SINCE 1997
DAEILPAT
Daeil Int'l Patent & Trademark Law Firm

Trademarks

 

Overview

 

History of the Korean Trademark system

• 1908: The Trademark Decree was promulgated. 

• 1946: The Patent Institute was established and patent laws were enacted.

• 1949: The Trademark Act was enacted.

• 1977: The Korean Intellectual Property Office (KIPO) was established as an independent office under the Ministry of Commerce, Industry and Energy.

• 1979: Korea joined the World Intellectual Property Organization (WIPO).

• 2002: KIPO submitted an application to WIPO to join the Trademark Act Treaty.

• 2003: KIPO submitted an application to WIPO to join the Madrid Agreement.

 

What is a Trademark?

• Concept of a trademark under the Trademark Act

A trademark refers to all sensible methods of expression used to distinguish one's goods from those of another. However, since it is difficult to protect all such methods legally, the Trademark Act places limits on the protectable constituents of a trademark. Previously, these constituents were limited to a symbol, character, diagram, three-dimensional shape, or any combination thereof, as well as color combinations of the mark. On July 1, 2007, protection under the Trademark Act expanded to include a mark formed by a single color or a combination of colors, holograms, motions, and all types of visually recognizable marks.

 

To reflect the ROK-EU FTA, the Trademark Act was amended to include regulations to reject a trademark application that is identical or similar to a geographical indication already protected by the FTA and Korean laws.

 

Additional amendments to the Trademark Act based on the ROK-US FTA permit non-visual trademarks such as sounds and smells to be eligible for trademarks. A certification mark was also introduced to guarantee the quality and characteristics of goods or services (enforced on March 15, 2012).

 

In addition, marks that do not distinguish one's goods from another's are not deemed to be a trademark. If a design is only used to inspire users with its aesthetic nature or as a price mark irrelevant to the identification of owners, it shall not be deemed a trademark in accordance with the Trademark Act. On the other hand, service marks, collective marks, and business emblems may be regarded as trademarks.

 

 

• Concept of a service mark

A "service mark" refers to a mark used by the owner of a service business (advertisement, communication, banking, transportation, restaurant, etc.) to distinguish his/her service business from that of others. In other words, a trademark is the identification mark of a "product", while the service mark is an identification mark of a "service business."

 

• Concept of a collective mark

A "collective mark" refers to a mark intended for use by a legal entity founded in association with persons who conduct business activities such as producing and selling goods; members of the legal entity can use the mark for their goods and services.

 

• Concept of a business emblem

A "business emblem" refers to a mark used by a person engaged in a nonprofit business like the YMCA or Boy Scouts to indicate that person's business (e.g. Republic of Korea National Red Cross, Junior Chamber, Rotary Club, Korea Consumer Agency, etc.)

 

 

Neighboring concepts of a trademark

• Trademark and trade name

A trademark is an affixed mark that distinguishes one's goods from those of another, thereby preserving the identity of the goods. It may consist of symbols, characters, diagrams, a combination of these, or a combination of colors of these. A trade name is a name used by a merchant (legal equity or individual) to indicate his/her service business and to maintain its identity. A form of personal name, the trade name is depicted and formed by characters, and must be used in the case of companies.

 

To address the international trend of trademarks composed of a trade name, or vice versa, a trade name may be used as a trademark in accordance with the Corporate Identification Program. A trade name used for a product mark may be protected as a legal trademark if it is registered in accordance with the requirements of a trademark registration. This growing number of trademarks composed of trade names will likely result in overlapping cases between two parties.

 

 

• Trademark and geographical indication

While a trademark identifies a "specific business subject" providing goods or services, a geographical indication identifies the "specific region" of origin of goods and/or the characteristics of a specific region the goods possess. A geographical indication enables one business to exclude other competitors from using a certain mark, but unlike a trademark, it has no "exclusive owner."

 

Both a trademark and a geographical indication have the function of representing the origin and quality of goods, relating to business profits and receiving protection under the scope of intellectual property. Based on these similarities, some countries protect geographical indications as a trademark under a trademark and geographical indication protection act; other countries protect geographical indications as a collective mark or certification mark under a trademark act.

 

In the Republic of Korea, geographical indications have been protected as a collective mark under the Trademark Act (Act No. 7290) since July 1, 2005. Under the act, if a product has a specific quality, reputation, or characteristic originating from the geographic characteristics of a region such as the climate, soil, or topography of the region, or personal conditions like traditional production methods, the geographical indication denotes the region in which the goods are produced, manufactured, and processed.

