The trial system for IPR-related disputes is a three instance procedure which consists of the Intellectual Property Trial and Appeal Board (IPTAB), the Patent Court and the Supreme Court. The aim of these institutions is to promote and strengthen the protection of IPRs while guaranteeing fair and prompt settlements of IPR-related disputes. More detailed explanations on the IPTAB and the trial system/procedures can be found below:

Overview of the IPTAB

The IPTAB was established following the merger of the former Trial Board and Appellate Trial Board. In concurrence with the establishment of the Patent Court, the IPTAB commenced its operations on March 1, 1998. The IPTAB is a quasi-judicial body of Korean Intellectual Property Office (KIPO), which serves as the court of first instance for intellectual property-related dispute resolution, and is independently operated within KIPO.

Since its inauguration, the IPTAB has increased the number of administrative patent judges, strengthened oral hearings, and focused on enhancing administrative patent judges' expertise, fairness, and efficiency of trials and appeals.

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Organization of the IPTAB

The IPTAB consists of 36 Boards, a trial policy division and a litigation division. Each Board consists of 1 presiding administrative judge and 2 administrative judges, who are in charge of conducting a trial/appeal case. Meanwhile, the trial policy division is responsible for receiving documents, conducting a formality examination, trial quality evaluation, etc., and the litigation division is responsible for litigation proceedings for cases in which the Commissioner of the KIPO is the defendant.

As mentioned above, the 36 trial boards consist of 3 administrative judges each, including the presiding administrative judge. Each board makes decisions by a majority vote among the panel of three administrative judges. For matters of grave concern which is considered legally and technically significant, a panel of five administrative judges, including the President of the IPTAB, will hear a case and make a decision.

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Trademark & Design Trial and Appeal System

Significance of a Trademark & Design Trial and Appeal System

A 'trademark & design trial and appeal' refers to a procedure in which the IPTAB makes an administrative judgment for the settlement of IP-related disputes or dissatisfaction with the rejection of a trademark & design application, etc. In practice, the IPTAB makes first-instance decisions in the three-instance litigation system. Only after receiving a decision from the IPTAB can an applicant/agent appeal to the higher courts, that are, the Patent Court and the Supreme Court.

Structure of the Patent-related Disputes Trial System)

Types of Trials and Appeals
1. Ex Parte Cases

<Trademark>

Appeal against Examiners' Decision to Reject Trademark Application (Trademark Act Article 116)

Where a person receives a decision to reject trademark registration, decision to reject registration of additional designated goods or decision to reject registration of the conversion of the classification of goods, he/she may request an appeal within 30 days from the date he/she is served with a certified copy of such decision to reject.

<Design>

Appeal against Examiners' Decision to Reject Applications for Design Registration or to Cancel Design Registration (Design Protection Act Article 120)

A person who is dissatisfied with any decision to reject an application for design registration or a determination to cancel the registration of a design may file a petition within 30 days from the date the person is served with a certified copy of such decision.

* Requests for Re-Examinations (Design Protection Act Article 64)

With respect to a design application filed on or after July 1, 2009, an applicant may make a request for re-examination or trial, selectively, following a decision of rejection.

An applicant may file a request to re-examine his/her application after amending the specification or drawings of the application within 30 days after receipt of a certified copy of the decision to reject the application; however, an applicant is not allowed to make a request for a re-examination once a petition for trial has been filed.

Appeal against Examiners' Decision to Dismiss Amendment (Design Protection Act Article 119)

A person who is dissatisfied with a decision to dismiss an amendment under Article 49 (1) may file an appeal against a decision to dismiss an within 30 days from the date the person is served with a certified copy of such decision.

2. Inter Partes Cases

<Trademark>

Trial to Invalidate Trademark Registration (Trademark Act Article 117)

Due to a mistake of an examiner, some trademark registrations which should not have been granted may exist. In such cases, an interested party or an examiner may request for a trial to invalidate the defective trademark registrations. In such cases, where at least two designated goods bearing the registered trademark exist, he/she may request a trial to invalidate the relevant trademark registration for each of the designated goods.

Grounds for invalidation are generally the same as the grounds for rejection of a trademark application.

