One of the most frequent IPR problems facing U.S. businesses in Korea is trademark protection. Unlike the trademark registration system in the United States, which is based on "first commercial use" or "first intent to use", the trademark registration system in Korea is based on "first-to-file", or more accurately, first to successfully register with the Korea Intellectual Property Office (KIPO).
If a U.S. company is considering entering the Korean market it is highly advisable that the U.S. company register their trademark first before an unauthorized party has the opportunity to register the trademark. The company will save much time, energy, resources and legal fees in the long run. Since registration of trademarks is in Korean, in order to successfully register a trademark, the U.S. company should hire a qualified local attorney who is familiar with registration procedures. To have maximum effect, a company should be prepared to register its trademark in every applicable product class category for the product(s). Should the trademark be challenged, protection is not generally provided under the Korean legal system if the company has not registered in the relevant product class category.
Both the United States and Korea are members of the Madrid Protocol, which allows companies from the member nations to apply for trademark ownership in several member nation countries simultaneously. In Korea, a U.S. company can register their trademark and patents with KIPO. Foreign applicants are required to retain a licensed local attorney in order to prepare applications in Korean and to conduct necessary follow-up correspondence locally. Enforcement of legally registered copyrights, trademarks and patents are under the jurisdiction of the Prosecutor's Office in Korea.
The 1998 Trademark Act provides KIPO with grounds to reject third-party applications of the same or similar trademarks if KIPO is convinced that the registration is done in "bad faith." As capable as trademark examiners can be, some trademark registrations by unauthorized registrants have slipped through the cracks and have been successfully registered. Registration by an unauthorized party can include "predatory registration" (i.e., knowing that the mark belongs to another company, the unauthorized applicant registers the mark, with no intention of using it but rather to sell the trademark registration when the legitimate trademark owner tries to enter the Korean market).
In such cases, because the Korean legal system is based on "first to file", and because the unauthorized registrant successfully registered with KIPO, the unauthorized registrant is the legal owner of the trademark in Korea—even if it is the U.S. company’s mark and the American company has been using it in international business for several years. Provided that the mark was not used commercially by the successful but unauthorized registrant in Korea for the previous three years, the U.S. company can file a Cancellation Action petition to cancel the existing mark. If the cancellation action is successful and there is no appeal, the U.S. company can immediately file to register the trademark with KIPO, thereby reclaiming the trademark.
The most contentious scenario takes place when an unauthorized trademark application has been successfully registered with KIPO, and the party is actually using the U.S. company's trademark commercially in Korea. In this case, the legal remedy available is an Invalidation Action. An invalidation action petition can be filed anytime during the course of the 10-year life of a trademark, provided the unauthorized registrant is actually using the trademark. The American company's petition should outline why the unauthorized trademark owner's registration should be voided (invalidated), i.e. that the American company is the legitimate and original trademark owner, and that consumers know the trademark to be associated with the U.S. company.
If the company follows either the invalidation or cancellation action routes, the burden of proof lies with the petitioner. U.S. companies should be prepared to provide documentation showing commercial use (include samples of the product and illustrating the uniqueness of the trademark and product), to substantiate financial investment in advertisements (include all examples of actual advertisements or promotional materials that appeared in the media), even to provide results of any surveys that show that the brand name is publicly recognized in Korea and that the company is the source of the legitimate goods promoting the trademark.
Provided that the company and their attorneys put forth a convincing argument with meticulously documented details as to why the company is the legitimate trademark owner, the company has a good chance of winning the case before the KIPO Trial Board. However that may not be the final hurdle since there is an appeals process for cancellation and invalidation actions from the KIPO Tribunal Board to the Korean Patent Court and finally to the Supreme Court of Korea. The rule of thumb for a trial date is first come, first served --- petitions are filed by date with the trial dates occurring in order of the date of petition.
Unlike successful cancellation actions where the company may file for the trademark immediately with KIPO, successful invalidation actions have a one-year moratorium from the invalidation action date before a U.S. company can officially register a trademark. However, US companies can seek enforcement measures from the date of invalidation of the Korean registration.