 

 

• Trademark and domain name

A domain name refers to the Internet Protocol address (IP address) of a website used to identify the location of the host server as well as ownership of the website. Trademarks indicate the source of goods, while domain names indicate the host server of a website. Thanks to the emergence of e-commerce, the domain name itself also serves as an indicator of the origin of goods or services. Cyber-squatting, the practice of registering another's trademark and then selling that trademark to the rightful owner at a higher price, has become more frequent across the internet leading to an increase in disputes over trademarks and domain names.

 

In the Republic of Korea, the registration of a trademark does not in principle grant its owner the right to register a domain name corresponding to the trademark or vice versa.

 

 

Purpose of a trademark system

The purpose of a trademark system is to contribute to the development of industry and protect the interests of consumers by maintaining the business reputation of those persons using trademarks through protection of such trademarks (Article 1 of the Trademark Act).

 

 

Function of a trademark

• Distinguish one's goods from those of another

Allow consumers to distinguish my goods from another's by affixing a trademark to the goods

• Indicate the origin

Inform consumers that products with the same trademark originate from the same source

• Guarantee quality

Guarantee consumers that all products with the same trademark have the same quality

• Advertising

Remind consumers of the goods associated with a trademark as a promotional method in commercial transactions

 

 

Requirements for trademark registration

• Personal requirements (a person who is entitled to register a trademark)

Any person (legal equity, individual, joint manager) who is using and intends to use a trademark, as a person who is entitled to be granted trademark rights in Korea, may register a trademark as prescribed by the Trademark Act.

 

All Koreans (including legal equity) are eligible to own trademark rights. The eligibility of foreigners is subject to treaty and the principle of reciprocity.

 

• Substantive requirements

Trademark registration requirements are classified into procedural requirements (i.e. application type) and substantive requirements (i.e. positive requirements, passive requirements) to ensure that the composition of the trademark itself has sufficient distinctiveness to distinguish it from other trademarks.

 

  1) Positive requirement

The most important function of a trademark is to distinguish one's goods from those of another. For registration, the trademark must have a distinctive feature that enables traders and consumers to distinguish the goods from others. Article 6(1) of the Trademark Act restricts registration of a trademark under the following cases:

   a.Usual name of the goods

The mark indicates only the name of the goods, regarding specific goods, (e.g. snack goods - corn chip, confectionery - walnut cake, automobile - car)

 

   b. Mark customarily used on the goods

The mark is customarily used on a specific kind of goods among businesses engaged in the same industry (e.g. confectionery - dry cake, alcohol - refined rice wine, textiles - Tex)

 

   c. Mark describing the features of goods

Origin mark: Indicates the origin of the goods (e.g. apple - Daegu, ramie fabric - Hansan, dried croaker - Yeonggwang)

Quality mark: Indicates the quality and superiority of the goods (e.g. Low, Middle, High, Special, Super)

Raw material mark: Indicates the name of raw materials used in the goods (e.g. suit - wool, necktie - silk)

Performance mark: Indicates the effect or performance of the goods (e.g. TV - Hteck, copier - quick copy)

Usage mark: Indicates the usage of the goods (e.g. bag - student, clothes - lady)

Quantity mark: Two pairs, 100m, etc.

Shape mark: Indicates the ordinary shape and size of the goods (e.g. small, large, capsule, slim)

Production method, processing method, business method marks:Indicate how the goods are produced, processed, and used (e.g. farm produce - natural agricultural method, shoes - handmade, desk - fabricated)

Time mark: Indicates when the goods are used (e.g. tire - all-weather; clothes - spring, summer, autumn, winter)

 

   d. Conspicuous geographical name, an abbreviation, or a map

The mark consists solely of a sign indicating a conspicuous geographical name, its abbreviation or map (e.g. Mt. Geumgang; Mt. Baekdu; New York, etc.)

 

   e. Common surname or name of legal entity

The mark indicates the surname of ordinary persons, or the name of legal entity/group, or a trade name (e.g. Lee, Kim, President, commercial company, association, Chancellor, etc.)

 

   f. Simple and commonplace sign

The mark consists solely of a very simple and commonplace sign (e.g. 123, ONE, TWO, etc.)

 

g. Other marks without distinctiveness

Common slogans, catchwords, expressions used in greetings (e.g. Believe it or not, I can do it, www, etc.)

