South Korea, Application Procedure for Trademarks

South Korea, Application Procedure for Trademarks

1. Introduction

Welcome to Patent Firm SODAM. We are a leading expert in intellectual property law, serving clients both in Korea and globally.

2. Specialties

Patents

Utility Models

Trademarks

Designs

Copyrights

3. Areas of Expertise

We possess comprehensive expertise across a wide array of technologies:

Multimedia and semiconductor devices

Memory circuits

Optical and electro-optical systems

LCD technologies

Computer hardware and software

Medical and scientific instruments

Imaging systems

Automotive tech

4. Trademark Overview

In Korea, trademarks are protected under the Trademark Act. For protection, marks should be registered with the Korean Intellectual Property Office (KIPO). No prior use is needed before registering, and while unregistered trademarks aren’t protected, well-known marks are. Actions against infringements on these marks can be pursued under the Unfair Competition Prevention Act.

5. Key Features of Korean Trademark Law

First-to-File Rule

Detailed Examination

Opposition Process

6. Procedure

6.1. Before Registration

We offer a pre-check service, reviewing the feasibility of the trademark registration. If any issues arise, we notify our clients at no extra charge.

6.2. Filing Application

Anyone intending to use a trademark in Korea can apply. Though registration requires an intent to use the mark in Korea, non-use can lead to cancellation after three years.

6.2.1. Required Documents for Application

Applicant details

Trademark specimens

Priority documents (if claiming priority)

Mandate (if needed)

A filing date, the priority country, and application date (if claiming priority)

6.3. Goods Designation

Based on the Nice Classification, which Korea adopted in 1998, applicants must specify the goods/services for their trademark.

6.4. Priority Claims

Claims can be made under the Paris Convention or mutual agreements between governments. To claim priority, filing in Korea should be within six months of the priority date.

7. Formal Examination

Applications can be rejected if:

They are unclear or incomplete

Not in Korean

Missing trademark samples

Not listing specified goods

Filed without a local patent agent in Korea

Once the application meets requirements, KIPO assigns an application number and checks for compliance with the trademark law. If discrepancies are found, the KIPO commissioner will address them.

8. Substantive Examination

  1. Examination Process

Unlike patents or utility models, trademark applications are evaluated in the order they are received. However, based on Article 53(2) of the Trademark Act, the Commissioner of the Korean Intellectual Property Office can prioritize certain applications that meet specific criteria. Typically, the examination process for a trademark application takes about five months from the filing date.

  1. Criteria for Registration

For a trademark to be registered under the Trademark Act, it must:

(A) Fit the definition of a trademark as outlined in the Trademark Act;

(B) Stand out distinctly when used to indicate a particular product or service, ensuring the product isn’t just inherently noticeable;

(C) Not fall under any category of trademarks that are explicitly non-registerable according to the Trademark Act.


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