The following grounds make it possible for a registration to be cancelled: Yes. - representation of a trademark; Understand your clients strategies and the most pressing issues they are facing. Business emblem(42) What are the primary bases of such challenges, and what are the procedures? It is permissible to use the protection term is 10 years from the date of registration. KR is a signatory to the Berne Convention. However, since the parties usually have different arguments regarding intellectual property infringement issues, most of the cases go to trial rather than arbitration proceedings. Discovery, as in the US legal system, is not allowed in Korea. In the case of a regular, non-expedited examination, attorneys fees from the filing of a trademark application through registration in one class range from US$800 to US$1,000, assuming no preliminary rejection is issued and no opposition filing is made. What are the benefits and risks? How long does it typically take, and how much does it typically cost, to obtain a trademark registration? If the request for expedited examination is granted, the application will be examined within one to two weeks therefrom, and the decision on the registration will be issued within one to two months following KIPOs review. when the requested documents were prepared for the advantage over the requesting party or discloses a legal relationship between the requesting party and the requested party (eg, commercial books and agreements). The opposition period for a Korean trademark application is 2 months from the date of publication. If registration is granted without use, is there a time by which use must begin either to maintain the registration or to defeat a third-party challenge on grounds of non-use? What will be the renewal date of my trademark? What documentation is needed to file a trademark application? WebSouth Korea trademark registration services. a sign, letter, figure, three-dimensional shape or combination thereof, and a combination of colours used with respect thereto; any colour that is not combined with other items, combination of colours, holograms, motion or other item that can be visually recognised (effective from 15 March 2012); and. The next generation search tool for finding the right lawyer for you. What are the benefits of using and the risks of not using such words or symbols? There are several ways to establish the trademark rights without registration as discussed below: Korea is a first-to-file or registration-based jurisdiction. South Korea - Trade Agreements What is the typical range of costs associated with a third-party opposition or cancellation proceeding? Trademark < SEARCH - KIPRIS March 16, 2023. After an investigation, the police file a report with their opinion on whether to bring an indictment against the accused to the Prosecutors Office, which thereafter will decide whether to commence prosecution in court. What protection is provided? There is neither a specialised court for trademark cases in enforcement cases nor specific procedural provisions related to trademark enforcement in criminal law. The relevant authority for the protection of trademarks online and domain names is the Korean Court. 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. 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. 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. In an action for damages such as to establish infringement or dilution, a trademark owner has the burden of proving the basis and the amount of damages. 5 CHAPTER V TRADEMARK RIGHT trademarks that otherwise might not be understood by consumers as indicating the goods of a certain owner. Are security interests recognised and what form must they take? The plaintiff may also seek a preliminary injunction to prevent infringement. As the number of lawsuits involving foreign parties has been ever increased in Korean courts each year, there has been a subsequent rise in need to establish an international tribunal that would implement the hub court in resolving international patent disputes. The official language of a trademark application in Korea is Korean. If KIPO accepts the mark, it will then be published for opposition in the Korean Trademark Gazette for two months. Under Korean law, a plaintiff can recover the full amount of the fee paid to the court and a part of the attorneys fees, which is usually up to 10 per cent of the amount of the damages awarded as compensation for infringement. Direct applications are required to be in Korean. Korea What words or symbols can be used to indicate trademark use or registration? PSES is aimed at some short-term life cycle products. WebWhat are the types of trademark that can be registered in South Korea? In addition, its national IP office, Korean Intellectual Property Office (KIPO), participates in various worksharing and other cooperative programs with the USPTO. Brief summary is based on the information provided byJEONG, KIM & LEE IP LAW FIRMon 16.03.2023 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. If you would like to learn how Lexology can drive your content marketing strategy forward, please email [emailprotected]. The 30-day period may be extended once for an additional 30 days. The relevant authority is the Korean Intellectual Property Office (KIPO). Are trademark searches available or required before filing? Upon registration of a trademark, the owner has the exclusive right to use the mark on or in connection with the designated goods and services. What criminal remedies exist? The Korean Trademark Act does not recognise punitive damages. Which international trademark agreements has your jurisdiction signed? The language of the response is Korean. Thus, the exclusive licensee can also claim trademark infringement and seek damages even if its licence has not been recorded. Exclusive South Korea Trademark Search - FREE Database - EASY Rejected South Korea Trademark In view of this decision, the Seoul High Court concluded that the infringer had bad-faith intent in manufacturing a considerably large amount of counterfeit bags by leasing a large factory of approximately 661m2. In additional to the legal benefits, the registration and use of the trademark in local characters can also have commercial benefits. 