The necessity for distinctiveness is judged based on when the registration of a mark is concluded. In a combined mark, the distinctiveness is judged based on the whole of the constituents of the mark, and common traders or consumers related to the designated goods. If one does not have to consider the relation with the designated goods, it is judged by the common average recognition criteria.

 

"Mark indicated by a common method" refers to a mark which is represented with printed or italic-type Korean, Chinese, or Roman characters. "To consist solely" indicates that if a mark includes a common name, but it is part of the distinguishing mark, or it is absorbed in the distinguishing mark and constitutes a coordinated whole, the distinctiveness is wholly recognized, except in cases in which two or more technical marks are combined.

 

Even if a trademark falls under paragraphs c, d, e, or f from above, when, as a result of using the trademark before the application for registration, consumers are easily able to recognize the person whose goods are indicated by the trademark, the trademark may be registered (Article 6(2) of the Trademark Act). Also, notwithstanding marks that are subject to paragraph c (applied only to the origin) or d above, whenever the mark is used as a geographical indication on specific goods, a collective mark for a geographical indication may be registered for the designated goods that use the geographical indication (Article 6(13) of the Trademark Act).

 

   2) Passive requirement (denial of registration)

Even if a trademark has distinctiveness, when it grants an exclusive license, or when it infringes public good or another person's profit, the trademark registration needs to be excluded. The denial of registration is restrictively enumerated in Article 7 of the Trademark Act.

 

   a. Trademarks that are identical or similar to the following: the national flag, the national emblem, as well as colors, medals, decorations or badges of the Republic of Korea, official signs and hallmarks indicating control and warranty of the Republic of Korea or its public institutions;

 

    a-2. Trademarks that are identical or similar to the following: the national flags of the allies of the Paris Convention for the Protection of Industrial Property (hereinafter referred as the "Paris Convention"), of members of the World Trade Organization, or of the signing parties to the Trademark Act Treaty (hereinafter referred to as "the allies" in this clause);

   

   a-3. Trademarks that are identical or similar to the following: the titles, the acronyms, or marks of the International Red Cross, the International Olympic Committee, or well-known international organizations (this is not applied in cases where the International Red Cross, the International Olympic Committee, or well-known international organizations have applied for trademark registration on their titles, acronyms, or marks);

 

    a-4. Trademarks that are identical or similar to the following: the national flag, the national emblem as well as colors, medals, decorations, or badges of the allies of the Paris Convention, or the titles, the acronyms, the national flag, the national emblem, as well as colors, medals, decorations or badges of inter-governmental international organizations (in case the allies are members), which are designated by the commissioner after being informed by the World Intellectual Property Organization (WIPO) based on Article 6, Clause 3 of the Paris Convention (this is not applied in cases where allies or inter-governmental international organizations apply for trademark registration on their titles, acronyms (limited to the inter-governmental international organizations) or marks);

 

   a-5. Trademarks that are identical or similar to the following: official signs and hallmarks indicating control and warranty of the allies or public institutions, which have been designated by the commissioner after being informed by the World Intellectual Property Organization (WIPO) based on Article 6, Clause 3 of the Paris Convention; or applications regarding the same or similar products with those signs and hallmarks;

 

   b. Trademarks that falsely indicate a connection with, or that criticize, insult or are liable to defame any nation, race, ethnic group, public organization, religion or well-known deceased person (e.g. Yankee, Negro, etc.);

 

   c. Trademarks that are identical or similar to well-known marks that indicate a nonprofit business of a state, a public organization or its agencies or public corporations, or a nonprofit public service (e.g. YMCA, KBS, RED CROSS, etc.);

 

   d.Trademarks whose meaning and details are perceived by users as being liable to contravene public order or morality (e.g. obscene shapes or characters, words like swindler or pickpocket, etc.);

 

   e. Trademarks comprised of a mark that is identical or similar to a medal, certificate of merit or decoration awarded at an exhibition held by or with the authorization of the government of the Republic of Korea or at an exhibition held by or with the authorization of the government of a foreign country;

 

   f. Trademarks containing the name, title or trade name, portrait, signature or seal, famous pseudonym, professional name or pen name of well-known persons, or an abbreviation of these (e.g. DJ, JP, KEPCO, LH, etc.);

 

   g. Trademarks that are identical or similar to another person's registered trademark;

 

   h. Trademarks that are identical or similar to another person's registered trademark when no more than a year has elapsed since the date on which the trademark right expired;

 

   h-2. Trademarks that are identical or similar to another person's registered collective mark for a geographical indication when no more than a year has elapsed since the date on which a registered collective mark for a geographical indication expired;

