The Korean Commercial Arbitration Board and Korean Intellectual Property Arbitration Centre are active institutions that administer arbitration proceedings in respect of disputes related to intellectual property. For designs, KR offers two examination routes, the Substantive Examination System (SES) and Partial- substantive Examination System (PSES). Any designations used to identify and distinguish the source of the goods or services, such as words, signs, devices, symbols, logos, sounds, smells, 3D shapes, holograms, motions, colours and any combination thereof, may be registered as a trademark. If you would like to learn how Lexology can drive your content marketing strategy forward, please email [emailprotected]. The Company has now received the registration certificate from KIPO for the trademark The Unfair Competition Prevention and Trade Secrets Protection Act provides protection for rights owners in addition to the Acts covering each form of IP. a national flag, or an insignia of an international organisation, or which otherwise creates a false indication of association with a particular state, race, ethic group, religion, etc; a famous mark of a non-profit organisation or a public service; a collective mark bearing geographical indication; or. 2. In this regard, the most commonly cited grounds for opposition are that the mark being applied for is: How long does a registration remain in effect and what is required to maintain a registration? Is there any possibility to claim priority in South Korea? For background, link to our article on Protecting Intellectual Property and Stopfakes.gov for more resources. It entirely depends on the judges discretion as to the adoption of live testimony or such affidavits. What are the primary bases of such challenges, and what are the procedures? Mikyung (MK) Choe, Seung-Chan Eom and Seung Jun Ji explain. KW. a mark that is merely descriptive of the goods and services as associated therewith; a mark deemed to be composed only of simple and commonplace components; a mark that is identical or confusingly similar to a prior-registered mark; a mark that is identical or similar to another trademark that is well-known among consumers as indicating the goods of that other person or goods similar thereto; a mark that is likely to mislead or deceive consumers as to the nature or quality of the goods; and. As for damages actions, the average time period from complaint to first instance district court judgment is 10 to 12 months. Will there be problems in case I dont use my trademark after registration? What procedure does the trademark office follow when determining whether to grant a registration? SR. Layout Design In KR, a plane or cubic design of circuit elements and wires connecting the elements which is typically used for semiconductor integrated circuits, can be protected by registering for a layout design. In the case of issuance of a preliminary rejection or filing of an opposition, additional attorneys fees will be incurred to respond to such actions. under the Unfair Competition Prevention and Trade Secret Protection Act, unregistered marks that are famous or well known in Korea may be protected against misappropriation. Working with trademarks is a way for the Company to strengthen the products image and recognition. Atrade markis valid for ten years,thenmay be renewed indefinitely for further ten-year periods. It generally takes eight to 10 months from the filing of an application with KIPO until a registration is granted, assuming that no preliminary rejection was issued by KIPO and no opposition was filed by a third party. Under the Korean Trademark Act, a person who infringes upon another persons trademark rights wherein it is marked as a registered mark is deemed to have intentionally engaged in trademark infringement. Find out about the Energy Bills Support Scheme, International Trade MarkProtection GOV.UK, Unfair Competition Prevention and Trade Secrets Protection Act, The British Chamber of Commerce in Korea (BCCK), The European Chamber of Commerce in Koreas (ECCK). any other measures necessary to prevent future infringement. Below are specific examples of civil remedies that the trademark owner can seek: In a trademark infringement action for damages, the plaintiff has the burden of proving and quantifying its damages. a deed of abandonment signed by the registrant; or. Therefore, registration is granted even without use and no proof of use is required in principle. WebThe Trademark Act, last amended on April 23, 2019, is the primary law governing the mechanism of trademark registration and protection in South Korea. Applications are examined for potential conflicts with other trademarks and applicants can respond to rejections within the prescribed time period. South Korea is a signatory of the Madrid Protocol. Abandoned May a brand owner oppose a bad-faith application for its mark in a jurisdiction in which it does not have protection? Minji Ryan Kim August 20, 2020 Hyun-Sil Lee and Minji Ryan Kim of FirstLaw analyse changes to South Korean IP legislation and examine KIPOs plan to introduce