Trademark Law [Lee & Associate]

(1) Trademark : A mark used on goods related to the business of a person who carries on business activities, such as producing, processing, certifying or selling such goods, to distinguish them from the goods of others. (Trademark Law, Article 2(1)(i))

(2) Service mark : A mark used by a person who carries on a service business to distinguish such business from those of others. (Trademark Law, Article 2(1)(ii))

(3) Collective mark : A mark intended to be used with respect to the goods or services of the members of a legal entity founded by and composed of persons who are in the same line of business, who are closely associated therewith and who are controlled by the legal entity. (Trademark Law, Article 2(1)(iii))

(4) Business emblem : A mark used by a person who carries on a nonprofit business to indicate his business. (Trademark Law, Article 2(1)(iv))

(1) What can be registered : A sign, a character, a figure, a three-dimensional shape and any combination thereof, and any combination of color with each of them may be registered as a trademark (a mark composed only of color is not registrable). (Trademark Law, Article 2)

(2) What cannot be registered and exceptions of such : The usual name of the goods; a mark used customarily on the goods; descriptive marks; conspicuous geographical name or an abbreviation thereof; commonplace surname or name; or very simple and commonplace signs may not be registered as a trademark. (Trademark Law, Article 6)
Nonetheless, even if a mark consists solely of a descriptive mark; a conspicuous geographical name or a commonplace surname or name; or a very simple and commonplace sign, where as a result of the use of such trademark prior to the application for registration therefor, consumers are able to recognize the goods bearing the mark as being connected with a particular person’s business, the mark may be registered as a trademark with the designated goods for which the trademark has been used. (Trademark Law, Article 6(2), as revised effective as from July 1, 2001)

Notwithstanding the general requirements for trademark registration are met, the following trademarks may not be registered for the sake of public or private interest: (Trademark Law Article 7).

(1) Trademarks which are identical with, or similar to, the national flag, the national emblem, colors, medals, decorations or badges of the Republic of Korea; the national flags or emblems of foreign nations; medals, decorations or badges of the countries party to the Paris Convention, World Trade Organization, and Trademark Law Treaty; the titles or marks of the Red Cross; Olympic or well-known international organizations; or those which are identical with, or similar to, seals or signs of the Republic of Korea; or those of the countries party to the Paris Convention, World Trade Organization, and Trademark Law Treaty; or those of the public organizations thereof, used for indicating supervision or certification (as revised effective as from July 1, 2001);

(2) Trademarks which falsely indicate a connection with any nation, race, ethnic group, public organization, religion or famous deceased person, or which criticize, insult or are liable to defame them;

(3) Trademarks which are identical with, or similar to, famous marks indicating a nonprofit business of a State, a public organization or agencies or public corporation thereof; or indicating nonprofit public services. However, this provision shall not apply where the State, public organization or agency or public corporation thereof, or the body of nonprofit public services, applies for the registration of such marks as their business emblems;

(4) Trademarks which are contrary to public order or morality;

(5) Trademarks comprising of a mark which is identical with, 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; however, this provision shall not apply where a person who has been awarded a medal, certificate of merit, or decoration has used it as a part of his trademark on the same goods for which such a medal, certificate of merit, or decoration was awarded at the exhibition;

(6) 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 thereof; however, this provision shall not apply where the consent of the person concerned has been obtained;

(7) Trademarks identical with, or similar to, another person’s registered trademark for which registration was applied for prior to the filing date of the trademark applications concerned and which are to be used on goods identical with, or similar to, the designated goods;

(8) Trademarks identical with, or similar to, another person’s trademark, where one year has not elapsed since the date of extinguishment of the trademark right (or since the date on which the trial decision became final and conclusive, in the case of a trial decision that a trademark registration was to be invalidated). And the trademarks are used on the designated goods covered by the trademark right or on similar goods;

(9) Trademarks which are identical with, or similar to, another person’s trademark which is well known among consumers as indicating the goods of that other person, or goods similar thereto, and which are used on goods that are identical with, or similar to, such goods;

(10) Trademarks which are liable to cause confusion with goods or services of another person because the trademark is recognized among consumers as designating the goods or services of that other person;

(11) Trademarks which are liable to mislead or deceive the consumers as to the quality of the goods;

(12) Trademarks which are identical with, or similar to, a trademark which is recognized as indicating the goods of a particular person by customers in or outside of the Republic of Korea, and which are used for unjust purposes of obtaining unjust profits or inflicting harm on a particular person, etc.;

(13) Trademarks consisting solely of three-dimensional shapes essential to secure the functions of the goods request trademark registration or their packaging; and

