KIPO

Requirements for trademark registration

Personal requirements (Persons Entitled to Registration of Trademark)

Any person (legal equity, individual, joint manager) who uses or intends to use a trademark in the Republic of Korea may obtain registration of his/her trademark.

All Koreans (including legal equity) are eligible to own trademark rights. The eligibility of foreigners is subject to treaty and the principle of reciprocity.

Substantive requirements

Trademark registration requirements are classified into procedural requirements (i.e. application type) and substantive requirements (i.e. positive requirements, passive requirements) to ensure that the composition of the trademark itself has sufficient distinctiveness to distinguish it from other trademarks.

(1) Positive requirement

The most important function of a trademark is to distinguish one's goods from those of another. For registration, the trademark must have a distinctive feature that enables traders and consumers to distinguish the goods from others. Article 33(1) of the Trademark Act restricts registration of a trademark under the following cases:

1) Usual name of the goods

The mark indicates only the name of the goods, regarding specific goods, (e.g. snack goods - corn chip, confectionery - walnut cake, automobile - car)

2) Mark customarily used on the goods

The mark is customarily used on a specific kind of goods among businesses engaged in the same industry (e.g. confectionery - dry cake, alcohol - refined rice wine, textiles - Tex)

3) Mark describing the features of goods

• Origin mark: Indicates the origin of the goods (e.g. apple - Daegu, ramie fabric - Hansan, dried croaker - Yeonggwang)
• Quality mark: Indicates the quality and superiority of the goods (e.g. Low, Middle, High, Special, Super)
• Raw material mark: Indicates the name of raw materials used in the goods (e.g. suit - wool, necktie - silk)
• Performance mark: Indicates the effect or performance of the goods (e.g. TV - Hteck, copier - quick copy)
• Usage mark: Indicates the usage of the goods (e.g. bag - student, clothes - lady)
• Quantity mark: Two pairs, 100m, etc.
• Shape mark: Indicates the ordinary shape and size of the goods (e.g. small, large, capsule, slim)
• Production method, processing method, business method marks: Indicate how the goods are produced, processed, and used (e.g. farm produce - natural agricultural method, shoes - handmade, desk - fabricated)
• Time mark: Indicates when the goods are used (e.g. tire - all-weather; clothes - spring, summer, autumn, winter)

4) Conspicuous geographical name, an abbreviation, or a map

The mark consists solely of a sign indicating a conspicuous geographical name, its abbreviation or map (e.g. Mt. Geumgang; Mt. Baekdu; New York, etc.)

5) Common surname or name of legal entity

The mark indicates the surname of ordinary persons, or the name of legal entity/group, or a trade name (e.g. Lee, Kim, President, commercial company, association, Chancellor, etc.)

6) Simple and commonplace sign

The mark consists solely of a very simple and commonplace sign (e.g. 123, ONE, TWO, etc.)

7) Other marks without distinctiveness

Common slogans, catchwords, expressions used in greetings (e.g. Believe it or not, I can do it, www, etc.)

The necessity for distinctiveness is judged based on when the registration of a mark is concluded. In a combined mark, the distinctiveness is judged based on the whole of the constituents of the mark, and common traders or consumers related to the designated goods. If one does not have to consider the relation with the designated goods, it is judged by the common average recognition criteria.

"Mark indicated by a common method" refers to a mark which is represented with printed or italic-type Korean, Chinese, or Roman characters. "To consist solely" indicates that if a mark includes a common name, but it is part of the distinguishing mark, or it is absorbed in the distinguishing mark and constitutes a coordinated whole, the distinctiveness is wholly recognized, except in cases in which two or more technical marks are combined.

Even if a trademark falls under paragraphs c, d, e, or f from above, when, as a result of using the trademark before the application for registration, consumers are easily able to recognize the person whose goods are indicated by the trademark, the trademark may be registered (Article 33(2) of the Trademark Act). Also, notwithstanding marks that are subject to paragraph c (applied only to the origin) or d above, whenever the mark is used as a geographical indication on specific goods, a collective mark for a geographical indication may be registered for the designated goods that use the geographical indication (Article 33(3) of the Trademark Act).

(2) Passive requirement (denial of registration)

Even if a trademark has distinctiveness, when it grants an exclusive license, or when it infringes public good or another person's profit, the trademark registration needs to be excluded. The denial of registration is restrictively enumerated in Article 34 of the Trademark Act.

1) Any of the following trademarks, which is a national flag of a country, an insignia of an international organization, etc.

• Any trademark identical or similar to the national flag, the national emblem, the colors, medals, decorations or insignias of the Republic of Korea, or seals or signs used for supervision or certification by the Republic of Korea or public institutions;
• Any trademark identical or similar to any national flag of a country of the Union to the Paris Convention for the Protection of Industrial Property (hereinafter referred to as the "Paris Convention"), of a member of the World Trade Organization, or of a Contracting Party to the Trademark Law Treaty (hereafter in this paragraph, referred to as "countries of the Union, etc.");
• Any trademark identical or similar to the title, abbreviated title, or mark of the Red Cross, the International Olympic Committee, or a renowned international organization: Provided, That where such organization has applied for trademark registration of its title, abbreviated title, or mark, trademark registration may be obtained;
• Any trademark identical or similar to coats of arms, flags, medals, decorations or badges of the countries of the Union, etc. designated by the Commissioner of the Korean Intellectual Property Office after notification by the World Intellectual Property Organization pursuant to Article 6-3 of the Paris Convention, or titles, abbreviated titles, coats of arms, flags, medals, decorations or badges of inter-governmental international organizations which countries of the Union, etc. have joined: Provided, That where an inter-governmental international organization which the countries of the Union, etc. have joined applies for trademark registration of its title, abbreviated title, or mark, trademark registration may be obtained;
• Any trademark identical or similar to seals or signs used for supervision or certification by countries of the Union, etc. designated by the Commissioner of the Korean Intellectual Property Office after notification by the World Intellectual Property Organization pursuant to Article 6-3 of the Paris Convention or their public organizations, which is used for the goods identical or similar to those for which such seals or signs are used;