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. The symbol can be used for both registered and unregistered marks, including the marks for which applications are pending. IP policy events. Are there any benefits from a pre-filing use of the trademark? 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. SR. Please also refer to the State Departments Investment Climate Statements (ICS), which include information on the protection and enforcement of intellectual property rights in Korea. South Korea - Intellectual Property Protection Country Commercial Guides South Korea - Intellectual Property Protection Intellectual Property Protection Provides advice on IPR protection, including information In this case, having an Intellectual Property lawyer/expert in the chosen country is advised. 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. Does proof of use have to be submitted? Provides advice on IPR protection, including information on the registration of patents and trademarks. The complaint of a trial (not preliminary injunction proceeding) is filed with the district court. 1. Can trademarks be protected under other IP rights? Ended Once my trademark has been registered, for how many years will be valid? 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. As for damages actions, the average time period from complaint to first instance district court judgment is 10 to 12 months. A trademark owner is also entitled to monetary damages from anyone who infringes upon its mark in respect of identical or similar goods. Together with an injunction, the plaintiff may seek an order for destruction of the infringing goods and removal of the facilities used to commit the infringement, as well as other measures necessary to prevent the infringement. Electronic filing is also available. Is it legal to use my trademark even if it is not yet registered? Design - To protect the appearance, shape or configuration of your product, you can apply for a design right directly with KIPO. Published Must the security interest be recorded for purposes of its validity or enforceability? South Korea: More emphasis on visual comparison in trademark similarity Sponsored by Min Son November 17, 2021 Min Son of Hanol IP & Law looks at the changing trend of how courts are determining the similarity of trademarks in South Korea Koreas data privacy regulator issues draft rules to flesh out impending changes to data protection framework, Korea passes extensive amendments to data privacy law, Revisions to the electronic financial transactions act approved by the national policy committee, How-to guide: Understanding the Bribery Act 2010 offences (UK), How-to guide: Understanding the Competition Act 1998 prohibitions (UK), How-to guide: Overview of US employment law (USA). In addition to a defence before the courts, an alleged infringer may file a petition for invalidation or cancellation of registration as a separate proceeding before the IPTAB as a counter action. However, in the event the registered mark becomes subject to cancellation on grounds of non-use, the trademark registrant must be able to prove use of the trademark in the three years preceding the filing of the cancellation action. In addition, the trademark owner may seek both civil remedies (ie, injunctions, claim for damages and recovery of reputation, etc) and criminal remedies against infringers. You have rejected additional cookies. WebThe duration of the protection of a trademark right in South Korea is 10 years from the date of registration of the trademark, which may be renewed every 10 years. Thus, it will take longer if a preliminary rejection was issued or an opposition was filed. KIPO finds that AI The Little Mermaid 2023 Review: Its Not Better Down Where Its What protection is provided? However, a registered mark that has not been in use for three consecutive years may become vulnerable to cancellation based on non-use. Patent Litigation in South Korea: Overview Information to help you protect, manage and enforce your Intellectual Property (IP) rights inSouth Korea. It is possible to request an extension of time by additional 2 months. TheInternational Trade Administration,U.S. Department of Commerce, manages this global trade site to provide access to ITA information on promoting trade and investment, strengthening the competitiveness of U.S. industry, and ensuring fair trade and compliance with trade laws and agreements. South Korea The Korean Trademark Act provides that a trademark owner can use the registration symbol if the mark is registered in Korea. 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. The remedies for trademark infringement available under the Korean Trademark Act are outlined below. There are some cases which has no patent customer number among the registrants, so please refer to the search. If necessary, live testimony can be used only in respect of examination of trademark infringement disputes has been used. Intellectual Property Rights in the U.S.-South Korea Trade KR operates a first to file principle. Electronic filing is available and trademark searches are not required before filing. Usually, attorneys representing foreign clients charge an hourly rate of approximately US$300 to US$600. The plaintiff may seek an injunction against an infringing party (or a party that is highly likely to infringe the trademark right) that acts with or without negligence or wilfulness. For KR, registration is handled by the KCC. Actual use of the mark is not required to register a mark. South Korea Trademark Search & Registration the compared marks are not identical or confusingly similar; there is no similarity in compared goods or services; it used the mark on the basis of a licence agreement; the compared marks are both registered by KIPO and it used the mark on the basis of its trademark registration; the owner of the unregistered mark that was well known in Korea used the mark without engaging in any act of unfair competition before the other partys application was filed; the mark was used by parallel importation; the other partys registration is invalid; or, the destruction of the equipment used to manufacture the infringing items; and. Make an internationaltrade markapplicationand select Republic of Korea as a designated country. 