An alternative approach is to settle out of court. Due to the length of time it takes to go from the KIPO Tribunal Board to the Korean Patent Court and all the way up to the Korean Supreme Court, some companies decide not to wait to re-claim their trademark. Four years or more is not unheard of for a final decision using the legal process and even then there is no guarantee that the U.S. company will be successful. Because the opportunity cost of not entering the Korean market can be considerable, some companies have opted to settle out of court, i.e., to buy their own trademark back from the unauthorized (but legal) registrant for use in the Korean market. Regardless of the approach taken, good legal counsel is essential.
Article 6 Requirements for Trademark Registration
(1) Trademark registration may be obtained except in any of the following cases:
where the mark consists solely of a sign indicating, in a common way, the usual name of the goods;
where the mark is customarily used on the goods;
where the mark consists solely of a sign indicating, in a common way, the origin, quality, raw materials, efficacy, use, quantity, shape (including the shape of the packaging) or price of the goods, or the method or time of manufacturing, processing or using them;
where the mark consists solely of a sign indicating a conspicuous geographical name, an abbreviation of a conspicuous geographical name or a map;
where the mark consists solely of a sign indicating, in a common way, a common surname or name of a legal entity;
where the mark consists solely of a very simple and commonplace sign; or
in addition to the cases mentioned in subparagraphs (i) to (vi) of this Article, where the mark does not enable consumers to recognize the person whose goods are indicated by the mark.
(2) Even if a trademark that falls under paragraphs (1)(iii) to (vi) of this Article, where, as a result of using the trademark before the application for registration under Article 9 of this Act, consumers are easily able to recognize the person whose goods are indicated by the trademark, the trademark may be registered with the designated goods for which the trademark has been used; the same applies to designated goods and supplementary designated goods as defined in Articles 10(1) and 47(2)(iii) of this Act.
(3) Notwithstanding marks that are subject to paragraph (1)(iii) of this Article (which is limited to the producing area) or paragraph (1)(iv) of this Article, whenever a mark is used as a geographical indication on specific goods, a collective mark for a geographical indication may be registered for designated goods that use the geographical indication.
Article 7: Unregistrable Trademarks
(1) Notwithstanding Article 6, trademark registration may not be obtained in any of the following cases:
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; the national flags or emblems of foreign nations; the medals, decorations or badges of the countries party to the Paris Convention for the Protection of Intellectual Property (referred to as "the Paris Convention") or of the members of the World Trade Organization or of the contracting parties to the Trademark Law Treaty; the titles or marks of the Red Cross, Olympic organizations or well-known international organizations; titles or marks that are identical or similar to seals or signs of the Republic of Korea, or of the countries party to the Paris Convention, the members of the World Trade Organization, the contracting parties to the Trademark Law Treaty or the public organizations of these that are used for indicating supervision or certification;
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;
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; however, this provision does not apply where a nonprofit business of a State, a public organization or its agencies or public corporations, or a nonprofit public service apply to register such marks as their business emblems;
a trademark itself or, when used in goods, a trademark whose meaning and details are perceived by users as being liable to contravene public order or morality;
trademarks comprising 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, unless a person who has been awarded a medal, certificate of merit or decoration has used it as part of the trademark on the same goods for which the medal, certificate of merit or decoration was awarded at the exhibition;
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, unless the consent of the person concerned has been obtained;
trademarks that are identical or similar to another person's registered trademark (excluding a registered collective mark for a geographical indication) when the registration was applied for before the filing date of the trademark applications concerned and when the trademarks are to be used on goods identical or similar to the designated goods;
trademarks that are identical or similar to another person’s trademark (excluding a registered collective mark for a geographical indication) when not more than a year has elapsed since the date on which the trademark right expired (that is the date on which a trial decision became final for a trial decision invalidating a trademark registration) and when the trademarks are to be used on goods that are identical or similar to the designated goods;
trademarks that are identical or similar to another person's registered collective mark for a geographical indication when not more than a year has elapsed since the date on which the registered collective mark for a geographical indication right expired (or the date on which a trial decision became final for a trial decision invalidating a collective mark for a geographical indication) and when the trademarks are to be used on goods identical to the designated goods;
trademarks that are identical or similar to another person's trademark when that other person's trademark (excluding a geographical indication) is well known among consumers to indicate or resemble the other person's goods, and when the trademarks are to be used on goods that are identical or similar to such goods;
trademarks that are identical or similar to another person's geographical indication when that other person's geographical indication is well known among consumers to indicate or resemble a certain region's goods and when the trademarks are to be used on goods that are identical or similar to such goods;
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;
trademarks that are liable to mislead or deceive consumers on the quality of the goods;
trademarks that are identical or similar to a trademark (excluding a geographical indication) 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;
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;
trademarks that consist solely of three-dimensional shapes that are essential for securing the functions of goods, or their packagings, that require trademark registration; or
trademarks that consist of a geographical indication or include a geographical indication of the origin of wines or spirits in 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 under Article 9(3) of this Act and the relevant goods are the designated goods.