K-discovery Early this year, the Korean Intellectual Property Office (KIPO) announced its primary objectives to accomplish in 2020. Any natural person or entity can file for an application to register a trademark in Korea, and actual use is not required. Review your content's performance and reach. This page provides practical information to help you make the most of your IP when doing business in The Republic of Korea, also referred to as South Korea. a mark that is identical or similar to another mark that is well known in or outside of Korea as indicating goods that is used for unlawful purposes, such as obtaining unjust profits or inflicting harm on the owner of the other mark. What documentation is needed to file a trademark application? It is necessary to appoint a local representative for filing of the response. Yes. A .gov website belongs to an official government organization in the United States. Secure .gov websites use HTTPS The procedural requirements in a civil action shall follow the Korean Civil Act. The World Intellectual Property Organisation (WIPO) also provides a range of services for businesses looking to protect their IP internationally, including arbitration and mediation of disputes. Please reselect the currency from the drop-down list: Please enter your e-mail to receive a quote for, Ask us a question about IP protection in South Korea, Fees associated with filing trademark application in South Korea as well as other trademark fees are. Copyright 2006 - 2023 Law Business Research. Under the Korean Trademark Act, an infringers negligence is presumed. WebSelect All Trademark(40) Service mark(41) Business emblem(42) Collective mark(43) Geographical Indication Collective mark(44) Trademark/Service mark(45) Certification What are the primary bases of such challenges, and what are the procedures? Trademark(40) Which international trademark agreements has your jurisdiction signed? APDF readeris available from Adobe Systems Incorporated. Does South Korea use the "Nice Classification" system? protection term is 10 years from the date of registration. If Korean customs decides that the infringement of a Korean trademark is obvious, the Korean customs authorities can seize any goods upon import or export. However, such protection does not extend to protection against third parties use of an identical or confusingly similar mark. WebIn South Korea, registration is compulsory in order to be granted rights to a trademark, as this jurisdiction is first-to-file. Service mark(41) May a licence be recorded against a mark in the jurisdiction? A certified copy of the Priority Document alongside the Korean translation should be submitted within 3 months from filing the trademark application in the Republic of Korea. Invalidated The web address of South Koreas national trademark office is available at: http://www.kipo.go.kr/. We also use cookies set by other sites to help us deliver content from their services. If you plan to do business in The Republic of Korea (KR),or if you are already tradingthere, it is essential to know how tomanageand enforce your IPasprivate property rights. The Seoul High Court ordered that a person who sold counterfeit Louis Vuitton bags in Korea pay 400 million South Korean won as compensation for damages. trademarks that otherwise might not be understood by consumers as indicating the goods of a certain owner. The two options above have their pros and cons. Web Stage 1: TRADEMARK SEARCH IN SOUTH KOREA Order Now! Brief summary is based on the information provided by. What discovery or disclosure devices are permitted for obtaining evidence from an adverse party, from third parties, or from parties outside the country? If I register my trademark in South Korea, do I have protection in other territories? Are there any benefits from a pre-filing use of the trademark? The home filing date can be accepted as the filing date in South Korea if: To satisfy the requirement, the mark must be used within 3 years from the date it was registered or within 3 years preceding the date when the petition to cancel was filed. Third-party opposition may be filed against a published application. A renewal application should be filed within 1 year before the expiration date. The Invention Day ceremony was held at the COEX Convention Center in Seoul on May 12th, 2022. Any mark that can be replicated graphically, capable of making a good/service distinguishable from others, and can be represented visually, is accepted for registration. If the trademark is registered only in its original version (Latin characters), the protection does not always properly protect its equivalent in the local language. Owners of a registered mark in this jurisdiction establish these rights: The opposition period starts on the date the application was published and ends two months after that date. 4 Refer to Help for difficult patent terms. However, since the parties usually have different arguments regarding intellectual property infringement issues, most of the cases go to trial rather than arbitration proceedings. Whereas the examination at the KIPO level was by