Should I file my trademark in local characters?
Yes, for a broader and stronger protection in South Korea, we recommend registering your trademark in local characters.
If the trademark is registered only in its original version (Latin characters), the protection does not always properly protect its equivalent in the local language. This means that a third party could use or register the same trademark (or a similar one) in local characters.
In additional to the legal benefits, the registration and use of the trademark in local characters can also have commercial benefits. The public in South Korea will recognize your brand more easily if they are able to read and correctly pronounce the mark.
Registering your trademark in its original version, as well as local transliteration/translation, will provide a greater protection from any possible infringements.
Is there a time frame for the trademark registration approval?
The average time frame for the registration approval is 16 months, if no objections or oppositions arise.
If I register my trademark in South Korea, do I have protection in other territories?
No. The mark will be protected only in South Korea.
Do I need to sign a Power of Attorney?
Yes. A power of attorney is needed to complete the process of trademark application.
Are there any benefits from a pre-filing use of the trademark?
Pre-filing use has minimal benefits since rights are primarily established through registration. However, it will help the applicant demonstrate distinctive qualities of the mark and win over objections on the basis of non-distinctiveness.
Will there be problems in case I don’t use my trademark after registration?
Yes. Third parties may possibly appeal for the cancellation of the trademark on the ground of non-use.
What are the types of trademark that can be registered in South Korea?
Any mark that can be replicated graphically, capable of making a good/service distinguishable from others, and can be represented visually, is accepted for registration.
- Shape (three-dimensional)
What are the phases of application after a trademark has been filed in South Korea?
The sequence of the trademark application is as follows:
Examination – Several elements will be examined and the mark being applied for should comply in terms of:
- Conflict with earlier registrations
Publication – The following details will be posted online so that third parties will have the chance to file for an opposition case:
- Name and address of applicant
- State/country of incorporation of applicant
- Citizenship of applicant
- Date and number of application
- Information on priority claim
- Trademark representation
Registration – The registration certificate will be issued once opposition cases are resolved and won.
What type of trademark is non-registrable?
These marks are against the trademark law of South Korea:
- Generic marks/terms
- Non-distinctive marks
- Name of a geographic location
- Use of names or flags or symbols of international organizations, states, regions and nations. Note. It can be registered if the international organization is famous
Does South Korea use the "Nice Classification" system?
Yes. South Korea applies the Nice Classification system. For trademarks that will be used for multiple classes of goods/services, a single application would suffice but multiple applications are also permitted.
Is there any possibility to claim priority in South Korea?
Yes. The home filing date can be accepted as the filing date in South Korea if:
- The home country is a Paris Convention signatory
- The home filing date does not exceed 6 months prior to the date of filing in South Korea
- If the international registration can be based in South Korea
What do I need to do to satisfy the use requirement?
To satisfy the requirement, the mark must be used within 3 years from the date it was registered or within 3 years preceding the date when the petition to cancel was filed. It must be used for commercial purposes and must occur in this jurisdiction.
Once my trademark has been registered, for how many years will be valid?
A registered mark in South Korea is valid for 10 years which is counted from the date of its registration.
What will be the renewal date of my trademark?
The renewal date is counted 10 years from the date the mark was registered.
Is it legal to use my trademark even if it is not yet registered?
Yes. It is legal to use an unregistered mark for any good or service.
Does having a registered trademark in South Korea afford me any right?
Owners must register their trademarks in order to secure rights.
What is the web address of the trademark national office?
Is there any need to use my trademark before I apply for registration?
It is not necessary for the applicants to use the mark or to intend to use it before applying for registration.
What are the grounds for a Trademark Application to be opposed?
A trademark application can be challenged on the following grounds:
- Mark is misleading, disparaging, deceptive, function, not distinctive, descriptive, or generic
- Proprietary rights
- Conflict with famous marks
- Conflict with trade names
- Conflict with a personal name
- Conflict with a company name (applicable only if the company is well-known)
- Registration under a different name (agent or representative) instead of the mark’s proprietor
- Conflict with principles of morality
- Against public order
- Unauthorized use of national insignia and protected emblems
- Unauthorized use of protected armorial bearing, state emblems or flags
Who can contest my trademark registration?