(14) Trademarks consisting of geographical indications or including such indications with regard to the origin of wines or spirits in a member state of the World Trade Organization, and if they are to be used in connection with wines, spirits, or other similar goods. (Trademark Law, Article 7)

(1) Applications filed on different dates : Where two or more applications for the registration of an identical or similar trademarks which are to be used on identical or similar goods are filed on different dates, only the applicant filing the application having the earliest filing date may obtain a registration for the trademark. (Trademark Law, Article 8 (1))

(2) Applications filed on the same date : Where two or more applications for the registration of an identical or similar trademarks which are to be used on identical or similar goods are filed on the same date, only one person agreed upon by all the applicants after consultation may obtain a registration for the trademark. If no agreement is reached or no consultation is possible, a registration of the trademark concerned may be obtained only by the applicant chosen by the drawing of lots conducted by the commissioner of the Korean Intellectual Property Office. (Trademark Law, Article 8 (2))

Any person desiring to file an application for the registration of a trademark, shall file an application for each trademark, designating one category or more of goods with respect to the categories of goods. If an application seeks registration for both goods and services at the same time, such an intent must be stated in the application. (Trademark Law, Article 10(1), as revised effective as from July 1, 2001)

(1) Scope of amendment : Before the decis7. Division of Application ion to publish an application, an amendment may be made within the scope of not changing the gist of the original application. After the decision is made to publish an application, an amendment may be made with respect to the matters indicated in the reasons for refusal, grounds for opposition, and the reason for ruling of refusal, within the scope of not changing the gist of the original application. (Trademark Law, Articles 13, 14 and 15)

(2) Period for amendment : An amendment before the decision to publish an application may be made before the transmittal of a certified copy of the examiner’s decision to publish an application, or within the period in which the written opinion is to be submitted to the examiner's notification of reasons for refusal, with respect to an application for trademark registration, an application for registration of renewal of term of trademark right, an application for registration of conversion of classification of goods and an application for supplementary registration of designated goods. However, in the case of a demand for trial against the ruling of refusal, an amendment may be made within thirty (30) days from the date of the demand.

(3) An amendment after the decision to publish an application may be made within the period in which the written opinion is to be submitted to the examiner's notification of reasons for refusal, with respect to an application for trademark registration, an application for supplementary registration of designated goods etc., which has been received after the transmittal of a certified copy of the decision to publish an application, or within the period for filing a written reply to an opposition, or in case of a demand for trial against the ruling of refusal, within thirty (30) days from the date of the demand. (Trademark Law, Articles 14 and 15)

(1) Division of application : Where an applicant has filed an application for the registration of a trademark indicating two or more goods as designated goods, the application may be divided into two or more applications. (Trademark Law, Article 18(1))

(2) Period for division : A division of application may be made within the time limit by which the application may be amended, supra.

An applicant may convert an application for the registration of a trademark into an application for the registration of a service mark and vice versa. (Trademark Law, Article 19(1)). However, an application may not be converted after the transmittal of the examiner’s decision or after affirmation of a trial decision with respect to the original application for the registration of a trademark or service mark, and conversion may not be made between applications for registration of a trademark, collective mark or business emblem. (Trademark Law, Article 19(3) (5))

(1) Term for claim to priority : A person intending to claim the right of priority based on the treaty shall file the application for registration of the design claiming the right of priority, within six (6) months from the filing date of the first application, which is the basis for claiming the right of priority. (Trademark Law, Article 20(1) (2)). Also, a person intending to claim priority must, at the time of filing, specify such claim, the name of the country in which the first application was filed, and the filing date of such application in the application for registration of the trademark. (Trademark Law, Article 20(3))

(2) Period for submitting priority claim documents : A person who has claimed a right of priority shall submit to the Commissioner of the Korean Intellectual Property Office a written statement setting forth the filing date of the application, a copy of the trademark and the list of designated goods, certified by the government of the country where the first application was filed, within three(3) months from the filing date of the application for registration of the trademark. (Trademark Law, Article 20 (4)). If such person fails to submit the priority documents within the required time limit, the claim to the right of priority shall lose its effect. (Trademark Law, Article 20 (5))

10. Decision of Granting a Trademark Registration and Notification of Reasons for Refusal

Ruling on registration of trademark and Notification of reasons for refusal are the same as the main principles of patent - vid. Patent Law - (Trademark Law, Article 23 (2) and 30)

(1) Publication of an application : Where an examiner finds no reason for rejecting an application for registration of a trademark , he or she shall render a decision that the application is to be published. (Trademark Law, Article 24)