a single examiner, the IPTAB panel comprises three examiners. However, if an unregistered trademark is widely used in Korea or elsewhere to the extent that goodwill is created therein and the mark has become well known in Korea, any mark that is identical or confusingly similar to such a well-known mark should not be granted registration, and is vulnerable to invalidation if it is registered. A trademark is defined in the Korean Trademark Act as any of the following, used on or in connection with goods or services for the purpose of distinguishing them from the goods or services of others: Also, under the amended Korean Trademark Act, effective from 15 March 2012, certification marks, which are used to certify a particular quality, origin, method of production or other characteristic of goods and services, can now be registered. This allows the customs offices to check and intercept infringing goods. KR operates a first to file principle. Upon examination, if the examiner does not identify any grounds for rejecting the trademark (or if any initial rejection is overcome by arguments or amendments), the examiner will approve the trademark for publication in the Korean Trademark Gazette. To report a market access barrier on IP in KR. Trademarks can be protected under designs and copyrights if they can meet the requirements of the Design Protection Act and the Copyright Act. The Supreme Court will hear appeals from a High Court on grounds of error in interpretation and other violations of the constitution. Registering your trademark in its original version, as well as local transliteration/translation, will provide a greater protection from any possible infringements. If so, must the foreign trademark be famous domestically? Copyright 2006 - 2023 Law Business Research. It is not necessary for the applicants to use the mark or to intend to use it before applying for registration. Well send you a link to a feedback form. SPAIN. GS. Brief summary is based on the information provided byJEONG, KIM & LEE IP LAW FIRMon 16.03.2023 The official language of a trademark application in Korea is Korean. SOUTH GEORGIA AND THE SOUTH SANDWICH ISLANDS. 2. identical or similar to anothers mark that is famous in or outside of South Korea as indicating the designated goods of such other person and is filed in bad faith, such as for unjust profits or to inflict harm on the owner of the other mark. WebName/. A famous foreign trademark is afforded protection even if it is not used domestically. Further, the mark can be renewed perpetually without any proof of use. In addition, as an administrative proceeding, it is possible for a trademark owner to file an application for custom seizure. While discounts are typically available on attorneys fees for filing multi-class applications, there is no discount on official fees for filing multi-class applications. However, there is no discount on official fees when filing multi-class applications. It is advised you think through the varying considerations such as the timings, cost and dependencies to suit your business. News stories, speeches, letters and notices, Reports, analysis and official statistics, Data, Freedom of Information releases and corporate reports. What procedures apply? Actual use of the mark is not required to register a mark. a declaration or deed of assignment signed by the assignor; a notarised corporate nationality certificate or notarised certificate of nationality from the assignor; and. As for attorneys fees, there is no legally binding standard in Korea. 13 Feb Procedure of Trademark in South Korea By Paul - AAA IPRIGHT South Korea 0 Comments Procedure of trademark in South Korea shall include the following steps: Step 1: Trademark Search in South Korea (Optional) Trademark search is not compulsory. Are foreign registrations granted any rights of priority? Multi-class applications are available in Korea as well. Find out more about Lexology or get in touch by visiting our About page. The renewal date is counted 10 years from the date the mark was registered. The average time frame for the registration approval is 16 months, if no objections or oppositions arise. U.S.-China chip war: Need to figure out how to play nice in the sandbox, investment officer says. An injunction may be sought at any time if an infringement or threat of infringement is ongoing. The next generation search tool for finding the right lawyer for you. Since Korea is a first-to-file jurisdiction, use of a trademark or service mark does not have to be claimed before registration is granted or issued. A trademark is defined in the Korean Trademark Act as any of the following, used on or in connection with goods or services for the purpose of distinguishing them External links to other Internet sites should not be construed as an endorsement of the views or privacy policies contained therein. If the mark cannot be clearly and completely presented, a description or a sample of the mark as used can be filed to precisely illustrate the scope of rights sought and to facilitate third-party recognition of the mark and the scope of rights. All Koreans (including legal equity) are eligible to own trademark rights. The Republic of Korea and the United States implemented the Korea-U.S. Free Trade Agreement on March 15, 2012 (amended in September 2018). May applicants respond to rejections by the trademark office? However, the amended law will now allow parties to submit briefs and evidences and make oral arguments in a foreign language under the consent of the parties. 