 

   i. Trademarks that are identical or similar to another person's trademark when that other person's trademark is well known among consumers;

 

   i-2. Trademarks that are identical or similar to another person's geographical indication when that other person's geographical indication is well known among consumers;

 

   j. Trademarks that are liable to cause confusion with the goods or services of another person because consumers easily recognize the trademark as designating the goods or services of the other person;

 

   k. Trademarks that are liable to mislead or deceive consumers regarding the quality of the goods;

 

   l. Trademarks that are identical or similar to a trademark that consumers inside or outside the Republic of Korea easily recognize as indicating the goods of a particular person, and which are used to obtain unjust profits or to inflict harm on a particular person and so on;

 

   l-2. Trademarks that are identical or similar to a geographical indication that consumers inside or outside the Republic of Korea easily recognize as indicating the goods of a certain region, and which are used to obtain unjust profits or to inflict harm on the legitimate users of the geographical indication and so on;

 

   m. Trademarks that consist solely of three-dimensional shapes that are essential for securing the functions of goods, or their packages, that require trademark registration;

 

   n. Trademarks that consist of a geographical indication or include a geographical indication of the origin of wines or spirits of a member state of the World Trade Organization, and which are used for wines, spirits or other similar goods ; however, this provision does not apply if a legitimate user of a geographical indication applies to register a collective mark for a geographical indication and the relevant goods are the designated goods;

 

   o. Trademarks that are identical or similar to the form names registered in Article 111 of the Seed Industry Act, or trademarks used regarding the same or similar products with those form names.

 

Under Article 7(5) of the Trademark Act, if a trial for the cancellation of trademark registration is requested, and if any of the following subparagraphs occurs after the date of requesting the cancellation trial, the owner of the trademark rights and any person using the trademark may not obtain trademark registration for a trademark that is identical or similar to a registered trademark extinguished with respect to goods that are identical or similar to the designated goods of the extinguished registered trademark, unless three (3) years have elapsed since the day on which each of the following subparagraphs occurs:

   a. Where the trademark right has been extinguished because the term has expired;

   b. Where a person with the trademark rights abandons the trademark rights or some of the designated goods;

   c. Where the trial decision on the cancellation of a trademark registration has been finalized.

 

 

Information on trademark applications

• A single application for a single trademark

According to the Doctrine of a Single Application for a Single Trademark, an applicant shall file a single trademark application for each of the classes of goods he/she has designated as prescribed by an ordinance of the Ministry of Knowledge Economy. The filing of two trademarks in one application is not permitted.

This doctrine is principally applied to an application for new trademark registration, an application for the additional registration of designated goods, and an application for renewal of the term of a trademark right.

Under the Trademark Act enacted in 1997, the "Principle of a Single Application for a Single Trademark" was abolished on March 1, 1998, while the "Principle of One Multiple Class Application for a Single Trademark" was implemented. As a result, an applicant must file an application for each trademark and designate both the trademark and service business in the application.

 

 

• Designation to use a registered trademark

When an applicant files an application for trademark registration, he/she may designate a trademark and the goods using the trademark to be protected as one or multiple classes in accordance with the 'Classification of Goods' and the 'Notice of the Name and Classification of Goods and Service Businesses' as specified in Article 6 of the Enforcement Regulations of the Trademark Act. The Addendum of the Enforcement Regulations of the Trademark Act specifies 34 classifications of goods from the 1st class to 34th class and 11 classifications of service businesses from the 34th class to 45th class.

Before March 1, 1998, the Korean Intellectual Property Office used the classification of goods class prepared by KIPO. Now, KIPO uses the 'Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks.'

 

 

• Additional application of designated articles

If the scope of a trademark needs to be expanded due to the situation after application or registration, the applicant or owner of the trademark rights may register the additional designated goods which adds new articles to the goods designated by the registered trademark or trademark application. As a result, the scope of the trademark rights will be extended to protect the owner of the rights.

 

An applicant may designate one or more articles at a time. However, for designated goods added after filing an application or registration, the applicant must file an additional application for goods designated separately and add them to the application or registration.

 

To register additional designated goods, the following criteria must be met and must not correspond to any reason for refusal against common trademark applications: the owner of the original trademark rights or application for original trademark registration must be in existence; the applicant must be the same as the owner of the registered trademark or applicant for trademark registration; and the trademark under which the additional designated goods are to be registered must be the same as the relevant registered trademark or trademark application.

