In South Korea, registration is compulsory in order to be granted rights to a trademark, as this jurisdiction is “first-to-file”. However, in exceptional cases, well-known trademark can be protected even if they have not been filed yet.
Trademark applications are filed with the Korean Intellectual Property Office (KIPO).
South Korea is also a member state to the Madrid Protocol. Thus, the extension of an international registration of a trademark via the Madrid System is possible for this country. For further information regarding our services for trademark filing through the Madrid System click here.
Although use of a trademark prior to the application is not required for it to register, it may be useful in case an objection is raised on the grounds of lack of distinctiveness, as it may help overcome the objection by proving that the trademark has acquired distinctiveness.
If you register a combined trademark (which includes both word elements and figurative elements) in South Korea, the exclusive right to use the trademark is limited to a use of the trademark in the exact configuration or way in which it was filed and registered. If you wish to use the word element of your trademark separately from the logo (or vice versa), it is recommended you register for another trademark including only the word or figurative elements you wish to use and protect separately.
Nevertheless, if a third party eventually intends to register or use a trademark for similar goods or services that includes a primary or distinct part or portion of your trademark, you will have the right to oppose the application based on confusing similarity.
Third party opposition actions may be filed against a trademark application within a period of two (2) months following its publication in the Trade Marks Journal. The probabilities of success for an opposition will vary in each case depending on the circumstances. The probabilities of success for an opposition will vary in each case depending on the circumstances.
While it is not necessary for the mark to be in use at the moment of registration, it will need to be used within three years after registration, or during the three years immediately prior to the filing date of a non-use cancellation action, otherwise it will be vulnerable to such actions. In order to prevent this vulnerability, the use of the trademark in South Korea must be on a commercial scale.
In South Korea trademarks have a validity of ten (10) years from the date of registration and can be renewed for indefinite periods of ten years. The renewal can be requested within the year preceding the expiration, or in the six months following it upon payment of late renewal fees.
For trademark search reports the trademark must be composed of the Latin alphabet and will only consider other trademarks in the Latin alphabet. If you wish to register a trademark that is composed of Korean characters, the trademark search must consider trademarks written in Korean characters. Please contact us if this is the case, additional fees will apply.