Patent Firm SODAM is dedicated to providing expert services across the full range of intellectual Property law in Korea and worldwide. We advise on the protection and enforcement of
intellectual property rights, Including; patents, utility models, trade-marks,
designs and copyrights.
The firm’s expertise includes a variety of diverse technologies, including multimedia-related devices; semiconductor-Related devices, such as memory devices and circuits; optical and electro-optical systems and devices; liquid crystal Display(LCD) technologies; computer hardware and software technologies;
scientific, Medical and biological instruments; imaging system; automotive technology.
Overview
Trademarks are 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. Although the Trademark Act does not protect unregistered marks, it does provide protection of well-known or famous marks by restricting the registration of 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 action may be pursued under the Unfair Competition Prevention Act.
The Korean Trademark Law is characterized by :
- i) First-to-File Rule;
- ii) Substantive Examination;
iii) Opposition
Before filing a
trademark application, we check and review the possibility of registration and,
if the results are unusual, report it to the customer at no cost.
Filing Application
(1) Applicant
Anyone who wishes
to use or use a trademark in the Republic of Korea may file a trademark
registration application. Although the Korean Trademark Law has adopted a
registration system, the applicant must have intent to use his trademark in
Korea. Nevertheless, unused trademarks must be registered. However, if you do
not use the trademark more than three years after registration, the trademark
may be canceled.
(2) Necessary documents
When filing a trademark application, the following documents must be submitted to the Korea International Trade Association.
(A) the name and address of the applicant (including the name of the officer if the applicant is a legal entity); brand; Designated objects and their classes; Date of submission; If there is a priority claim, the country and filing date of the priority application.
(B) 10 specimens of a trademark (8 cm x 8 cm or smaller);
(C) a priority document in the case of a priority claim; and
(D) Mandate if required.
Only filing (a)
must be submitted when filing a trademark application. The name of the
enforcement officer of the applicant may be added to the applicant’s own
initiative at a later date or in response to a modification notice issued by
KIPO.
If the applicant fails to submit a trademark or a sample of proxy at the time of filing of the
trademark application, the Patent Office shall issue an amendment notice to the
applicant with the time limit specified. Priority documents must be submitted
within three months from the filing date of the Korean trademark. This time
limit can not be extended.
(3) Designation of goods: Nice classification
Any person who wishes to submit a trademark application must designate the goods / services for which the trademark is to be used in accordance with the Nice
classification of the goods or services for trademark registration purposes.
The Republic of Korea adopted Nice Classification on March 1, 1998.
Depending on the Nice classification, you may submit a trademark application for trademark
registration for products with multiple grades. In this case, the applicant
must pay an additional fee for each category.
(4) Priority claim
Priority may be claimed in the applicant’s trademark application under the Paris Convention, or between two concerned governments or mutual agreement. In order to enjoy the
priority, the application must be submitted to the Republic of Korea within six
months from the priority application date. Priority documents must be submitted
to the Korea Information Security Agency within 3 months of the application
date.
Formal Examination
The application will be returned to the submitter without an application number and will be
deemed never to have been submitted in the following cases:
(1) the type of application is not clear;
(2) the name or address of the person (or legal person) who takes the procedure (ie, the
applicant) is not described;
(3) the application is not made in Korean;
(4) a sample of the trademark is not attached to the application form;
(5) the specified goods are not listed on the application form; or
(6) a person who does not have an address or location in the Republic of Korea submits an
application without passing through the Republic of Korea’s patent agent;
If the application satisfies these requirements, the Patent Office shall grant the application
number and examine the format requirements of the trademark law. If found to be
missing or lost, the Commissioner of the Korean Intellectual Property Office
shall issue an amendment notice with the deadline set by the applicant. If the
applicant does not comply with the revision request, the trademark application
will be invalidated.
Substantive Examination
(1) the start of Examination
Unlike patent or utility model applications, trademark applications are automatically screened in the order of application. However, pursuant to Article 53 (2) of the
Trademark Act, the Commissioner of the Korean Intellectual Property Office may
grant priority to trademark applications that satisfy certain requirements.
Trademark applications usually take about five months from the filing date.
(2) Registration requirements
To register a trademark under the Trademark Act, you must meet the following requirements:
(A) belong to the definition of a trademark specified in the Trademark Act;
(B) it has a different meaning when used as an indication of goods or when the product is
not essentially conspicuous.
(C) they do not belong to a trademark category that can not be registered as prescribed by the Trademark Act.
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