Trademark

Trademarks(including Service Marks) may be protected in Korea under the Trademark Act; and for such protection, marks should be registered with the Korean Intellectual Property Office ("KIPO"). The use of a trademark is not a prerequisite for filing an application for the registration of a trademark. Unregistered marks are not protected under the Trademark Act, although the owner of a well-known or famous mark is given some protection under the Trademark Act by way of preventing others from obtaining a trademark registration for an identical or similar mark. There is no course of action against infringement of a well-known or famous unregistered trademark under the Trademark Act, but an action may be brought under the Unfair Competition Prevention Act.

The Korean Trademark Law is characterized by :
i) First-to-File Rule ;
ii) Substantive Examination
iii) Pre-grant Opposition

## Protection for Foreign Well-Known Trademarks in Korea

(1) 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.

(2) 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.

(a) Applicant

Any person who uses or intends to use a trademark in the Republic of Korea may file an application for the registration of a trademark. Although the Korean Trademark Act adopts a registration system, not a use system, the applicant of a trademark application should have a bona fide intent to use his trademark in the Republic of Korea . Nonetheless, trademarks which will not actually be used are also registered. Such trademarks, however, will be subject to cancellation if they remain unused for three or more consecutive years after their registration.

(b) Documents Required

For a trademark application, the following documents should be submitted to KIPO:

i) an application stating the following: the name and address of the applicant (including the name of an executive officer, if the applicant is a juristic person); the trademark; the designated goods and class thereof; the date of submission; and the country and filing date of the priority application, if the right of priority is claimed;

ii) trademark specimen;

iii) if the right of priority is claimed, the priority document; and

iv) a power of attorney, if necessary.

(c) Designation of Goods/Services: NICE Classification

A person who desires to file a trademark application must designate goods/services on which the trademark is to be used in accordance with the Nice Classification of Goods or Services for the Purpose of Registration of Marks. The Republic of Korea adopted the NICE Classification as of March 1, 1998.

A trademark application may be filed for the registration of trademark for goods or services which fall under several classes in accordance with the NICE Classification. In this case, the applicant has to pay additional fees for each classification.

(d) Claim of Priority

The right of priority can be claimed in a trademark application for a applicant whose country of origin is a party to the Paris Convention or under a bilateral agreement between two relevant governments or on a reciprocal basis. In order to enjoy the priority right, an application should be filed in the Republic of Korea within 6 months from the filing date of the priority application. The priority document should be submitted to KIPO within 3 months from the filing date of his/her application.

(a) Initiation of Examination

Unlike patent or utility model applications, trademark applications are automatically examined in order of their filing date. No request for examination is needed for the initiation of SUBSTANTIVE examination. The examination of a trademark application generally takes about 1 year from its filing date.

(b) Requirement for Registration

For a trademark to be registered under the Trademark Act, it should meet the following requirements:

i) It should fall under the definition of a trademark prescribed in the Trademark Act:

ii) It should be distinctive so as to serve as an indication of goods or services or, if it is not inherently distinctive, it should have acquired a secondary meaning;

iii) It should not fall into any of the categories of unregistrable trademark prescribed in the Trademark Act.

In addition to the reason for rejection, an opposition against the application can be filed by the owner of a trademark registered in the territory of a member country of a treaty to which the Republic of Korea has acceded, if both the trademark and the designated goods of the application are identical with, or similar to, those of the foreign trademark registration and if the application is filed by a person who is, or used to be, an agent or a representative of the owner of the registered trademark within 1 year prior to the filing date of the application concerned without obtaining the authorization or consent from the owner of the registered trademark.

If the examiner finds no ground for rejection of a trademark application, or he considers that the rejection has been overcome by the applicant's response (argument and/or amendment), he shall render a decision to publish the trademark application.

Once a trademark application is published in the official gazette, called the "Trademark Publication Gazette," any person may file an opposition within 30 days from the publication date. The thirty-day period cannot be extended. A notice of opposition containing a brief statement on the grounds for opposition must be submitted within the thirty-day period. Then, the opponent may amend, add or supplement the grounds for opposition within 30 days after the expiration of the thirty-day period.

If the examiner finds a ground for rejection of a trademark application, a notice of preliminary rejection will be issued, and the applicant will be given an opportunity to submit a response to the preliminary rejection within a time limit designated by the examiner. Such time limit is extendable upon the request for an extension by the applicant.

In responding to the preliminary rejection, the applicant may file an argument with or without an amendment to the filed mark. If the examiner determine that the argument is without merit and the ground for rejection has not been overcome, he will issue a notice of final rejection of the trademark application

When a trademark applicant receives a notice of decision to grant a trademark registration, he should pay a registration fee within 30 days from the date of receipt of such notice. This 30 day period can be extended to one month.

In case he fails to pay the registration fee within the 30 day period or the extended period, the trademark application will be deemed to have been abandoned.

The duration of the protection of a trademark right is 10 years from the date of registration of the trademark, which may be renewed every 10 years. For the renewal of a trademark registration, an application for the renewal should be filed with KIPO. Once a renewal application has been duly filed, the trademark registration is deemed to have been renewed on the expiration date of the original registration.