(2) Where a trademark falls under paragraphs (1)(vi), (ix), (ixbis) and (x) of this Article, the respective provisions do not apply if the trademark does not fall under the respective subparagraphs when the applicant applies for trademark registration (however, the matter of whether the applicant for trademark registration pertains to another person under the provisions of paragraphs (1)(vi), (ix), (ix bis) and (x) of this Article is excluded from all the matters in those provisions).
(3) Where a trademark falls under paragraph (1)(vii), (viibis), (viii) and (viiibis) of this Article, the respective provisions apply if the trademark falls under the respective subparagraphs when the applicant applies for trademark registration (or if the registered trademark of another person is invalidated under Article 71(3) of this Act); however, the matter of whether the applicant for trademark registration (referred to as "the applicant") pertains to another person in the relevant subparagraphs is not determined on the basis of whether the applicant pertains to another person in the relevant subparagraphs when the applicant applies for the trademark registration.
(4) Paragraphs (1)(viii) and (viiibis) of this Article do not apply to the following cases:
where the registered trademark has not been used for more than one year retroactively from the date on which the trademark right was extinguished;
where a rightful applicant applies to register the trademark, after a decision on invalidation or revocation becomes final because the registered trademark violates paragraphs (1)(vi), (ix), (ixbis), (x), (xii) and (xiibis) of this Article or Articles 8 or 73(1)(vii) of this Act; or
where an applicant applies to register the trademark after the period of six months as prescribed in Article 43(2) of this Act has elapsed without applying to renew the term of the registered trademark.
where a person requesting a cancellation trial files an application for trademark registration under Article 8(5) and 8(6) of this Act; or
where, under any subparagraph of Article 8(5), an application for trademark registration is filed after the expiry of the period in which a person requesting a cancellation trial may obtain a trademark registration under Article 8(5).
(5) Where a trial for the cancellation of a trademark registration is requested under Article 73(1)(ii), (iii), and (v) to (xii) of this Act, and where any of the following subparagraphs occurs after the date of requesting the cancellation trial, the owner of the trademark right 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 (the collective mark for geographical indication is limited to an identical goods)that are identical or similar to the designated goods of the extinguished registered trademark, unless three years have elapsed since the day on which each of the following subparagraphs occurs:
where the trademark right has been extinguished because the term has expired;
where a person with the trademark right abandons the trademark right or some of the designated goods;
where the trial decision on the cancellation of a trademark registration has become final;
(6) Paragraph (1)(viibis) (viiibis) and (ixbis) may not be applicable between the collective marks for homonymous geographical indication.
Download the Trademark Act by clicking on the link below.
Korea is a member of the trademark-related multinational treaties listed below.
Trademarks, and service(Trademark hereinafter) marks may be protected in the Republic of 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) Substantial Examination
iii) Pre-grant Opposition
(2) Filing an Application
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.
ii) Document Required
For a trademark application, the following documents should be submitted to KIPO:
(a) 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;
(b) 10 specimens of the trademark (7cm x 7cm or smaller in size);
(c) if the right of priority is claimed, the priority document; and
(d) a power of attorney, if necessary.
Only document (a) must be submitted at the time of filing the trademark application. The name of an executive officer of the applicant may be added later on the applicant's own initiative or in response to a notice of amendment issued from KIPO.
If the applicant fails to submit specimens of the trademark or power of attorney at the time of filing the trademark application, KIPO will issue a notice of amendment requesting the applicant to submit them, designating a time limit therefor. The priority document must be submitted within 3 months from the filing date in the Republic of Korea of the trademark application. This time limit cannot be extended.
iii) 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.
iv) 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.