A trial to invalidate a trademark may be requested even after the trademark rights are extinguished. Where a trial decision to invalidate a trademark registration has become final and conclusive, trademark rights shall be deemed never to have existed; however, where a trademark registration is invalidated by any reason that arose after the granting of a trademark registration, the trademark right is deemed not to have existed from the time when such reason is originated.

Trial to Invalidate Registration to Renew Duration of Trademark Rights (Trademark Act Article 118)

Where registration to renew the duration of trademark rights falls under any of the following, an interested party or an examiner may request a trial to invalidate such renewal registration. In such cases, where at least two designated goods bearing a registered trademark renewed exist, he/she may request a trial to invalidate such renewal registration for each of the designated goods:
1. Where registration to renew the duration of trademark rights violates Article 84 (2);
 * Article84(2): An application to register the renewal of the duration of trademark rights shall be filed within one year prior to the expiry of the duration of trademark rights: Provided that any person who fails to apply for registering the renewal of the duration of trademark rights within this period may apply for registering the renewal of the duration of trademark rights within six months after the duration of trademark rights expires.
2. Where a person who is not the relevant trademark right holder files an application to register the renewal of the duration of the trademark rights.

A trial to invalidate registration to renew the duration of trademark rights may be requested even after the trademark rights are extinguished.

Where a trial decision to invalidate registration to renew the duration of trademark rights becomes final and conclusive, such renewal registration shall be deemed never to have existed.

Trial to Revoke Registration of Exclusive License or Non-Exclusive License (Trademark Act Article 120)

Where an exclusive licensee or a non-exclusive licensee commits an act falling under Article 119 (1) 2, the trademark right holder may request a trial to revoke registration of such exclusive or nonexclusive license.
*Article 119 (1) 2: Where an exclusive licensee or a non-exclusive licensee causes the misunderstanding of the quality of goods or confusion with goods related to another person's business by using a registered trademark or a trademark similar to the registered trademark on the designated goods, or goods similar to the designated goods: provided that the foregoing shall not apply where the trademark right holder pays considerable attention.

Even if a fact that constitutes grounds for requesting a trial to revoke registration of an exclusive license or a non-exclusive license ceases to exist after the trademark right holder files such trial, the non-existence of such fact shall not have an influence on grounds for cancellation.

Trial to Invalidate Registration of Conversion of Classification of Goods (Trademark Act Article 214)

Where registration of the conversion of the classification of goods falls under any of the following, an interested party or an examiner may request a trial to invalidate registration thereof. In such cases, where at least two designated goods relating to registration of the conversion of the classification of goods exist, a trial may be requested for each of the designated goods:
1. Where non-designated goods bearing the relevant trademark are registered for the conversion of the classification of goods, or the scope of designated goods has been substantially extended;
2. Where registration of the conversion of the classification of goods is obtained through an application filed by a person who is not the holder of the relevant registered trademark;
3. Where registration of the conversion of the classification of goods violates Article 209 (3).
 * Article 209 (3): An application for registration of the conversion of the classification of goods shall be filed from one year before the duration of trademark rights expires for a period not exceeding six months after the duration of trademark rights expires.

Where the trial decision to the effect that registration of the conversion of the classification of goods is invalidated becomes final and conclusive, the relevant registration of the conversion of the classification of goods shall be deemed never to have existed.

Trial to Confirm the Scope of Trademark Rights (Trademark Act Article 121)

A trademark right holder, an exclusive licensee, or an interested party may request a trial to confirm the scope of trademark rights. In such cases, where at least two designated goods bearing the registered trademark exist, any of the aforementioned persons may request a trial to confirm the scope of rights for each of the designated goods.

