Lee & Park Patent and Law Firm

Trademark Academy

What is a trademark? Trademark Application Process Trademark registration requirements Trademark Rights Trademark Adjudication Process

Definition of Trademark

A trademark is a symbol, letter, figure, three-dimensional shape, color, hologram, motion, or any combination thereof, or any other thing that can be perceived visually, used by a person engaged in the business of producing, processing, certifying, or selling goods to distinguish the goods related to his or her business from the goods of others.
Trademarks under the Trademark Act are still limited to those that can be recognized visually, so marks that can be perceived by hearing, smell, and taste, such as sounds, scents, and flavors, cannot be protected as trademarks under the Trademark Act, even if they are used as identification marks for other goods in the real world of trade.

Broad Trademarks

In addition to trademarks, service marks, collective marks, and business marks also fall under the concept of broad trademarks.
A service mark is a mark used by a person engaged in the service business (providing services such as advertising, telecommunications, banking, transportation, catering, etc.) to identify his or her service business with the service business of another person. In other words, a trademark is an identification mark for "goods" while a service mark is an identification mark for "services".
An collective mark is a mark used by a legal entity established by a business that jointly produces and sells goods or services, or by a member of the organization under its supervision, for use in the business of goods or services related to its own business.
A business mark is a mark used by a person operating a business that is not for profit, such as the YMCA or Boy Scouts, to represent the business. Other examples include the Korean Red Cross and the Korea Consumer Protection Agency.

Neighboring Concepts of Trademark

Neighboring concepts to trademarks include trade names, designs, geographical indications, domain names, and copyrighted works.

Trademarks and trade names	A trademark is a label attached to a product to identify other products and has the function of indicating the identity of the product, while a business name is a name used by a trader (corporation or individual) to indicate the identity of the business. In other words, a business name is a name by which a trader identifies himself or herself in business and is a type of human sign, expressed and called by letters, and the use of a business name is compulsory in the case of a company, but a trademark is a symbol that identifies other goods and may consist not only of letters but also of symbols, characters, shapes, colors, and combinations thereof. There is no compulsion in the use of a trademark. However, there is an international trend to align trade names and trademarks under the Corporate Identification Program (the phenomenon of trade name trademarkization), and there are an increasing number of trade names that are protected as trademarks under the law if they are used as product marks and registered as trademarks with registration requirements, so the functions of the two often overlap.
Trademarks and designs	Unlike a trademark, which is an identification mark for goods, a design is an aesthetic creation expressed in the appearance of an article. However, both have the components of shape (figure) and color in common, and the relevance of design to trademarks has increased, especially with the introduction of the stereoscopic mark system in trademark law.
Trademarks and geographical indications	Geographical indications are similar to trademarks in that they both serve the function of indicating source and quality, are related to business interests, and are protected within the scope of intellectual property rights. Because of these similarities, some countries have incorporated geographical indications into their trademark regimes and have trademark and geographical indication protection laws, while others have protected geographical indications as collective or certification marks under their trademark laws. However, a trademark is a mark that identifies a "specific business entity" that provides goods or services, whereas a geographical indication is a mark that identifies a "specific geographical area" where the business entities that produce the product being used are located, so there is no "exclusive owner" of a geographical indication in the sense that one business entity can exclude other competitors from using it. In Korea, "geographical indications" have been protected as collective marks since July 1, 2005 through the 2004 Amendment to the Trademark Act (Act No. 7290 of December 31, 2004). A "geographical indication" is not just a location name, but a mark that indicates the region in which the goods were produced, manufactured, or processed, such as "Boseong green tea," if the goods have a certain quality, reputation, or other characteristics, and the quality is due to the geographical environment of the region, such as the climate, soil, and topography. In other words, a mark that indicates that the goods were produced, manufactured, or processed in the region if the characteristics such as quality or reputation that distinguish it from other regions are essentially derived from the geographical environment, including natural conditions such as the climate, soil, and topography or human conditions such as traditional production methods.
Trademarks and domain names	A trademark is a mark attached to a product to identify it, and a domain name is a series of alphabetic and numeric combinations that correspond to a numeric address (IP Address) of a host computer on the Internet. Therefore, although the trademarks originated from the separate functions of marking the source of goods and domain names originated from the separate functions of marking the place of host computers on the Internet, with the revitalization of e-commerce, domain names themselves have come to serve as a source mark for goods and services, and disputes between trademarks and domain names are increasing due to the increasing number of cybersquatting cases in which trademarks of others are registered fraudulently and sold at a high price to the rightful trademark owner. The registration of a trademark in Korea does not confer the right to register a domain name corresponding to the trademark, and the registration of a domain name does not confer the right to register the trademark.
Trademarks and Works	A work is a creative work that falls under the scope of literature, scholarship, and art, and is an expression of ideas and emotions unrelated to goods. Trademarks and works of authorship differ in that trademarks are the result of a choice and works of authorship are mental creations, but in recent years, there have been cases of conflicts between trademarks and works of authorship due to the trend of designing trademarks. The title of a book can be protected as a trademark for books if it is identifiable, even if it is not a work of authorship. This is true even if it refers to a character in a novel, play, or cartoon. Trademarks and copyrights may conflict or complement each other.

