After World War 11, a Republic of Korea (ROK) was set up in the southern half of the Korean Peninsula while a Communist-style government was installed in the north (the Democratic People's Republic of Korea or DPRK). During the Korean War (1950-53), US troops and UN forces fought alongside soldiers from the ROK to defend South Korea from DPRK attacks supported by China and the Soviet Union.
An armistice was signed in 1953, splitting the peninsula along a demilitarized zone at about the 38th parallel. Thereafter, South Korea achieved rapid economic growth with per capita income rising to roughly fourteen times the level of North Korea. In 1993, KIM Young- Sam became South Korea's first civilian president following 32 years of military rule. Today, South Korea is a functioning modern democracy. In October 2007, a second North-South summit took
place between the South's President ROH Moo-hyun and the North Korean leader.
Who May Apply?
The first applicant for registration of a trademark is entitled to its registration. However, if two or more applications are simultaneously filed for an identical or similar mark to be used on identical or similar goods, and the parties at issue cannot come to an agreement regarding the registration, the KIPO will draw lots to determine the applicant.
An alien who has no domicile or place of business in the Republic of Korea is nevertheless entitled to registration if he or she is a national of a country with which Korea has entered into a treaty or convention arrangements. Under the International Convention, priority may be asserted within six months of first filing a Convention application.
Holding companies may validly own trademarks. However, particular attention should be paid to use requirements.
What Can Be Registered?
In order to be registrable, a trademark must consist of symbols, letters, figures, three-dimensional shapes, color, hologram, movement, or a combination thereof, which have a distinctive character by which consumers may identify the particular goods or services with a business.
Emblems of nonprofit businesses may be registered as trademarks only if those businesses are actually operating in Korea.
Trademarks consisting of the name, denomination, trade name, portrait, signature, or seal of a well-known person may be registered
only with the consent of that person.
What Cannot Be Registered?
The following trademarks, which lack distinctiveness, may not be registered as trademarks in Korea:
(a) those consisting solely of a mark that indicates, in an ordinary fashion, an ordinary, common, or generic name of the goods;
(b) those customarily used on the goods;
(c) those consisting solely of a mark that indicates, in an ordinary fashion, the origin, raw materials, quality, efficacy, quantity, use, price, shape, processing or producing method, method of use, or time of use of the goods;
(d) those consisting solely of a well-known geographical place, name, an abbreviation thereof, or a map;
(e) those consisting solely of a common surname or name;
(0 those consisting solely of a common or simple mark; and
(g) those fiom which consumers are unable to distinguish the business which is connected with the goods.
In addition, the following marks cannot be registered nor renewed, provided that an application for renewal may not be refused;
(a) those identical or similar to the Republic of Korea's national flag, national emblem, colors, medals, decorations, or badges, a foreign nation's national flag, emblems, or symbol of the Red Cross, the Olympic mark, letters, or badge, or those identical or similar to signs or seals used for certification or supervision by
countries or their public organizations;
(b) those that falsely indicate relations with nations, races, organizations, religions, or deceased persons of prominence, or that criticize, insult, or slander them;
(c) those marks which are identical with or similar to a well-known emblem relating to a nonprofit business, public utilities of the state, public organizations or agencies thereof, and public utility corporations, except in cases where the state, public organizations or agencies thereof, or public utility corporations
or enterprises apply for the registration of their emblems as trademarks;
(d) those that may disturb public order or good morals;
(e) those marks which are similar to medals, certificates of merit,
or plaques won from exhibitions held by the Korean or foreign governments, except when applied for by persons who have won the plaques, medals, or certificates of merit and who use them as a part of their trademark;
(f) those identical with or similar to marks widely known among consumers as indicating goods of another person and used for identical or similar goods;
(g) those marks which are likely to cause confusion among consumers in connection with the goods or business of another person widely recognized among consumers;
(h) those marks which are likely to cause consumers to mistake the quality of goods or to deceive consumers;
(i) those containing well-known persons' names, pseudonyms, pen names or professional names, titles, or trade names, portraits, signatures, or seals, except with the consent of the person concerned;
(j) those similar or identical to other registered trademarks for use on the same or similar goods, (word marks are considered identical or similar based on sound, appearance, or ideal meaning);
(k) those similar or identical to a trademark of another person for the same or similar goods where less than one year has elapsed from the termination of the trademark rights associated with a prior registration of the other mark;
(1) those marks which are identical or confusingly similar to a trademark known to the consumers in the country or in a foreign country, where the applicant intends to use the mark to unfairly profit or cause damage to another party;
(m) those marks consisting simply of a three-dimensional shape which is indispensable in obtaining the technical result of the designated goods or the packaging of such goods; (n) those marks indicating or containing the geographical name of the producing place of grape wine or distilled spirits in a signatory nation of the World Trade Organization (WTO) and used on the wine or spirits or goods similar thereto. Well-Known Marks:
Marks that are well-known in Korea can also be protected by the Unfair Competition Prevention and Protection of Trade Secret Law. If a mark is identical or confusingly similar to a mark which is wellknown to the consumers in Korea or in a foreign country, and the user intends to use such mark for the purpose of unfair competition, to unfairly profit or cause damage to another party, or if the use of the mark is likely to cause a consumer confusion, the owner of the wellknown
mark may prevent the use of such mark even in connection with different goods or services. This law also prohibits the dilution of well-known marks.
A registered trademark may be cancelled if it is proven that the registrant used the mark to cause confusion.
The following items are required for applications for registration:
i) Power of attorney. If a general power of attorney is registered in KIPO, it is no longer necessary to submit individual powers of attorney. It is also possible to register additional general poweds) of attorney at any time. It is not necessary to notarize or legalize a power of attorney.
ii) Two prints of the mark, which should not exceed seven centimetres by seven centimetres, with four additional prints for the agent.
iii) Designation of goods or services in one or multiple classes.
iv) Convention Priority must be claimed on filing within six months of the first filing in a country having membership in the Convention. A priority document or the equivalent must be filed within three months of filing the application.