Trial to Cancel Trademark Registration (Trademark Act Article 119)

Where a registered trademark falls under any of the followings, a trial to cancel the trademark registration may be requested:

  • 1. Where a trademark right holder causes the misunderstanding of the quality of goods or confusion with goods related to another person's business among consumers by willfully using a trademark similar to the registered trademark on the designated goods, or using the registered trademark or a similar trademark on goods similar to the designated goods;
  • 2. Where an exclusive licensee or a non-exclusive licensee causes the misunderstanding of the quality of goods or confusion with goods related to another person's business by using a registered trademark or a trademark similar to the registered trademark on the designated goods, or goods similar to the designated goods: provided that the foregoing shall not apply where the trademark right holder pays considerable attention;
  • 3. Where none of a trademark right holder, an exclusive licensee or a non-exclusive licensee has used the registered trademark on the designated goods in the Republic of Korea for at least three consecutive years without justifiable grounds before a trial to cancel the registered trademark is requested;
  • 4. Where the registered trademark violates the article on transfer and joint ownership of trademark rights;
  • 5. Where similar registered trademarks belong to different respective trademark right holders due to the transfer of the trademark rights, and one of them causes the misunderstanding of the quality of goods or confusion with goods related to another person's business among consumers by using his/her trademark on goods identical or similar to the designated goods bearing his/her trademark for the purpose of unfair competition;
  • 6. Where a person who has the right to the registered trademark which constitutes an act of unfair competition requests a trial to revoke the trademark registration within five years from the date the relevant trademark is registered; Where the use of the registered trademark;
  • 7. Where a collective mark falls under any of the following:
    • (a) Where a member of the organization allows another person to use its collective mark in violation of its articles of incorporation, or causes the misunderstanding of the quality of goods or the source of a geographical indication, or confusion with goods related to another person's business among consumers by using its collective mark in violation of its articles of incorporation: provided that the foregoing shall not apply where the holder of the collective mark right pays due attention to supervise its members;
    • (b) Where the organization is likely to cause the misunderstanding of the quality of goods or confusion with goods related to another person's business among consumers by amending its articles of incorporation under Article 36 (3) after it registers its collective mark and establishes its collective mark right;
    • (c) Even where a third party causes the misunderstanding of the quality of goods or the source of a geographical indication, or confusion with goods related to another person's business among consumers by using its collective mark, the holder of the collective mark right willfully fails to take appropriate measures;
  • 8. Where a collective mark with geographical indication falls under any of the following:
    • (a) In cases of an application for registration of a collective mark with geographical indication, where the articles of incorporation of the organization actually prevents persons from joining the organization, such as prohibiting them from joining the organization or stipulating
    • impracticable conditions for joining the organization, or allow a person ineligible to use such geographical indication to join the organization;
      (b) Where the holder of a collective mark right with geographical indication or a member of the organization causes the misunderstanding of the quality of goods or confusion on the source of the geographical indication by using the collective mark in violation of Article 223;
  • 9. Where a certification mark falls under any of the following:
    • (a) Where the holder of the certification mark right permits the use of the certification mark, in violation of the articles of incorporation or the rules submitted pursuant to Article 36 (4);
    • (b) Where the holder of the certification mark right uses the certification mark on his/her own goods, in violation of the proviso to Article 3-3;
    • (c) Where a person permitted to use the certification mark right allows another person to use such mark, in violation of the articles of incorporation or the rules, or causes confusion concerning the quality of goods, the place of origin, methods of production or other characteristics among consumers by using the certification mark in violation of the articles of incorporation or the rules: provided that the foregoing shall not apply where the holder of the certification mark right pays due attention to supervise any person permitted to use the certification mark;
    • (d) Where the holder of the certification mark right fails to make appropriate measures though he/she is aware that a third party who fails to obtain permission to use the certification mark causes confusion concerning the quality of goods, the place of origin, methods of production or other characteristics among consumers by using the certification mark;
    • (e) Where the holder of the certification mark right actually prevents a person eligible to use the certification mark right from using the certification mark right without justifiable grounds in accordance with the articles of incorporation or the rules, or stipulates impracticable conditions for using the certification mark right in the articles of incorporation or the rules.

Any person may request a trial to cancel trademark registration: provided that a trial to cancel trademark registration on the grounds that the registered trademark falls under falls under paragraph (1) 4 and 6 may be requested by an interested person only.

Where a trial decision to cancel trademark registration becomes final and conclusive, such trademark rights shall be extinguished henceforth: provided that where the trial decision to cancel the trademark registration on the grounds that the registered trademark falls under paragraph (1) 3 becomes final and conclusive, the trademark rights shall be deemed extinguished on the date the trial is requested.