Definition of Trademark

A trademark is registered by filing an application with the KIPO together with the goods or services to be used, and the KIPO trademark examiner decides whether to register the mark by examining whether there is something identical to the mark already selected by others as of the date of filing, and whether the composition of the mark is not contrary to the public interest of third parties even if it is used exclusively in Korea.
Since the analysis by the examiners of the KIPO may be somewhat subjective depending on the examiner in charge of each category, once the examiner's examination has been passed, the exclusivity of the mark is published in the Trademark Gazette on the KIPO website, so the public may file an objection within two months from the date of publication. If there is no objection within this period, the registration decision is notified to the applicant.
Please refer to the application procedure diagram below.

Persons Eligible for Trademark Registration

Any person (individual or corporation) who is eligible to become a trademark holder in Korea and who uses or intends to use a trademark in Korea (corporation, individual, or joint venture) may register his or her trademark in accordance with the provisions of the Trademark Act. All Korean nationals (including corporations) are eligible to become trademark holders, while foreign nationals' eligibility is determined based on the principle of reciprocity and treaties.

Substantive Requirements

The requirements for trademark registration are divided into procedural requirements, such as the form of application, and substantive requirements (active requirements and passive requirements) regarding whether the trademark itself has the power to identify other goods or does not fall under the reasons for unregistration. Ultimately, the applied trademark will be examined by the Korean Intellectual Property Office, so be careful not to fall under certain prohibitions when selecting a trademark.