1. KOREA (see Democratic People's Republic of Korea; Republic of Korea) KUWAIT. If KIPO accepts the mark, it will then be published for opposition in the Korean Trademark Gazette for two months. Usually, attorneys representing foreign clients charge an hourly rate of approximately US$300 to US$600. Dont include personal or financial information like your National Insurance number or credit card details. Also, multi-class applications are available in Korea. a trademark or geographical indication recognised by Korean consumers as indicating the goods of a specific person. Unless the relevant case is complicated or socially influential, the Prosecutors Office orders an investigation of the case to be conducted by the police. Is it legal to use my trademark even if it is not yet registered? The Korean Intellectual Property Office (KIPO) is the body responsible for operating the patent, utility model, layout designs, trade mark, and design rights system in KR. Any individual or company can register a trademark in Korea. To obtain a preliminary injunction, the plaintiff must show irreparable harm because of the infringement; the court sometimes requires that a bond be posted. a notarised corporate or individual nationality certificate of the registrant with KIPO. The UCPA provides additional means by which to protect a well-known but unregistered trademark from those seeking to misappropriate the goodwill associated therewith. criminal prosecution - some infringement actions may also constitute a criminal offense under KR law. If the number of the designated goods and services exceeds 20 items in any single international class, additional official fees of about 2,000 won will be charged per item in excess of 20 items, both when filing an application and again upon registration. Copyright(c) KOREAN INTELLECTUAL PROPERTY OFFICE. What border enforcement measures are available to halt the import and export of infringing goods? The next generation search tool for finding the right lawyer for you. The British Chamber of Commerce in Korea (BCCK) offers advice for visiting and resident British business-people and a chance to meet others through networking events. Korea is a party to various intellectual property (IP) treaties and a member state of the World Intellectual Property Organization (WIPO). Registered, Entire 5 CHAPTER V TRADEMARK RIGHT Intentional trademark infringements are subject to criminal penalties of not more than seven years or a fine of not more than 100 million South Korean won. The primary bases of opposition include the following: How long does a registration remain in effect and what is required to maintain a registration? Wed like to set additional cookies to understand how you use GOV.UK, remember your settings and improve government services. The arbitration decision has the same effects to the conflicting parties as a decision issued by the Korean courts and, thus, has binding power as a final decision to the parties. 2. the infringer had an intention to infringe upon the rights in the trademark, the Korean court could determine the foregoing circumstances as evidence of trademark infringement. How long does it typically take, and how much does it typically cost, to obtain a trademark registration? Country Commercial Guides South Korea - Intellectual Property Protection Intellectual Property Protection Provides advice on IPR protection, including information The Korean Trademark Act does not recognise punitive damages. What provisions are typically included in a licensing agreement (eg, quality control clauses)? All rights reserved Marcaria.com. The trademark owner or its exclusive licensee, or both, may obtain injunctions against persons using any mark that is identical or confusingly similar to the registered mark. A registered trademark is valid for an initial period of 10 years, which can be renewed perpetually without submission of use evidence. This site contains PDF documents. sounds and scents that are capable of visual representation by means of symbols, characters, figurative designs, etc (effective from 15 March 2012). Where infringement occurs, the owner of the registered trademark or its exclusive licensee may enforce its rights by filing a trademark infringement suit in a district court. protection term is for 20 years from the filling date. Upon ruling, the international tribunal will provide an officially translated English version of its decision. If a foreign trademark is famous domestically, its owner can prevent registration of the identical or confusingly similar mark by a third party and prevent others from using the identical or confusingly similar trademarks. Under the Trademark Act, use of