Navigating the Trademark Registration Process in South Korea

South Korea is an excellent illustration of a country that achieved economic prosperity in the latter half of the twentieth century. In just fifty years, it became one of the wealthiest nations on Earth.

However, it's important to keep in mind that with this economic prosperity comes intense competition in the local market, which often requires exporters to comply with national legislation on trademark protection. South Korea adopts a first-to-file system, so if you don't register your trademark in South Korea, it won't be recognized.

The Korean Intellectual Property Office (KIPO), which falls under the Ministry of Science and ICT is responsible for examining, publishing and registering trademarks in South Korea. To file a trademark application in South Korea, the applicant must provide the following:

• The name, address and nationality of the applicant
• A representation of the trademark
• The list of goods or services to which the trademark will apply
• The filing date and application number, if the application is filed offline
• The fee for filing and registering the trademark
• Documents certifying the trademark's use in commerce may be required at a later stage in the process

The application shall be processed through the following stages:

Search

The uniqueness of a brand is determined by its trademark. The simpler it is to maintain the proprietary use of a trademark, the more distinct it is. To begin, check the database of South Korea trademarks to ensure that your mark does not already exist and that it will not cause consumer confusion. A comprehensive South Korea trademark search is key to protecting yourself from time-consuming and costly disputes with others who may have similar trademarks in South Korea. After searching and ensuring the distinctiveness of the trademark in South Korea, the owner should proceed to file their trademark to the Korean Intellectual Property Office as soon as possible.

Examination

The Trademark office will assess the application for formality, before moving on to classification. Reviewing for descriptiveness, distinctiveness and deception is also part of this stage. If there are any potential conflicts with pre-existing applications, those will be examined at this time as well.

Publication

The "publication" stage of the trademark application process makes the information about the trademark, such as mark, name of applicant, address of applicant or their goods/services available to everyone online and in published form. After that time, others can file opposition against the holder for a period of two months from date of publication.

Registration

When the trademark meets the requirements of examination without legitimate opposition, the holder shall be granted for the trademark registration certificate. At that time, the holder shall have total rights for their trademark. You will then be required to use the trademark in commerce within six months of registration, or provide evidence of use to the Trademark Office. If you do not use the trademark, it may become abandoned.

Enforcement

Once your trademark is registered, you have the exclusive right to use it in commerce in South Korea. If someone uses your trademark without your permission, you can take legal action to stop them and claim damages.

You can also file a complaint with the South Korea Fair Trade Commission if you believe that someone is using your trademark in a way that is likely to cause consumer confusion. The Commission can order the offender to stop using the trademark and impose fines.

Validity

The effectiveness of the trademark certificate is 10 years from registration date and the holder needs to renew this certificate for their trademark to avoid cancellation of the same. A registered trademark can also be cancelled if it is not used in commerce for an extended period of time, or if it becomes generic or descriptive.

Fast-Track Examination in South Korea

Under regular procedure, the first examination result by KIPO is delivered 8-10 months after the filing date. Including the time for publication and oppositions if any, the whole process of registering a trademark in South Korea may take anything from 1 to 1.2 years from the filing date.

However, under the fast-track system, once the application is accepted, applicants may receive their examination results within 1-2 months from the date of request. This process cuts down a period of at least six months as compared to the regular system, which can help speed up Company Registration in South Korea.

Various grounds can help you qualify for a fast-track examination, some of which are:

• The most frequent reason for requesting fast-track examination is that the applicant is presently using the trademark in Korea or intends to do so shortly. The use of the trademark must be backed up by concrete evidence for at least one item in each group of designated goods that the applied-for mark covers.
• The owner of a trademark can also request a fast-track examination for the same mark if they failed to renew the registration.
• If a third party issues a warning letter regarding the usage of one's mark, then a request for a fast-track examination can be made.
• If the trademark of an applicant is unlawfully taken by an unauthorized person, fast-track examination can be requested by providing evidentiary materials such as a copy of the cease-and-desist letter or a copy of the temporary injunction petition, etc.

As of 2019, the Korean Intellectual Property Office (KIPO) has made it possible to request fast-track examination on the basis of the aforementioned grounds, thus providing a very easy and efficient way of accelerating trademark registration as a result.

Registration of a trademark provides a number of benefits, including:

• It implies the validity and legitimacy of the mark, grants the right to use the registered trademark symbol: ®, while granting exclusive right to use the registered mark to the registrant, who is now the owner of the mark.
• Registration of a trademark in any country may serve as the basis for increasing the scope of registering it in other countries.
• Not only does it grant the right to file a trademark infringement lawsuit in court, but it also entitles the owner to receive monetary compensation from the infringer, including their profits, damages, costs, etc.
• In many countries, if the Trademark Office checks for similar marks, a trademark will not be registered if it is too similar to another already-registered mark. Otherwise, the owner of a similar mark must go through the hassle of filing an opposition.

If you are considering registering a trademark, our team at Global Trademark Company can help you through the process. We offer wholesome trademark registration services that will help you to protect your trademark and keep it safe from infringement.