Anyone can contest a trademark registration.
Is it possible to cancel a registration?
Yes. The following grounds make it possible for a registration to be cancelled:
- Proprietary rights
- Descriptive, not distinctive, misleading, disparaging, deceptive, functional, or generic marks
- Conflict with famous a trade name
- Conflict with a famous personal name
- Use of geographical indication
- Conflict with morality or public order
Are there any rights established by having a registered trademark?
Yes. Owners of a registered mark in this jurisdiction establish these rights:
- Exclusive right to use the mark
- Right to challenge later conflicting applications
- Right to appeal for the cancellation of a later conflicting registration
- Right to file an infringement case against third parties that use a confusingly similar mark
- Right to authorize and give license to third parties to use the mark
- Right to appeal for the confiscation of fake goods bearing the mark
- Right to receive payment from parties that infringed the mark
- Right to file an infringement case against third parties that use the transliterated version of the mark
- Right to object to applications that use the transliterated version of the mark
How long is the opposition period?
The opposition period starts on the date the application was published and ends two months after that date.
Is South Korea a member of the Madrid System?
South Korea is a signatory of the Madrid Protocol.
Do I need to present periodic statement of use?
No, it is not a requirement to present any filing that would set forth the owner’s use of the mark.
When should I renew my trademark?
Renewals are made every 10 years after the expiration date of the registration.
What will be the renewal date of my trademark?
The renewal date is counted 10 years from the date the mark was registered.
Is there any documentation that should be presented when renewing a trademark?
A power of attorney is necessary to renew a mark.
If my trademark expires, do I have a grace period?
A 6-month grace period is available after the mark’s expiration date.
What is a trademark?
A trademark identifies a company’s products and services and distinguishes them from those of its competitors in the market. The name (the verbal element) is not the only component of a trademark—figurative elements such as logos, design, images, colors, and sounds also create an identity that can be protected by trademark registration.
With the registration, the owner (person or company) becomes the owner of the trademark. The registration is given for a particular country/territory, for certain products or services, and for a specific term. While the registration is in force, only the owner may use the trademark in the market where the trademark is registered.
Some symbols to consider:
® Means the trademark is registered.
TM Some countries use this trademark symbol to show that the trademark has been filed at the trademark office and is still undergoing the registration process.
SM Some countries use this service mark symbol to show that the service mark has been filed at the trademark office and is still undergoing the registration process.
What is the difference between a trademark, patent and copyright ?
You can lay claim to your work in many ways. Trademarks, patents, and copyrights offer protection to intellectual property owners. A trademark helps people find your goods and services. When recognized as a registered mark, it protects your right to exclusively use the image, logo, phrases, or words to distinguish your goods or services from others in the market.
A patent safeguards ideas and inventions. It gives a creator or inventor exclusive rights that prevent other people from making, using, or profiting in any way from an invention or creative innovation without the consent of the inventor.
You cannot patent an idea alone (otherwise we’d all be doing it). You must materialize your concept into a tangible invention, innovative product, device, or process that offers new solutions to an existing problem.
Copyright protects all types of original published, performed, and printed creative works of art, literature, and music. It prevents people from using, reproducing, or distributing copyrighted works without the permission of the artist, author, composer, etc. Types of work covered by copyright protection include:
- a) artwork (2 or 3 dimensional),
- b) photographs, graphic drawings, and designs as well as other forms of creativity;
- c) songs, music, and sound recordings of all kinds;
- d) books, manuscripts, publications, and another written work; and
- e) plays, movies, shows, and other performance arts.
Trademarks, patents, and copyrights are all examples of ways you can protect your intellectual property. Your rights to control and benefit from your efforts are increasingly important in our global economy. Registering a formal claim to your property is a critical step in protecting what you own.