the symbol on a non-registered trademark constitutes an act of false representation, which can carry a fine of up to 30 million won or up to three years of imprisonment. Any mark or packaging for goods that infringes upon a registered trademark and any machinery used in the production of such goods may be confiscated. Thus, the exclusive licensee can also claim trademark infringement and seek damages even if its licence has not been recorded. It is possible to request an extension of time by additional 2 months. The application will undergo both formal and substantive examinations, substantive examination includes a search for conflicting marks and distinctiveness examination. This term may be extended by a 6 month grace period after the renewal due date. WIPOs World Intellectual Property Indicators Report (WIPI) also showed that patent and industrial designs filing activity rebounded in 2020, illustrating the resilience of human innovation even amid the dire global health situation. a trade mark agent) directly to KIPO. Any natural person or entity can file for an application to Is there an appeal process if the application is denied? The Korean Trademark Act is the main legislation governing trademark applications, prosecutions and registrations in Korea. What is the typical range of costs associated with a third-party opposition or cancellation proceeding? How long does it typically take, and how much does it typically cost, to obtain a trademark registration? Attorneys fees are different in each law firm. - designated goods and class(es) of a trademark. You have {0} attepmts left. 1. Are trademark searches available or required before filing? Understand your clients strategies and the most pressing issues they are facing. As to experts, the court sometimes accepts opinion or affidavits, or both, when they want to determine the important facts. A number of South Koreas main intellectual IP policy events. Is it legal to use my trademark even if it is not yet registered? WebA trademark application in Korea must contain at least the following: - representation of a trademark; - applicant's details; - designated goods and class (es) of a trademark. It is legal to use an unregistered mark for any good or service. The complaint of a trial (not preliminary injunction proceeding) is filed with the district court. Are security interests recognised and what form must they take? Official fees for granting should be paid within 2 months from the date when Notice of Allowance was received. Are there specialised courts or other tribunals? What defences are available to a charge of infringement or dilution, or any related action? Application Procedure for Patents and Utility Models. State Departments Investment Climate Statements (ICS), For more information, contact ITAs Office of Standards and Intellectual Property Rights (OSIP) Director, Stevan Mitchell at, For information about patent, trademark, or copyright issues including enforcement issues in the United States and other countries call the STOP! Apply yourself or through a representative (e.g. What documentation is needed to file a trademark application? Thus, it will take longer if a preliminary rejection was issued or an opposition was filed. Is a famous foreign trademark afforded protection even if not used domestically? A trademark application will not be registered, if the trademarks are: Can trademark rights be established without registration? A party that is not satisfied with the district courts decision may appeal to the competent High Court, whose decision may subsequently be appealed to the Supreme Court on limited grounds. What proof is required? It is necessary to appoint a local representative for filing of the response. Become your target audiences go-to resource for todays hottest topics. Does proof of use have to be submitted? Within three months of receipt of a notice of final rejection, the applicant can file an appeal with the Intellectual Property Tribunal Appeal Board (IPTAB) within KIPO. Electronic filing is available and trademark searches are not required before filing. Trademark applications and registrations with or without goodwill, and either with or without other business assets can be assigned by submitting the required documents to the KIPO. The owner of a trademark may go to court to obtain an injunction against any person who is infringing or is likely to infringe its trademark, and require such person to cease and desist any infringement. You can register or make a recordal of - your marks with the Korean Customs Service. The actors are wonderfuland, in the case of Bailey and Hauer-King, quite magneticand the story is one of the canons most magical. If so, must the foreign trademark be famous domestically? If a mark that has been used without registration and has become well-known in Korea conflicts with a prior-registered trademark, the owner of the unregistered mark can obtain the right to continue to use such mark in the case where the owner has used the unregistered mark without engaging in any act of unfair competition before the other partys application was filed.