(2) Opposition to trademark registration : Any person may file an opposition to the registration of a trademark, within thirty (30) days from the date of publication of an application for the registration of a trademark. (Trademark Law, Article 25)

(3) Grounds for opposition and submission of evidence : Any person who intends to file an opposition to the registration of a trademark shall submit the notice of opposition, giving the reasons therefore, and accompanied by the necessary evidence. (Trademark Law, Article 25 (2))

A trademark right shall come into force upon registration of its establishment. and the term of a trademark right shall be ten (10) years from the date of registration of its establishment, and may be renewed every ten (10) years upon application for registration of the renewal of its term. (Trademark Law, Articles 41 and 42). An application for the registration of the renewal of the term of a trademark right shall be filed within one year prior to the date of expiration of the term of the trademark right. A trademark registered with the designated goods by the old Korean classification of goods can be renewed for registration with the same classification of goods, but the old classification must be converted into the new revised classes through a separate registration procedure for the conversion of classification of goods. (Trademark Law, Articles 42(3), 45(1)(iv), and 46bis~penta, newly added effective as from July 1, 2001). In this way, trademark rights are deemed to be semi-perpetual under the system of renewal registration since they can be consecutively renewed every ten years.

A person who received the registration of establishment of a trademark right, supplementary registration for designated goods, and registration for renewal of the term of a trademark right with the old Korean classification of goods, must receive a registration of conversion of the designated goods into the new international classification of goods (by NICE agreement) by the regulations of the Ministry of Commerce, Industry and Energy. (Trademark Law, Article 46bis(1) (3), newly added)

The application for registration with new classification of goods shall be in the period of filed from one year before to six months after the expiration date of the term of the trademark right. If the application for registration of the conversion of the classification of goods is not made within this period, such trademark rights shall be extinguished as of the expiration date of said term. (Trademark Law, Article 64bis (1), newly added effective as from July 1, 2001)

The owner of a trademark right or an applicant for the registration of a trademark right may obtain supplementary registration of designated goods to be added to the designated goods of the registered trademark or to the application for the registration of a trademark. (Trademark Law, Article 47). However, to the trademark right based on an application for international trademark registration or an international registration, the above provision shall not apply. (Trademark Law, Article 86-33, to be newly added effective after acceding to Madrid Protocol in the later half of 2002)

15. License of Registered Trademark (exclusive, non-exclusive and statutory licenses)

(1) Exclusive and non-exclusive license are the same as the main principles of the license of patent invention. (vid. Patent Law). However, an exclusive license may not be granted for a business emblem or a collective mark right. (Trademark Law, Article 55 and 57)

(2) Statutory license : When a registered patent right filed prior to or on the same date of filing of an application for trademark registration comes in conflict with a three-dimensional trademark, there is a non-exclusive license within the scope of the original right according to this provision (except in the case of using the trademark for unfair competition) at the time of expiration of the term of said patent right (exclusive or non-exclusive right). The same provision applies at the time of expiration of the term of the utility model or design right. (Trademark Law, Article 57bis(1), (2) and (6), newly added effective as from July 1, 2001)

Civil remedies and criminal penalties are the same as the main Principles of Patent Infringement - vid. Patent Law - (Trademark Law, Articles 65, 67, 69 and 93, as revised effective as from July 1, 2001).

※ Demand for payment of compensation for damages : After the publication of an application, the applicant may warn a person who is using the trademark in application (warning is possible by presenting a copy of the application even before publication of the application). After the warning, the applicant may demand a payment of compensation for damages rising from the use of the trademark during a certain period of time until the time of registration of the establishment of the trademark right. However, the right to demand compensation as provided above shall be exercised only after registration of the establishment of a trademark right. (Trademark Law, Article 24bis, newly added effective to applications filed as from July 1, 2001)

(1) Types of trademark trials: There are trial against ruling of refusal, trial against decision to reject amendment, trial for invalidation of trademark registration, trial for invalidation of registration with conversion of classification of goods, trial for invalidation of registration of renewal of term of trademark right, trial for cancellation of trademark registration, trial for cancellation of registration of exclusive or non-exclusive license, trial to confirm scope of trademark right, retrial against a trial decision, and retrial on account of collusion. (Trademark Law, Articles 70bis, 70ter, 71, 72, 73, 74, 75, 83, and 84)

(2) The Instances of trademark trials are the same as the instances of Patent trials - vid. Patent Law - (Patent Law, Article. 132bis; Trademark Law, Article 86 (2) authorizing, mutatis mutandis, application of Patent Law Article 186(1) and (8))

18. International Application According to Madrid Protocol
(to come into effect after acceding to Madrid Protocol in the later half of 2002)