(3) Formality Examination
According to Article 2(1) of the Enforcement Regulation of the Trademark Act, the application will be returned to the submitter without any application number being assigned thereto and will be treated as if it had never been submitted in any of the following circumstances:
(i) where the kind of the application is not clear;
(ii) where the name or address of a person (or juristic person) who takes the procedure (i.e. the applicant) is not described;
(iii) where the application is not written in Korean;
(iv) where a specimen of the trademark is not attached to the application paper;
(v) where the designated goods/services are not described in the application paper; or
(ⅵ) where the application is submitted, by a person who has no address or place of business in the Republic of Korea, without coming through a patent agent in the Republic of Korea.
Once the application has satisfied such requirements, KIPO assigns an application number and examines as to whether or not other formality requirements under the Trademark Act have been met. If anything is found missing or wrong, the Commissioner of KIPO will issue a notice of amendment requesting the applicant to supplement the missing data or amend it, and within specified a time limit. If the applicant does not comply with such request, the trademark application will be nullified.
(4) Substantial Examination
i) 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 substantial examination. Furthermore, the Trademark Act does not provide for the expedited examination system which is available for patent, utility model and design applications. The examination of a trademark application generally takes about 1 year from its filing date.
ii) Requirement for Registration For a trademark to be registered under the Trademark Act, it should meet the following requirements:
(a) It should fall under the definition of a trademark prescribed in the Trademark Act:
(b) 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;
(c) 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.
(5) Publication and Pre-Grant Opposition
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.
(6) Rejection, Registration, Appeal and Trial
Rejection, Registration, Appeal and Trial procedure is same with those of patent.
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.
Protection of 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.
(3) 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.
(4) In addition to the Korean Trademark Law, the Unfair Competition Prevention Act also provide 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, tradename 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.
To report an infringement, contact the KIPO or the Public Prosecutors' Office. Click "here" for a list of IPR protection consulting firms in Korea.
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(a) Injunction against Infringement
(i) The owner of a trademark right can request a person who is infringing or is likely to infringe on his trademark right to discontinue or refrain from such infringement.
(ii) The owner of a trademark right who is acting under the above paragraph (ⅰ) can demand the destruction of the infringing articles, the removal of the facilities used for the infringement, or other measures necessary to prevent the infringement.
(b) Claim of Compensation for Damages from Infringement
Under Civil Law, the owner of a trademark right can claim compensation from a person who has intentionally or negligently infringed the trademark right for damage caused to him by such infringement.
For damage estimation in this compensation claim, the expected profit per single legitimate good multiplied by the sold quantity of infringed goods can be presumed as the damage amount.
(c) Other Available Remedies
Upon request of the owner of a trademark right, the court can, in lieu of damages or in addition thereto, order the person who has injured the business reputation of the owner of the trademark right, by intentional or negligent infringement of the trademark right, to take necessary measures to restore the business reputation of the owner.
In addition, the owner of a trademark right can claim restitution of unjust profits under Civil Law.
Any person who has infringed a trademark right is subject to imprisonment not exceeding seven years or to a fine not exceeding one hundred million Korean Won.
Where a representative of a legal entity or an agent, an employee or any other servant of a legal entity or a natural person has committed an infringement of a trademark right, the legal entity or the natural person, in addition to the offender, is sentenced to a fine under the above paragraph.
In respect to well-known trademarks, the owner of a well-known trademark which is not registered with the Korean Intellectual Property Office is given indirect support under the Trademark Act by preventing others from obtaining a trademark registration for an identical or similar mark. The owner, however, is not entitled to take action against infringement of his unregistered trademark under the Act.
At a minimum, American companies that plan to enter the Korean market in the future should monitor KIPO public notices to ensure that their trademark has not been registered. Since the public notices are only in Korean, if the U.S. company cannot monitor the situation from America, the company should consider hiring someone in Korea, such as an attorney, who can.
Also, when registering for a copyright, trademark, or patent, US companies should maintain control of their intellectual property even if they request their Korean agent to do the processing. This control is particularly relevant should the Korean-American partnership dissolve. In such previous cases where the Korean agent maintained control of the intellectual property, long, costly legal battles have ensued. The legal system is structured on an appeals process which takes a minimum of three to four years in the courts should a case go to the Supreme Court of Korea or to the Supreme Civil/Criminal Court. Again, even then, there is no guarantee that the US party would win. U.S. companies are urged to do their due diligence when choosing a potential Korean partner to avoid legal disputes and hefty legal fees.
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