Legalization is not required for documents in Korean.
A person who does not have an address or a place of business in Korea may not file an application for a trademark registration unless he or she is represented by an agent who has an address or a place of business in Korea.
Evaluation & Review
Applications for registration are examined as to form and merits. If an applicant is entitled to registration of the mark, the office issues a notice of allowance to the applicant. If the application is refused, the Office will issue a notice of rejection to the applicant setting forth the reasons for the rejection and requesting the applicant to submit a response to the notice, if a response is required. Applications may be amended until the deadline for submission of arguments in response to a notice of rejection. When an applicant files an appeal of a final rejection, the application must be amended within 30 days from the date the appeal was filed.
A trademark registration is valid for a term of 10 years from the date of registration and may thereafter be renewed for 10-year periods. Renewal must be sought within the year preceding expiration by means of a renewal application containing a power of attorney and 10 prints of the mark. Renewal applications may also be filed within a six-month grace period after expiration of the registration period. If , the registrant fails to renew its registration, the registration is
cancelled and the registrant must refile a new application for the mark.
"Use" consists of:
(1) affixation of a mark to goods or their packaging;
(2) assigning or delivering goods or displaying, exporting, or importing goods for assignment or delivery;
(3) indicating, displaying, or distributing advertisements, price lists, business papers, signboards, or labels relating to goods;
(4) with regard to 1 and 3 above, affixation of a mark to goods or their packaging, including forming the goods or the packagomg
of the goods into the shape of the trademark, (i.e., a 3-D configuration mark).
Use in the original language will satisfy the use requirement.
The registrant does not have to provide the KIP0 with a declaration of use.
The use on goods or services other than the designated goods or services does not count as proper use of the registered mark. The use of the mark by a licensee may constitute a use by the licensor. Use in a slightly different form, including in a different color, may be considered proper use only if the difference in form is very minor.
If a registered trademark has not been used in Korea or in international commerce affecting Korea for three years or more preceding the filing date of a nonuse cancellation action, the mark is subject to cancellation, and the registrant bears the burden of proving use. Proof of use by a recorded or unrecorded licensee is acceptable.
There are no current laws or regulations directly governing rights to and protection for Internet domain names. However, the National Internet Development Agency of Korea, (NIDA), a nonprofit local agency, is responsible for domain name registration and the provision of effective mechanisms for Internet domain name dispute resolution.
In furtherance of these objectives, NIDA has implemented and enforced the Rules of the Domain Name Dispute Resolution (hereafter, the "Rules") governing the local ".kr7'-level domain names. T o validly register a ".krn domain name, one must file an application for registration with a loca1,registrar accredited by the NIDA.
However, the local registrar does not review or determine whether there is any conflict with registered trademarks when examining domain name registration applications. The registration may be granted for various annual terms, up to 10 years.
If the validity of a domain name registration is in dispute based on any conflict with another party's trademark, the trademark owner may elect to: i) bring a lawsuit under Korean law, or ii) bring an administrative proceeding against the domain name registrant before the Internet Address Dispute Resolution Committee (IDRC), a sub body of the NIDA.
If the dispute involves a validly registered trademark or a famous or well-known trademark, the trademark owner may have valid claims against the registrant under the Trademark Act and/or the Unfair Competition Prevention and Trade Secret Protection Ad, and may file a lawsuit in a local court seeking injunctions and/or damages based on one or both of these laws. Also, the trademark owner may file an IDRC action seeking cancellation or transfer of the subject domain
name. To prevail in the IDRC proceeding, the complainant must prove that: (i) the mark at issue is famous in Korea and the registrant's use of said mark in connection with the domain name at issue is likely to cause consumer confusion as to the source of the respective goods or businesses, or will dilute the distinctiveness of the mark; or (ii) the complainant owns a legitimate trademark right for the mark at issue .
in Korea, and the registrant is using the domain name at issue in connection with goods or services to which the complainant's trademark rights apply; or (iii) the registrant registered the mark at issue in bad faith.
The registrant of a domain name has no legal grounds under Korean law to cancel or invalidate another entity's trademark registration.
However, if a domain name contains a mark that has become famous or well-known but is subsequently registered by another, and the application for registration of the domain name was filed prior to the filing of the trademark registration, the registrant of the domain name may challenge the trademark registration based on the previously acquired fame or well-known status of the mark used in its domain name.
The following acts constitute infringement of a registered trademark:
(1) using a trademark that is identical to a registered trademark of another person on goods similar to the designated goods;
(2) using a trademark similar to a registered trademark of another
person on goods identical or similar to the designated goods;
(3) delivering, selling, forging, imitating, or possessing a trademark identical or similar to the registered trademark of another person with the intent to use or make another person use it on any goods identical or similar to the designated goods;
(4) manufacturing, delivering, selling, or possessing tools for forging or imitating with intent to forge or imitate, or to make another person forge or imitate the registered trademark of another person; and
(5) delivering or possessing, for the purpose of delivery, goods that are similar or identical to the goods designated under another party's trademark registration and that bear the other party's registered trademark or a similar trademark.
For protecting goods bearing a registered trademark against the import and export of infringing goods, the Customs Office notifies the trademark owner of the infringement. The trademark owner may receive such notification by recording its registrations and, if necessary, may request that the Customs Office withhold customs clearance for the infringing goods by posting a bond with the Customs Office. To maintain the withholding status, a lawsuit must be lodged in civil
court within 10 days of requesting the hold on the customs clearance.