 

When there is an additional registration of designated goods, the goods are incorporated into the original trademark rights as a combined whole. As the original trademark rights are extinguished, the additional registration is extinguished as well. However, grounds for invalidation cases of infringement shall be judged independently, irrelevant of the original registration.

 

Prior to March 1, 1998, the Trademark Act restricted the registration of two of the same trademarks in the same class of goods and the additional registration articles were limited to the same classification of goods. After the registration system for a multiples class application has been implemented, an applicant can file a separate application and registration for each article.

 

 

• Divisional application

If an applicant designates one or more goods on his/her application, the application can be divided into two or more applications for each good or classification of goods. In other words, a divisional application does not entail a division of the trademark, but a division of its designated goods.

 

 

• Conversion of application

The conversion of an application is permitted among trademark applications, service mark applications, and collective mark applications with the exclusion of collective mark applications for geographical indication and business emblem applications.

 

An application to renew the term of registered trademark rights or an application for the additional registration of designated goods may be converted into an application for trademark registration, except if an invalidation trial or a cancellation trial is requested in relation to the registered trademark that served as the basis of the converted application. To prevent the misuse of this system, the conversion of an application is not permitted where an invalidation trial or a cancellation trial is requested.

 

In addition, the conversion of an application through other Acts (mutual conversion of an application among trademark, patent, utility model, and design) must not be permitted - including reciprocal conversion of an application among an application for new trademark registration, an application for additional registration of designated goods, or an application to renew the term of registered trademark rights.

 

 

• Application to renew the term of a registered trademark

The term of registered trademark rights is ten (10) years from the registration date. However, the term may be extended by an application to renew the term of the trademark rights every 10 years. As long as the trademark rights are in use, they are considered semi-permanent.

 

To renew the term of registered trademark rights, an applicant shall file an application to renew the term within one year before its expiration date. If the term has expired, the applicant may file an application to renew the term within six (6) months of the expiration date. In this case, the applicant shall pay a required negligence fine.

 

 

Trademark right

• Term of a trademark right

The term of a trademark right commences at the time of registration and ends after ten (10) years. However, the term may be extended every ten (10) years through an application for renewal. As long as the trademark rights are in use, they are considered semi-permanent.

 

To renew the term of registered trademark rights, an applicant shall file an application for renewal within one year before the expiration date. If the term has expired, the applicant may file an application to renew the term within six (6) months of the expiration date. In this case, the applicant shall pay a required negligence fine.

 

 

• Extinguishment of a trademark right

Trademark rights will be extinguished as a result of the following reasons: the term of the trademark right expires as a result of the owner's failure to renew the term; the owner abandons the trademark rights at his/her will; or the owner fails to apply for registration of the reclassification of goods within the given period for goods registered under the previous classification of Korean goods. In the case of the passing of the original owner of the trademark rights, if an application to transfer the registered trademark rights is not filed by a successor in title within three (3) years of the death of the original owner of the trademark, the trademark rights are extinguished on the day after the expiry of the three-year period following the death of the original trademark owner.

 

 

• Application to register the reclassification of goods

A trademark rights owner who has obtained trademark registration, a supplementary registration of designated goods or a registration for renewal of the term of a registered trademark for designated goods in accordance with the Korean Classification of Goods before March 1, 1998, shall reclassify the designated goods under the Classification of Goods (NICE Classification) as prescribed by the Ordinance of the Ministry of Commerce, Industry and Energy.

 

An application to register the renewal of the term of a registered trademark and an application to register the reclassification of goods may be filed through one application. If an applicant fails to register the reclassification of goods within the given period, the trademark rights for the designated goods to be reclassified shall extinguish on the expiration date of the given period.

 

An application to register the reclassification of goods must be filed within one (1) year before the date on which the term of the trademark right expires and no later than six months after the expiration date of the term.

 

 

• Transfer of a trademark right

The transfer of a trademark right replaces only the trademark right owner, keeping the content of the trademark right intact. Since trademark rights are intangible property rights, they need to be freely transferrable like common property rights. However, the transfer of trademark rights may be restricted if necessary to protect the owner's profit as outlined in the Trademark Act.

 

Generally, a trademark right may be freely sold or donated without reference to business, and divided by each of its designated goods.

 

 

• Trademark license system

   1) Exclusive License

Generally, a trademark right may be freely sold or donated without reference to business, and divided by each of its designated goods.

 

Accordingly, the licensee is entitled to seek prevention or injunction against other persons using a trademark identical or similar to the licensed trademark. The licensee may also transfer the exclusive license, or grant nonexclusive rights to others with the consent of the trademark rights owner.

