KIPO

Trademark right

Term of a trademark right

The term of a trademark right commences at the time of registration and ends after ten (10) years. However, the term may be extended every ten (10) years through an application for renewal. As long as the trademark rights are in use, they are considered semi-permanent.

To renew the term of registered trademark rights, an applicant shall file an application for renewal within one year before the expiration date. If the term has expired, the applicant may file an application to renew the term within six (6) months of the expiration date. In this case, the applicant shall pay a required negligence fine.

Extinguishment of a trademark right

Trademark rights will be extinguished as a result of the following reasons: the term of the trademark right expires as a result of the owner's failure to renew the term; the owner abandons the trademark rights at his/her will; or the owner fails to apply for registration of the reclassification of goods within the given period for goods registered under the previous classification of Korean goods. In the case of the passing of the original owner of the trademark rights, if an application to transfer the registered trademark rights is not filed by a successor in title within three (3) years of the death of the original owner of the trademark, the trademark rights are extinguished on the day after the expiry of the three-year period following the death of the original trademark owner.

Application to register the reclassification of goods

A trademark rights owner who has obtained trademark registration, a supplementary registration of designated goods or a registration for renewal of the term of a registered trademark for designated goods in accordance with the Korean Classification of Goods before March 1, 1998, shall reclassify the designated goods under the Classification of Goods (NICE Classification) as prescribed by the Ordinance of the Ministry of Trade, Industry and Energy.

An application to register the renewal of the term of a registered trademark and an application to register the reclassification of goods may be filed through one application. If an applicant fails to register the reclassification of goods within the given period, the trademark rights for the designated goods to be reclassified shall extinguish on the expiration date of the given period.

An application to register the reclassification of goods must be filed within one (1) year before the date on which the term of the trademark right expires and no later than six months after the expiration date of the term.

Transfer of a trademark right

The transfer of a trademark right replaces only the trademark right owner, keeping the content of the trademark right intact. Since trademark rights are intangible property rights, they need to be freely transferrable like common property rights. However, the transfer of trademark rights may be restricted if necessary to protect the owner's profit as outlined in the Trademark Act.

Generally, a trademark right may be freely sold or donated without reference to business, and divided by each of its designated goods.

Trademark license system

1) Exclusive License

Generally, a trademark right may be freely sold or donated without reference to business, and divided by each of its designated goods.

Accordingly, the licensee is entitled to seek prevention or injunction against other persons using a trademark identical or similar to the licensed trademark. The licensee may also transfer the exclusive license, or grant nonexclusive rights to others with the consent of the trademark rights owner.

An exclusive license has no effect on third parties unless it is registered and transferred (registration is a preferential right against third parties). An exclusive licensee shall specify his/her name or title to goods which use a registered trademark.

2) Nonexclusive License

A trademark rights owner or an exclusive licensee may grant a nonexclusive license for the use of his/her trademark rights to others. The nonexclusive licensee is entitled to use the registered trademark regarding the designated goods as outlined in the license agreement. The nonexclusive licensee may transfer his/her rights to others with the consent of the trademark rights owner or the exclusive licensee.

In addition, since a nonexclusive licensee is only entitled to use a registered trademark for the designated goods, he/she has no injunction rights against infringement. Only a trademark rights owner or an exclusive licensee is entitled to seek injunction against infringement.

A nonexclusive license has no effect on third parties unless it is registered and transferred (registration is a preferential right against third parties). A nonexclusive licensee shall specify his/her name or title to goods which use a registered trademark.

• Last updated 30 SEPTEMBER 2016
• Trademark Examination Policy Division