassification of goods may be filed through one application. When a person who has to register the reclassification of goods does not perform this obligation within the given period, the trademark rights for the designated goods to be registered as the reclassification of goods shall extinguish at the date on which the expired date of the given period is included.
An application to register the reclassification of goods must be filed within the period beginning one year before the date on which the term of the trademark right expires and no later than six months after the expiry date of the term.
* Transfer of a trademark right
The transfer of a trademark right replaces only a trademark right owner, keeping the sameness of the trademark rights content. As the trademark rights are also a kind of intangible property rights, they need to be freely transferrable like common property rights. However, this may be restricted if necessary in order to protect the owner’s profit in terms of the purpose of Trademark Act.
Generally, a trademark right may be freely transferred in itself by selling or donation without reference to business, and divided and transferred for every designated good.
* Trademark license system
1) Exclusive License
A trademark rights owner may grant an exclusive license regarding the trademark rights to others. An exclusive licensee is entitled to exclusively use the registered trademark regarding the designated goods to the extent allowed in the license agreement
Accordingly, an exclusive licensee as well as a trademark rights owner is entitled to seek prevention or injunction against other persons who use a trademark identical or similar to the registered trademark for goods identical or similar to the designated goods. And an exclusive licensee may transfer an exclusive right, or grant nonexclusive rights to others with the consent of the trademark rights owner.
An exclusive license has no effect on any third parties unless it is registered and transferred (registration is a preferential right against third parties). An exclusive licensee shall specify his/her name or title to goods which use a registered trademark.
2) Nonexclusive License
A trademark rights owner or an exclusive licensee may grant a nonexclusive license regarding the trademark rights to others. A nonexclusive licensee is entitled to use the registered trademark regarding the designated goods to the extent allowed in the license agreement. The nonexclusive licensee may transfer his/her rights to others with the consent of the trademark rights owner and the exclusive licensee.
A nonexclusive license has no effect on any third parties unless it is registered and transferred (registration is a preferential right against third parties). A nonexclusive licensee shall specify his/her name or title to goods which use a registered trademark.
In addition, a nonexclusive licensee is just entitled to use a registered trademark on the designated goods. Therefore, he has no injunction right against infringement. Only a trademark rights owner or an exclusive licensee is entitled to seek injunction against infringement.
* Effect of a trademark right
Once a trademark is registered, a trademark rights owner is entitled to exclusively use the registered trademark on the designated goods; seek injunction against others who use any trademark identical or similar to the registered trademark; and exercise a claim of infringement injunction or a right of compensation for damages against others who infringe the trademark rights by using any trademark identical or similar to the registered trademark.
Without the consent of the trademark rights owner are considered to infringe upon trademark rights: (i) acts of using a trademark that is identical or similar to the registered trademark of another person on goods that are identical or similar to the designated goods; (ii) acts of delivering, selling, counterfeiting, possessing, or keeping a trademark right that is identical or similar to the registered trademark of another person in order to use or cause a third party to use the trademark on goods that are identical or similar to the designated goods.
* Remedy methods for an infringement of a trademark right
There are remedy methods against the infringement of a trademark right as follows:
① Civil remedy: A claim of infringement injunction, a right of compensation for damages, provisional disposition, provisional seizure, recovery of reputation, etc.;
② Criminal remedy (irrelevant of complaint): Offense of infringement, confiscation, etc.;
③ Administrative remedy: Control of counterfeit goods, border measures by customs authorities, and settlement of intellectual property rights dispute, etc.
Regardless of whether or not they are registered under the Trademark Act, well-known or famous marks are protected by way of barring the registration of a mark which is identical with, or similar to, such marks. An application for the registration of such mark filed by a person other than the owner of the famous mark will be rejected; and, if the registration is erroneously granted, it will be subject to invalidation.
Even if goods and/or service concerning a trademark application are not identical with or similar to those of a well-known trademark, the application shall be refused due to the possibility of misleading the consumers about the origin of goods or services. Furthermore, an interested party may request a trial or invalidation of registration of such a trademark if it has been registered.
It is prescribed in the revised Trademark Act which became effective as of March 1, 1998 that the registration of a trademark shall be refused when the application is made for unfair purposes, such as the aim of free-riding on the reputation of the marks which are well-known in the Republic of Korea.
In addition to the Korean Trademark Law, the Unfair Competition Prevention Act also provides the protection of well-
known trademarks. Any person who is, or is likely to be, injured by acts of unfair competition such as acts causing confusion with another person’s goods or business facilities by using an indication identical with or similar to another person’s name, trade name or marks, including well-known trademarks, may bring a civil action before the court seeking an injunctive relief, monetary damage and/or restoration of injured business reputation or goodwill. Furthermore, the Law also set forth criminal provisions.
“Geographical indication” refers to an indication that identifies a product as originating in a certain region where a given quality, reputation or other characteristics of the product are essentially attributable to that region.
* Requirements [Substantive Requirement]
Conformity to the definition of geographical indication under the Trademark Act
Protection by a geographical indication is limited to goods; this includes agricultural goods, marine products, processed goods, and industrial products (especially handicrafts), except service business.
A geographical indication applies to the geographical origin of goods and indicates the name of a place in which goods are produced, manufactured, and/or processed. It is not limited to the name of an administrative district and does not require that goods must be produced, manufactured, and/or processed in the same region.
Specific quality, reputation, or other characteristics of goods are required. In quality, reputation, or other characteristics, goods which are produced, manufactured, and/or processed at a place must be differentiated from goods which are produced, manufactured, and/or processed elsewhere.
The basic correlation between characteristics of goods and geographical environment is required. A geographical indication shall be essentially based on geographical environment including natural conditions (e.g. climate, soil, topography) or personal conditions (e.g. specific production method) as well as the quality, reputation, or other characteristics of goods which are produced, manufactured, or processed in a region.
Establishment of a group with corporate personality composed of producers, and preparation of articles of association
An application to register a collective mark for a geographical indication shall be filed by groups (producer group, processor group, etc) with a corporate personality that consist only of persons who produce, manufacture, or process goods corresponding to the geographical indication in a certain region. An application filed by an individual, companies under Commercial Law or groups without a corporate personality shall not be registered.
Submission, examination and registration of filing documents and documentary evidence
To register a collective mark for a geographical indication, a legal entity such as a producer group qualified to file shall prepare a required application, submit an application to register a collective mark for a geographical indication to the Korean Intellectual Property Office together with documentary evidence which conforms to the definition of geographical indication, pay a registration fee with the registration decision of an examiner, and then register the right.
A collective mark for a geographical indication excludes any third party from registering any trademark or a collective mark for a geographical indication which is identical or similar to a registered collective mark for the geographical indication. When any person in another region uses a mark which is identical or similar to the registered geographical indication on the designated goods, he may assume civil and criminal liability for infringement of trademark rights.
The collective mark right for a geographical indication does not apply to marks which are customarily used for goods identical to the designated goods for the registered collective mark for a geographical indication; or a geographical indication or a homonymous geographical indication used by a person who produces, manufactures, or processes goods related to a geographical indication in the relevant region.