2) Any trademark which falsely indicates a relationship with a state, race, ethnic group, public organization, religion, or famous deceased person, or which slanders, insults, or is likely to defame any of them;

3) Any trademark identical or similar to a famous mark, which is a mark indicating nonprofit business or public service of a state, public organization, or any of its agencies and a non-profit corporation;

4) Any trademark whose meaning, content, etc. conveyed to consumers is likely to harm public order, such as being contrary to moral norms, the prevailing moral sense of ordinary people, where the trademark itself is used or the trademark is used for goods;

5) Any trademark consisting of a mark identical or similar to a medal, certificate of merit or decoration awarded at an exhibition held by or with the approval of the Government of the Republic of Korea or at an exhibition held by or with the approval of the government of a foreign country;

6) Any trademark containing the name, title, or trade name, portrait, signature, seal, literary name, stage name, pen name of a prominent person, or his/her abbreviated title;

7) Any trademark used for goods identical or similar to the designated goods, which is identical or similar to the registered trademark of another person (excluding any registered collective mark with geographical indication) based on first to file;

8) Any trademark used on goods recognized as identical to the designated goods, which is identical or similar to a registered collective mark with geographical indication of another person based on first to file;

9) Any trademark identical or similar to a trademark (excluding a geographical indication) widely recognized by consumers as indicating the goods of another person, which is used on goods identical or similar to the goods of another person;

10) Any trademark identical or similar to a geographical indication of another person widely recognized by consumers as indicating the goods of a specific region, which is used on goods recognized as identical to the goods using such geographical indication;

11) Any trademark likely to cause confusion with goods or business of another person remarkably recognized by consumers or to dilute their distinctiveness or reputation;

12) Any trademark which is likely to mislead consumers about the quality of goods or deceive consumers;

13) Any trademark which is identical or similar to a trademark (excluding a geographical indication) recognized as indicating the goods of a specific person by consumers in the Republic of Korea or overseas, which is used for unlawful purposes, such as unjust enrichment or inflicting loss on the specific person;

14) Any trademark which is identical or similar to a geographical indication recognized as indicating the goods of a specific region by customers in the Republic of Korea or overseas, which is used for unlawful purposes, such as unjust enrichment or inflicting loss on any legitimate users of such geographical indication;

15) Any trademark consisting solely of the three-dimensional shape, color, combination of colors, sound, or smell, which is essential (in cases of services, referring to cases essential for the use and purpose thereof) to secure the function of goods intended to obtain trademark registration or of the package of such goods;

16) Any trademark intended to be used on wine or distilled beverages, which consists of a geographical indication of the place of production of wine or distilled beverages or contains such geographical indication in a member of the World Trade Organization;

17) Any trademark which is identical or similar to the name of a variety registered pursuant to Article 109 of the Act on the Protection of New Varieties of Plants, which is used for goods identical or similar to the name of such variety;

18) Any trademark which is identical or similar to a geographical indication of another person registered pursuant to Article 32 of the Agricultural and Fishery Products Quality Control Act, which is used on goods recognized as identical to the goods using such geographical indication;

19) Any trademark which is identical or similar to a geographical indication of another person protected in accordance with a bilateral or multilateral free trade agreement which has come into effect, concluded by the Republic of Korea with a foreign country or foreign countries, or which consists of or contains such geographical indication, used on goods deemed identical to the goods using such geographical indication;

20) Any trademark for the registration of which an applicant applies on goods, which is identical or similar to such trademark, while he/she is aware that another person uses or intends to use the trademark through a contractual relationship, such as partnership or employment, or business transactional relationship, or any other relationship;

21) Any trademark for the registration of which any person who has or had a contractual relationship, such as partnership or employment, business contractual relationship, or any other relationship with a person who holds the right to the trademark registered, which is identical or similar to the trademark registered in a State party to the treaty, applies on goods by designating goods identical or similar to the goods on which the trademark is designated as the designated goods without the consent of the person who holds the right to the trademark.

Under Article 34(3) of the Trademark Act, if a trial for the cancellation of trademark registration is requested, and if any of the following subparagraphs occurs after the date of requesting the cancellation trial, the owner of the trademark rights and any person using the trademark may not obtain trademark registration for a trademark that is identical or similar to a registered trademark extinguished with respect to goods that are identical or similar to the designated goods of the extinguished registered trademark, unless three (3) years have elapsed since the day on which each of the following subparagraphs occurs:

1) Where the trademark right has been extinguished because the term has expired;

2) Where a person with the trademark rights abandons the trademark rights or some of the designated goods;

3) Where the trial decision on the cancellation of a trademark registration has been finalized.

• Last updated 30 SEPTEMBER 2016
• Trademark Examination Policy Division