Affirmative Requirements	The most important function of a trademark is the identification of goods, so in order to be registered as a trademark, it must first have identification power. In trademark law, distinctiveness means that a trader or consumer will recognize the trademarked goods as belonging to the trademark holder. Generally, the determination of identification is made in relation to the designated goods, and Article 6(1) of the Trademark Act lists a limited number of reasons why a trademark cannot be registered as a trademark that does not have the identification of other goods, such as the following: Common names of goods (e.g., automobile goods - CAR) Idiomatic trademarks (e.g., confectionery - KKANG) Descriptive (e.g., origin, quality, use, raw materials, efficacy, timing, etc.) trademarks (e.g., suit - WOOL, bag - STUDENT) Prominent geographical names, their abbreviations, or maps (e.g., Seorak Mountain) Common surnames or designations (e.g., Mr. Lee, Mr. Kim) Simple and common marks (e.g., 123, ONE TWO) Other non-distinctive marks: commonly used slogans, phrases, and greetings (e.g., believe it or not, www)
Passive requirements	Passive requirements (grounds for non-registration) Even if a trademark has the ability to identify other goods, it is necessary to exclude the registration of the trademark if it infringes on the public interest or the interests of others by granting trademark rights of an exclusive nature. Article 7 of the Trademark Act provides a limited enumeration: Trademarks that are identical or similar to public marks such as the flag or coat of arms of the Republic of Korea, the medal or packaging of a member state of the Paris Convention, a member state of the World Trade Organization, or a signatory to the Trademark Law Treaty, the Red Cross, the Olympic Games, etc. Trademarks that misrepresent a national, ethnic, public, or religious affiliation or are likely to disparage or insult them (e.g., Yankee, Negro, etc.) Trademarks that are identical or similar to those that are prominent as marks of a national, public, or non-profit public benefit corporation (e.g., YMCA, KBS, Red Cross, etc.) Trademarks that are offensive to good taste or likely to cause public disorder (e.g., obscene shapes or characters, characters of scammers, pickpockets, etc.) Trademarks bearing the same or similar marks as plaques or packaging at fairs held by the government or foreign governments or with the approval of the government or foreign governments Trademarks containing the name, title or trade name, portrait, etc. of a prominent person (e.g., DJ, JP, KEPCO, KNHC, etc.) Trademarks that are identical or similar to another's pre-registered trademark A trademark that is identical or similar to another's registered trademark that has not expired one year from the date the trademark right lapsed. A trademark identical or similar to another's geographical indication, unless one year has elapsed from the date the right to use the geographical indication has lapsed. A trademark identical or similar to a state trademark A similar trademark that is identical to the geographical indication of the state A trademark that is likely to cause confusion with the goods or services of others that are significantly recognized among consumers. Trademarks that are likely to misrepresent the quality of goods or deceive consumers A trademark that is identical or similar to a trademark recognized as a trademark of a specific person in Korea or abroad, and is used for unfair purposes, such as to obtain unfair profits. Trademarks that are identical or similar to trademarks that are recognized as geographical indications of a particular region outside of Korea and are used for unfair purposes, such as to gain unfair profits. Trademarks consisting solely of three-dimensional shapes, colors, or combinations of colors that are indispensable for securing the function of marking goods or the goods themselves. A trademark consisting of or incorporating a geographical indication of the origin of wine and spirits in a World Trade Organization (WTO) member country and intended for use on wine, spirits or similar goods, unless the rightful user of the geographical indication has filed an application for registration of a collective mark of geographical indication.

Affirmative Requirements

The most important function of a trademark is the identification of goods, so in order to be registered as a trademark, it must first have identification power. In trademark law, distinctiveness means that a trader or consumer will recognize the trademarked goods as belonging to the trademark holder.
Generally, the determination of identification is made in relation to the designated goods, and Article 6(1) of the Trademark Act lists a limited number of reasons why a trademark cannot be registered as a trademark that does not have the identification of other goods, such as the following:

Common names of goods (e.g., automobile goods - CAR)

Idiomatic trademarks (e.g., confectionery - KKANG)

Descriptive (e.g., origin, quality, use, raw materials, efficacy, timing, etc.) trademarks (e.g., suit - WOOL, bag - STUDENT)

Prominent geographical names, their abbreviations, or maps (e.g., Seorak Mountain)

Common surnames or designations (e.g., Mr. Lee, Mr. Kim)

Simple and common marks (e.g., 123, ONE TWO)

Other non-distinctive marks: commonly used slogans, phrases, and greetings (e.g., believe it or not, www)

Passive requirements

Passive requirements (grounds for non-registration) Even if a trademark has the ability to identify other goods, it is necessary to exclude the registration of the trademark if it infringes on the public interest or the interests of others by granting trademark rights of an exclusive nature. Article 7 of the Trademark Act provides a limited enumeration:

Trademarks that are identical or similar to public marks such as the flag or coat of arms of the Republic of Korea, the medal or packaging of a member state of the Paris Convention, a member state of the World Trade Organization, or a signatory to the Trademark Law Treaty, the Red Cross, the Olympic Games, etc.

Trademarks that misrepresent a national, ethnic, public, or religious affiliation or are likely to disparage or insult them (e.g., Yankee, Negro, etc.)

Trademarks that are identical or similar to those that are prominent as marks of a national, public, or non-profit public benefit corporation (e.g., YMCA, KBS, Red Cross, etc.)

Trademarks that are offensive to good taste or likely to cause public disorder (e.g., obscene shapes or characters, characters of scammers, pickpockets, etc.)