What is the difference between TM, SM, ® and other symbols?
The symbol of a circled letter R after a trademark name or graphic image means that the preceding trademark has been registered. Various typographic symbols indicate copyrights and patents. The presence or absence of a symbol does not change the validity of the registration, but the best practice is to use circle‑R or circle‑C for copyrights every time you mention your intellectual property in print. These symbols give legal grounds for claiming damages in trademark litigation. The following is a list of some typical marks you can use on a web page, in written content, or even in a marketing letter.
- TM: The TM or trademark symbol indicates an unregistered trademark for one of 34 different classes of products. Owners use this symbol to claim the preceding name or logo as the Trademark of their product.
- SM: The SM or service mark symbol is similar to the TM symbol except it indicates a claim to a mark for a service (one of 11 classes of service) rather than a tangible product.
- ®: Use the ® symbol once you’ve registered your trademark or service mark. It shows that the country authority has approved the registration.
- ©: Use the © symbol to indicate copyrighted material. The copyright notice should appear on the material as Copyright © followed by the date the work was created, the copyright owner’s name, a period, and finally “All Rights Reserved.” Like this: Copyright © 2021, John Smith. All Rights Reserved. Use it whether the copyright has been registered or not.
- Patent Pending: The phrase Patent Pending shows that you filed a patent application but cannot guarantee the application's approval.
What are trademark classes?
Trademark Offices around the world use classes to divide commercial products and services into defined categories. When you apply for your trademark to protect your brand, you must define the class or classes that you believe best describe your business activity.
Countries around the world have standardized 45 classes (34 for products and 11 for services) for international use under the Nice International Classification.
These classes group all known products and services. If applicable, you can register the same trademark in more than one class; for example, you may register the trademark KING for computers in class 23 and register the same trademark in class 24 for cosmetics.
Trademark protection only extends to commercial use within your specified classes. It is, therefore, possible for two entities conducting business in different classes to use identical or similar trademarks and for each entity to enjoy full trademark protection in their respective classes. If you feel that protection should extend to include more than one class, you can choose multiple classes under which to conduct business.
You can search for your trademark class with this Trademark Class Search tool.
Why do I need to perform a trademark search?
Once you have a product or service and think you have a name for it, how do you know you can use it as your own? What happens if you unintentionally use a registered trademark name?
Too many people use a name without knowing whether or not they have the legal right to do so. They organize massive marketing campaigns with names they later find they’re not allowed to use. Performing a comprehensive search before deciding which trademark to register is a wise thing to do, especially when you consider future risks of litigation.
It is a good idea to carry out some research before starting to do business with a trademark. It may not be in your best interest to use a mark if another company is already actively conducting business in the same class. The other company may object to you using the trademark and legally prohibit you from doing so.
Do I need an Attorney to perform a Trademark Search?
No, you don’t, but if you have little or no experience dealing with trademarks, we suggest you seek professional help. Our company offers a Comprehensive Trademark Study service. The Study gives you details of the classes in which you might want to register your trademark; it also lists identical and similar trademarks, and finally, you get an Attorney's recommendation about registration possibilities and use of your trademark.
Where can I perform a trademark search?
If you know a little about trademark registration, you can search using any online trademark search tool. If not, we recommend that you hire a trademark attorney or trademark service like Nominus.com to handle your trademark registration requirements, especially the trademark search because the process is complex and relatively time consuming.
Please note that if you don’t manage to complete the application process correctly, the registration can drag on for several months and end up costing far more than you intended to pay. The trademark search is a critical part of the process.
A broad trademark search is essential in today's marketplace, given the increasing number of unregistered and common law trademarks. Globalization also raises the question of entering international markets and registering trademarks in foreign countries to protect both your brand and your property rights.
Please note that even a completed comprehensive trademark search does not necessarily guarantee your trademark will be accepted and registered. A Comprehensive Trademark Study includes an extended review process and, more significantly, a formal evaluation of the likelihood that your application will be successful.