The Korean Trademark Act defines a trademark as “(i) a symbol, a letter, a device, a three-dimensional shape, a color, a hologram, a motion or any combination thereof or (ii) any other visually perceptible sign, used by a person who produces, manufactures, processes, certifies, or sells goods as a business in order to distinguish his goods from those of others.”
With regard to the goods and class thereof which can be covered by a single trademark application, the Korean Trademark Act has adopted the multi-class application system. The Korean goods and service classification system is based on the international classification system contemplated under the Nice Agreement.
According to the recently amended Trademark Examination Guidelines, broad descriptions designating goods/services in the same class is accepted. For example, the class heading “clothing” is now accepted and can cover “clothing for exclusive use in sports” as well as “suits and coats” or “underwear.” However, all the goods/services covered by a broad description should fall within the same class.
The Korean Trademark Act has adopted a registration system for the protection of trademarks and service marks. Therefore, the use of a trademark is not a prerequisite for filing an application for the registration of a trademark.
Under the registration system, unregistered marks are not protected under the Trademark Act. However, well-known famous marks can obtain some protection without a trademark registration by way of preventing a third party from obtaining a trademark registration for an identical or similar mark. In addition, a non-exclusive license for a prior user has been adopted.
Korea has adopted the first-to-file system. Therefore, only the first to file an application for a trademark is entitled to a registration. All trademark applications are subjected to substantive examination by KIPO before registrations or rejections are issued. A decision on a trademark application is normally issued in about ten to twelve months from the date the application was filed.
Reflecting the Korean Constitutional Court decision, the Trademark Act stipulates that a junior application can be registered even if there is a senior trademark registration which is valid at the time of the junior application, but invalidated thereafter.
Expedited examination on a trademark application may be requested when (i) if a third party is using the mark without any justifiable reason; or (ii) if the applicant is using or planning on using the mark in connection with all of the designated goods/services under the pending application.
If the examiner finds no ground for rejection of a trademark application, a decision to publish the mark will be rendered. Once a trademark application is published, anyone may file with the Patent Office an opposition against the application within two (2) months from the publication date.
If there is no opposition to the registration of the trademark or if the examiner renders a decision to reject the opposition, the trademark registration will be granted. The registration fee should be paid within two (2) months from the delivery of a notification of decision on registration.
The protection term of a trademark right is ten (10) years from the date of its registration. The trademark registration may be automatically renewed by ten (10) years upon request with payment of renewal fees. There is no limit to the number of extensions for a trademark term.
Under the Korean Trademark Act, a registered trademark is simply renewed upon request for renewal with payment of renewal fees, within one year before the expiration of the existing registration.
The Trademark Act has been recently amended according to the Paris Convention Article 6ter. This amendment stipulates that any marks similar to emblems, medals, decorations and badges (regardless of their designated goods), and official signs and hallmarks indicating control and warranty of a member country (in case their designated goods are similar to the goods on which such marks are used) cannot be registered if they are notified by WIPO and designated by the KIPO commissioner. In addition, emblems, official signs, hallmarks, etc. are allowed for registration if they are filed by the corresponding nation or organization. It is also possible for the Red Cross, the International Olympic Committee and other well-known international organizations to register their titles, abbreviation of titles, and marks.
Introducing the Korean Supreme Court decision that a trademark similar to a name of a strain of a seed already registered under the Seed Industry Act cannot be registered since once such name is registered under the Seed Industry Act, then it should be considered generic, the Trademark Act specified that a mark similar to a name of a strain registered under the Seed Industry Act cannot be registered under the Trademark Act.