Trademarks bearing the same or similar marks as plaques or packaging at fairs held by the government or foreign governments or with the approval of the government or foreign governments

Trademarks containing the name, title or trade name, portrait, etc. of a prominent person (e.g., DJ, JP, KEPCO, KNHC, etc.)

Trademarks that are identical or similar to another's pre-registered trademark

A trademark that is identical or similar to another's registered trademark that has not expired one year from the date the trademark right lapsed.

A trademark identical or similar to another's geographical indication, unless one year has elapsed from the date the right to use the geographical indication has lapsed.

A trademark identical or similar to a state trademark

A similar trademark that is identical to the geographical indication of the state

A trademark that is likely to cause confusion with the goods or services of others that are significantly recognized among consumers.

Trademarks that are likely to misrepresent the quality of goods or deceive consumers

A trademark that is identical or similar to a trademark recognized as a trademark of a specific person in Korea or abroad, and is used for unfair purposes, such as to obtain unfair profits.

Trademarks that are identical or similar to trademarks that are recognized as geographical indications of a particular region outside of Korea and are used for unfair purposes, such as to gain unfair profits.

Trademarks consisting solely of three-dimensional shapes, colors, or combinations of colors that are indispensable for securing the function of marking goods or the goods themselves.

A trademark consisting of or incorporating a geographical indication of the origin of wine and spirits in a World Trade Organization (WTO) member country and intended for use on wine, spirits or similar goods, unless the rightful user of the geographical indication has filed an application for registration of a collective mark of geographical indication.

Duration of Trademark Rights

A trademark right is created by registration, and the term of the trademark right is 10 years from the date of registration. The term can be renewed for another 10 years by filing an application for renewal of the trademark right, so it has a semi-permanent effect as long as it is used. If you wish to renew the term of your trademark right, you must apply for a trademark renewal registration within one year before the expiration of the term of your trademark right.

Protection of Trademark Owners

Effects of Trademark Rights	When a trademark is registered, the trademark holder can actively exercise the exclusive right to use the trademark in relation to the designated goods and the right to prohibit the use of the trademark if another person uses a trademark identical or similar to the registered trademark. If another person infringes the trademark right by using its registered trademark or a trademark similar to the registered trademark, the trademark holder has a passive right to exercise the right of non-infringement and the right to claim damages against the person.
Acts constituting infringement of trademark rights	Since only the trademark holder has the exclusive right to use the registered trademark in relation to the designated goods, the Trademark Act stipulates that any person other than the trademark holder who uses a trademark identical or similar to the registered trademark on the same or similar goods as the designated goods (as well as any preliminary acts such as granting, selling, counterfeiting, possessing, and storing a trademark identical or similar to the registered trademark for the purpose of using or causing to be used on the same or similar goods as the designated goods) infringes the trademark right.
Remedies for Trademark Infringement	Remedies for trademark infringement are categorized as follows: Civil remedies: injunction, damages, preliminary injunction, garnishment, credit repair, and more. Criminal remedies (non-infringement): infringement, confiscation, and more. Administrative remedies: crackdown on counterfeit goods, border measures by customs, industrial property dispute settlement system, and more.

Decision System (Appeal of Refusal) Proceedings

An appeal of a rejection decision is a proceeding in which a person who has received a rejection decision requests the Patent Tribunal to cancel the rejection decision, claiming that the rejection decision is incorrect. It is initiated by submitting a request for appeal to the Patent Tribunal within three months from the date of receipt of the rejection decision from the Korean Intellectual Property Office. In response, the KIPO sends a case number and a notice of appointment of a referee to the claimant, and the designated arbitrator examines whether the case contains all the necessary information and is accompanied by all the requisite documentation.

Inter Partes (Invalidation/Cancellation) Proceedings

The procedure is the same as for a decision-based arbitration, including sending the arbitration number and notice of arbitrator designation to the claimant and conducting a methodological review. However, in an inter partes review, there is a respondent, so a copy of the request for review is sent to the respondent first for the respondent to submit a response. In addition, both the claimant and the respondent may submit additional corrections or comments before the end of the hearing. If necessary, the IPTAB may also call both parties to the trial court for an oral hearing. After these proceedings continue, the IPTAB will send a notice of intention to conclude the proceedings and render a judgment.