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. Does proof of use have to be submitted? What type of The Nice Agreement on the International Classification of Goods and Services (the tenth edition) has been adopted by KIPO. WebFind out how to protect intellectual property in other countries. What is the web address of the trademark national office? 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. To report a market access barrier on IP in KR. What provisions are typically included in a licensing agreement (eg, quality control clauses)? U.S. Department of Commerce Online Search databases: Korean Trademarks, International Trademarks. It can be registered if the international organization is famous, The home country is a Paris Convention signatory, The home filing date does not exceed 6 months prior to the date of filing in South Korea, If the international registration can be based in South Korea, Mark is misleading, disparaging, deceptive, function, not distinctive, descriptive, or generic, Conflict with a company name (applicable only if the company is well-known), Registration under a different name (agent or representative) instead of the marks proprietor, Unauthorized use of national insignia and protected emblems, Unauthorized use of protected armorial bearing, state emblems or flags, Descriptive, not distinctive, misleading, disparaging, deceptive, functional, or generic marks, Right to challenge later conflicting applications, Right to appeal for the cancellation of a later conflicting registration, Right to file an infringement case against third parties that use a confusingly similar mark, Right to authorize and give license to third parties to use the mark, Right to appeal for the confiscation of fake goods bearing the mark, Right to receive payment from parties that infringed the mark, Right to file an infringement case against third parties that use the transliterated version of the mark, Right to object to applications that use the transliterated version of the mark. For designs, KR offers two examination routes, the Substantive Examination System (SES) and Partial- substantive Examination System (PSES). South Korean Trademark Comprehensive Study, State/country of incorporation of applicant, Use of names or flags or symbols of international organizations, states, regions and nations. WebContents 1 CHAPTER I GENERAL PROVISIONS 2 CHAPTER II REQUIREMENT SAND APPLICATION FOR TRADEMARK REGISTRATION 3 CHAPTER III EXAMINATION 4 CHAPTER IV TRADEMARK REGISTRATION FEE AND TRADEMARK REGISTRATION, ETC. When does registration formally come into effect? A trademark application in Korea must contain at least the following: The mark will be protected only in South Korea. No. a deed of abandonment signed by the registrant; or. Attorneys fees are different in each law firm. The language of the response is Korean. It is necessary to appoint a local representative for filing of the response. Are applications examined for potential conflicts with other trademarks? What are the primary bases of such challenges, and what are the procedures? U.S.-China chip war: Need to figure out how to play nice in the sandbox, investment officer says. 2. a trade mark agent) directly to KIPO. For trademarks that will be used for multiple classes of goods/services, a single application would suffice but multiple applications are also permitted. February 08, 2023 Bilateral Meeting Between the KIPO-WIPO Roundtable with Youth and Women-led February 10, 2023. For the renewal SUDAN. 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. Accordingly, if the owner of a registered mark indicates that the mark is registered in Korea, it would not need to prove that a person who infringed upon its trademark rights was intentionally engaged in trademark infringement. The term of a registered trademark in Korea is ten years from the date of registration, renewable an unlimited number of times every ten years. The web address of South Koreas national trademark office is available at: http://www.kipo.go.kr/. In particular, the owner of a trademark that is deemed to be famous only in a foreign country can prevent a third party from registering the identical or confusingly similar mark if the third partys application is filed in bad faith. The next generation search tool for finding the right lawyer for you. Select All 3 Use the Sort feature to reorder your results. Well send you a link to a feedback form. Are foreign registrations granted any rights of priority? 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. To obtain a preliminary injunction, the plaintiff must show irreparable harm because of the infringement; the court sometimes requires that a bond be posted. 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. For example: Border enforcement mechanisms will sometimes be of help to support a charge of infringement or dilution. Yes. Activities that take place outside Korea cannot support a legal charge of infringement or dilution in Korea because the scope of protection of a trademark is limited to the country where it has been registered. Geographical Indication Certification mark(48) Is there an appeal process if the application is denied? It cooperates with organizations that share mutual interest to promote optimal business environment and fairly represents the European business community. A lock ( A locked padlock ) or https:// means youve safely connected to the .gov website. Multiple class trademark applications are possible in South Korea. 1. As of 2004, the Madrid Protocol is also relevant to proceedings involving international applications. To apply for a trademark, the applicant must file for a trademark Official websites use .gov A 6-month grace period is available after the marks expiration date. Any person found to be in violation of this provision is subject to a fine of up to 20 million South Korean won or imprisonment of up to three years. Copyright 2001-. Does use of a trademark or service mark have to be claimed before registration is granted or issued? South Korea