<Design>

Trial to Invalidate Design Registration (Design Protection Act Article 121)

Due to a mistake of an examiner, some design registrations which should not have been granted may exist. In such cases, an interested party or an examiner may request for a trial to invalidate the defective design registration. For a design registration containing multiple designs, a request for trial for invalidation may be made for each design.

Grounds for invalidation are generally the same as the grounds for rejection of a design application.

A trial for invalidation may be requested even after the expiration of the design right. Where a trial decision to invalidate a design registration has become final and conclusive, the design right shall be deemed never to have existed; however, where a design registration is invalidated by any reason that arose after the granting of a design registration, the design right is deemed not to have existed from the time when such reason is originated.

Trial to Confirm the Scope of Design Rights (Design Protection Act Article 122)

A design right-holder, an exclusive licensee, or any interested party may file a petition a trial to have the scope of the design right confirmed in order to ascertain the extent of protection of the registered design. If a case involves the registration of designs claimed in an application for registration of multiple designs, such petition shall be filed separately for each design.

Trial for Granting Non-Exclusive Licenses (Design Protection Act Article 123)

A design right-holder, an exclusive licensee, or any interested party may file a petition a trial to have the scope of the design right confirmed in order to ascertain the extent of protection of the registered design. If a case involves the registration of designs claimed in an application for registration of multiple designs, such petition shall be filed separately for each design.

Trial for Granting Non-Exclusive Licenses (Design Protection Act Article 123)

If a design right-holder, or an exclusive or non-exclusive licensee intends to obtain a license to work a third person's registered design that falls under Article 95 (1) or (2) or a design similar thereto but the person refuses to grant a license without valid cause or it is impracticable to obtain such license from the person, the design right-holder or the exclusive or non-exclusive licensee may file a petition for a trial, seeking the grant of a non-exclusive license to the extent necessary to work the registered design or a design similar thereto.

 * Article 95: (1) If a registered design is a product made by applying another person's registered design or a design similar thereto, patented invention, registered utility model or registered trademark claimed in an application filed earlier than the filing date of the application for registration of the relevant design, or if a design right conflicts with another person's patent right, utility model right, or trademark right claimed in an application filed prior to the filing date of the application for registration of the relevant design, the design right-holder to the relevant registered design, the exclusive or non-exclusive licensee for the relevant registered design shall not work the registered design, commercially, without permission from the owner of the relevant design right, patent right, utility model right or trademark right or in breach of Article 123.
(2) If a design similar to a registered design is of a product made by applying another person's registered design or a design similar thereto, patented invention, registered utility model or registered trademark claimed in an application filed earlier than the filing date of the application for registration of the relevant design, or if a design similar to a registered design subject to such design right conflicts with another person's patent right, utility model right, or trademark right under an application filed prior to the filing date of the application for registration of the relevant design, the design right-holder to the registered design, the exclusive or non-exclusive licensee for the registered design shall not work the registered design, commercially, for business without permission from the owner of the relevant design right, patent right, utility model right or trademark right or in breach of Article 123.
(3) If a registered design or a design similar thereto is of a product made by applying, or conflicting with, another person's copyright that arose earlier than the filing date of the application for registration of the relevant design, the design right-holder to the registered design or a design similar thereto or the exclusive or non-exclusive licensee for the registered design or a design similar thereto shall not work the registered design or design similar thereto, commercially, without permission from the copyright owner.

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Trademark/Design Administrators for Foreign-domiciled Applicants (Trademark Act Article 6, Design Protection Act Article 6)

A foreign-domiciled applicant (a person who has neither a domicile nor a place of business in the Republic of Korea), shall not initiate any trademark/design-related procedure, such as application, trial, etc., unless he/she is represented by a trademark/design administrator (an agent with respect to his/her trademark/design rights, who has a domicile or a place of business in the Republic of Korea). When a request for a trial is filed against him/her, there may be problems in receiving the copy of the written request for trial and other documents without a trademark/design administrator, and this often causes difficulties, such as the lapse of a right.

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Trial and Appeal Procedure

Ex Parte Cases

Ex Parte Cases

Inter Parte Case

Inter Parte Cases

For more information about IPTAB, please refer to the following brochure. Download

  • Last updated 18 February 2021
  • Trial Policy Division