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Trademarks

  • What is a trademark and what sorts of trademarks are there?

    A trademark can be any of the following:

    A. A mark that is used on the goods of a person who conducts business activities such as producing, processing, certifying or selling goods; the mark distinguishes that person's goods from the goods of others.

    B. A sign, a character, a figure, a three-dimensional shape or any combination of these.

    C. Other visually recognizable constructs.

    In a broad sense, there are several sorts of trademarks: namely service marks, collective marks and business emblems. A service mark is a mark used by a person who conducts a service business and
    distinguishes that person's service from the service of others. A collective mark is a mark intended to be used by a legal entity founded in association with either a person who conducts business activities such as producing, manufacturing, processing, certifying or selling goods or with a person who conducts a service business; members of the legal entity can use the mark for their goods and services. A business emblem is a mark that is used to indicate a nonprofit business

  • What's the difference between a trademark and a trade name? Can I register a trade name as a trademark?

    A trademark is used on goods to distinguish them from the goods of others, whereas a trade name is a name that manufacturers assign to a product or to a range of products. A trade name is a general business name. In contrast to a trademark, a trade name is not applied to actual goods.
    A trademark is protected by the Trademark Act; a trade name is protected by commercial law.

    You can register a trade name as your trademark but only if it satisfies all the requirements of trademark registration.

    Note, however, that trademark registrations that are well-known to the public can not be obtained.

  • If I register a trademark in Korea, does that mean the trademark is also protected in other countries?

    No. A trademark is effective only in the country where it is registered. If you wish to protect your trademark in another country, you need to register it in that country in accordance with its laws.

  • Can I register a trademark that is similar to another person's registered trademark?

    No. A trademark that is identical or similar to another person's registered trademark will not be approved for registration. According to paragraphs(1), (1)(vii), and (1)(viibis) of Article 7 of the Trademark Act, the following trademarks will not be approved for registration:

    (vii) 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;

    (viibis) trademarks that are identical or similar to another person's 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;

  • If I file an application for one type of trademark (say a service mark), can I convert the application to another type of trademark (such as a regular trademark)?
    And can my applications be divided into two or more applications?

    The answer to the first question is yes. If you file an application for trademark, you can convert the application to service mark. According to Article 19 of Trademark Act:

    (1) A person who has filed an application that falls under any of the following subparagraphs may convert the application into another type of application that falls under any of the following subparagraphs:

    (i) an application for trademark registration;
    (ii) an application for service mark registration; or
    (iii) an application for collective mark registration (excluding an application to register a collective mark for a geographical indication).

    (2) A person who has filed an application that falls under either of the following subparagraphs may convert the application into an application for trademark registration; however, this provision does not apply where an invalidation trial or cancellation trial is requested in relation to a registered trademark that served as the basis of an application to register the renewal of the term of a trademark right or an application for additional registration of designated goods, or where the registered trademark is extinguished as a result of an invalidation trial or cancellation trial:

    (i) an application to register the renewal of the term of a trademark right; or
    (ii) an application for additional registration of designated goods.

    The answer to the second question is also yes. If you file an application for trademark registration and designate two or more types of goods, you may divide your application into two or more applications, provided you do so within the amendment period specified in Articles 14 and 15 of Trademark Act.

    Article 14 Amendment before Decision of Publication of Application

    (1) Excluding the cases specified in Article 15, an applicant may amend a trademark or the list of designated goods in the application for trademark registration if the amendment does not cause a material change to the application.

    (2) An amendment under paragraph (1) of this Article may not be made after the transmittal of a certified copy of the examiner's decision to grant or refuse trademark registration (referred to as "a decision to grant or refuse trademark registration"). However, where a trial against a decision of refusal is requested under Article 70bis, an amendment may be made within thirty days of the request, or within the period in which the written opinion is to be submitted under Articles 23(2), 45(2), 46quater(2) or 48(2), which apply under Article 81.

    Article 15 Amendment after Decision of Publication of Application

    Within the period set forth under any of the following conditions, an applicant may amend or correct designated goods or a specimen, or both, in response to reasons for refusal reasons for opposition, reasons for a decision to refuse trademark registration, or a decision to refuse supplementary registration of the designated goods as long as the subject matter is not materially changed when a rejection notice is served under Article 23(2) or Article 48(2) after the certified copy of the decision on publication of the application under Article 24 is delivered, when an opposition to the trademark registration is brought under Article 25, or when an appeal against a decision of refusal under Article 70(2) is requested against a decision to refuse trademark registration under Article 23(1) or a decision to refuse a supplementary registration of designated goods under Article 48(1):

    (i) the period designated for submitting arguments under Article 23(2) or 48(2);
    (ii) the period designated for submitting a written answer under Article 27(1); or
    (iii) thirty days after the date of the request for a trial against the decision of refusal under Article 70bis.

    Note that you will need to amend the original application when you file a divisional application.

  • What are the requirements for claiming the right of priority when filing a trademark application?

    The Trademark Act does not allow for the right of priority for a trademark application in Korea. However, you can claim the right of priority if the right is recognized in a treaty. For more details see Article 20 of the Trademark Act. To claim the right of priority, you should submit a written statement certified by the government of the country where the earlier application was filed indicating the filing date of the earlier application, the trademark, and the list of designated goods to the Korean Intellectual Property Office within three months of the filing date of the application for trademark registration.

    Article 20 of Trademark Act

    (1) If a national of a country who is required to recognize a right of priority for an application for trademark registration filed by a national of the Republic of Korea under a treaty or similar instrument (referred to as "a treaty") claims a right of priority for the application for trademark registration in the Republic of Korea based on the earlier application for the trademark registration filed in the national's country or in a country recognized in the treaty, the filing date of the earlier application in the foreign country is deemed under Article 8 of this Act to be the filing date in the Republic of Korea. Where a national of the Republic of Korea files an application for trademark registration in a country that recognizes, under a treaty, the right of priority for applications for trademark registration filed by nationals of the Republic of Korea, and claims the right of priority for an application for trademark registration in the Republic of Korea based on the earlier application for the trademark registration filed in that country, this provision does also apply.

    (4) A person claiming the right of priority under paragraph (3) of this Article shall submit to the Commissioner of the Korean Intellectual Property Office, within three months of the filing date of the application for trademark registration, a written statement certified by the government of the country where the earlier application was filed setting forth the filing date of the earlier application, the trademark and the list of designated goods.

    (5) Where a person claiming the right of priority under paragraph (3) of this Article fails to submit the certified copy within the period prescribed under paragraph (4) of this Article, the claim to the right of priority is invalidated.

  • How can I oppose the registration of a trademark after the application for that trademark has been published in the official trademark gazette?

    When a trademark application has been published in the official trademark gazette, you have a period of two months from the publication date to submit a written opposition and any supporting evidence to the Korean Intellectual Property Office.

  • Where can I check the classification of goods?

    You can check the classification of goods on our Web site or the WIPO Web site.
    KIPO: https://www.kipo.go.kr/kpo/HtmlApp?c=31064&catmenu=m06_07_03_01&version=11
    WIPO : http://www.wipo.int/classifications/nivilo/

    Note that if you filed your application after January 1, 2007, you can check the classification of goods in the Ninth Edition of the Nice Agreement. However, if you filed your application before 2007, you should check the classification of goods in the Eighth Edition of the Nice Agreement.

  • My trademark application was approved as a multiple-class application. Can I abandon some of the designated goods?

    Yes. When you pay the registration fees, you may abandon some of the designated goods.
    Simply submit Form 12 with the receipt for the registration fees and specify which designated goods you wish to abandon. Don't forget to check the abandonment box on Form 12.
    For more details see Article 34bis of the Trademark Act.

    Article 34bis of the Trademark Act.

    Abandoning Some or All Designated Goods When Paying Trademark Registration Fees

    (1) Where a person receives a decision granting registration of a trademark application with more than two designated goods, or receives a decision granting supplementary registration of designated goods in an application for supplementary registration of the designated goods, or receives a decision granting renewal of the term of a registered trademark, the person may abandon the designated goods in part after paying the trademark registration fees.

    (2) Matters necessary for the abandonment of designated goods under paragraph (1) of this Article are prescribed by ordinance of the Ministry of Commerce, Industry and Energy.

  • What's the difference between a domain name and a trademark?

    A domain name is an alphanumeric Internet address, whereas a trademark is a mark used by manufacturers to identify their goods. Domain names and trademarks have different purposes and functions. However, due to the gradual increase in online markets and the online trading of goods and services, a domain name can be used to indicate the character and origin of goods. As a result, domain names and trademarks sometimes conflict with each other.

  • Can a domain name be registered as a trademark?

    Yes. A domain name can be registered as a trademark if it satisfies the requirements of Articles 6 and 7 of the Trademark Act. Note, however, that the "www" and ".com" components of a domain name are ignored in a trademark examination.

  • If my trademark is registered, can I get an automatic right of priority for a domain name?

    No. There's no automatic priority right for a domain name because trademarks and domain names are handled by different agencies. Our office handles trademarks. However, if you wish to register your trademark as a domain name, you should file an application with the relevant domain name agency.

  • Does the similarity between a domain name and a registered trademark imply that an infringement has occurred?

    In some cases, the registration of a domain name can infringe a trademark or service mark.
    Even if a domain name has been legally, the act of using a domain name that is identical to another person's registered trademark on goods that are similar to the designated goods makes the origin of the goods difficult to identify and is considered to be an infringement.
    The Unfair Competition Prevention and Trade Secret Protection Act stipulates that if you use a domain name that is the same or similar to a well-known registered trademark or registered service mark, or if you use it when you do not have the right to do so, you may be considered to have committed an act of unfair competition.

  • How long is the application process for international trademarks under the Madrid Protocol?

    If there are no grounds for refusal, the application is usually published within 14 months. If there are still no grounds for refusal after the publication, a decision to approve registration is usually made within 18 months.

  • If I receive a notification of provisional refusal for my application for an international trademark under the Madrid Protocol, how much time do I have to submit a written response to the notification?

    If you receive a notification of provisional refusal for your international trademark application, you have a period of two months from the notification date to submit a written response. However, if you miss the deadline, you can request a one-month extension up to two times.
    For example, if the deadline is June 30, you can get an extension to July 30. If you miss that deadline, you can get one more extension to August 30 which will be the final deadline.

  • Can anyone file an opposition against an application for an international trademark under the Madrid Protocol?

    Yes. Under the Trademark Act, anyone can file an opposition against an application for an international trademark under the Madrid Protocol. However, the opposition must be filed within two months of the publication date of the application

  • What steps are involved in the international registration of a trademark?

    There are three steps for the international registration of a trademark:

    1. The applicant files an application for international registration at the office of origin (which, for Korean residents, is KIPO).

    2. The office of origin checks whether the application complies with the basic requirements. If so, the application details are recorded in a register and details of the international publication are sent to the International Bureau.
    After the publication of the international registration application, the International Bureau notifies the designated offices of the results.

    3. Each designated office then has 18 months from receiving the notification of results from the International Bureau to examine the application in accordance with its own procedures and, do one of the following: if there are grounds for refusal, it sends the applicant a notification of ex officio provisional refusal; and if there are no grounds for refusal, it approves the registration of the international trademark.

  • Last updated 13 August 2020
  • International Cooperation Division
    (Trademark Examination Policy Division)