 

An exclusive license has no effect on third parties unless it is registered and transferred (registration is a preferential right against third parties). An exclusive licensee shall specify his/her name or title to goods which use a registered trademark.

 

   2) Nonexclusive License

A trademark rights owner or an exclusive licensee may grant a nonexclusive license for the use of his/her trademark rights to others. The nonexclusive licensee is entitled to use the registered trademark regarding the designated goods as outlined in the license agreement. The nonexclusive licensee may transfer his/her rights to others with the consent of the trademark rights owner or the exclusive licensee.

 

In addition, since a nonexclusive licensee is only entitled to use a registered trademark for the designated goods, he/she has no injunction rights against infringement. Only a trademark rights owner or an exclusive licensee is entitled to seek injunction against infringement.

 

A nonexclusive license has no effect on third parties unless it is registered and transferred (registration is a preferential right against third parties). A nonexclusive licensee shall specify his/her name or title to goods which use a registered trademark.

 

 

Protection of an owner of trademark rights

• Effect of a trademark right

Once a trademark is registered, the trademark rights owner is entitled to exclusively use the registered trademark for the designated goods; seek injunctions against others using a trademark identical or similar to the registered trademark; and exercise claims of infringement injunction or a right of compensation for damages against others who infringe his/her trademark rights by using any trademark identical or similar to the registered trademark.

 

• Infringement

Without the consent of the trademark rights owner, the following are considered to infringe upon trademark rights: (i) acts of using a trademark that is identical or similar to the registered trademark of another person on goods that are identical or similar to the designated goods; (ii) acts of delivering, selling, counterfeiting, possessing, or keeping a trademark right that is identical or similar to the registered trademark of another person in order to use or cause a third party to use the trademark on goods that are identical or similar to the designated goods.

 

• Remedies for an infringement of a trademark right

The remedies for an infringement of a trademark right are as follows:

   ① Civil remedy: A claim of infringement injunction, a right of compensation for damages, provisional disposition, provisional seizure, recovery of reputation, etc.;

   ② Criminal remedy (irrelevant of complaint): Offense of infringement, confiscation, etc.;

   ③ Administrative remedy: Control of counterfeit goods, border measures by customs authorities, and settlement of intellectual property rights dispute, etc.

 

 

Protection of well-known foreign trademarks

Well-known or famous trademarks are protected, regardless of whether they are registered under the Trademark Act or not, by restricting the registration of an identical or similar mark. An application for the registration of a similar mark filed by a person other than the owner of the trademark will be rejected; and, if the registration is erroneously granted, it will be subject to invalidation.

 

Registration of a similar mark will also be rejected even if the goods and/or services of the trademark application are not identical or similar to those of the well-known trademark due to the possibility of misleading the consumers about the origin of the goods or services. Furthermore, an interested party may request a trial or invalidation of registration of a similar trademark.

 

Under the revised Trademark Act in effect since March 1, 1998, the registration of a trademark shall be refused when the application is made for unfair purposes, such as the aim of free-riding on the reputation of the marks which are well-known in the Republic of Korea.

 

In addition to the Korean Trademark Law, the Unfair Competition Prevention Act also provides protection of well-known trademarks. Any person who is, or is likely to be, injured by acts of unfair competition such as acts causing confusion with another person's goods or business facilities by using an indication identical with or similar to another person's name, trade name or marks, including well-known trademarks, may bring a civil action before the court seeking an injunctive relief, monetary damage and/or restoration of injured business reputation or goodwill. Furthermore, the Law also set forth criminal provisions.

 

 

Collective mark right for a geographical indication

• Concept

"Geographical indication" refers to a mark or symbol that identifies a product as originating in a certain region where a given quality, reputation or other characteristics of the product are essentially attributable to that region.

 

• Requirements

[Substantive Requirement] Conformity to the definition of geographical indication under the Trademark Act

Protection by a geographical indication is limited to goods; this includes agricultural goods, marine products, processed goods, and industrial products (especially handicrafts), with the exception of service businesses.

 

A geographical indication applies to the geographical origin of the goods and indicates the name of a place in which the goods are produced, manufactured, and/or processed. It is not limited to the name of an administrative district and does not require that goods must be produced, manufactured, and/or processed in the same region.

 

Specific quality, reputation, or other characteristics of the goods are required. The quality, reputation, or other characteristics of the goods produced, manufactured, and/or processed in a specific place must be differentiated from goods produced, manufactured, and/or processed elsewhere.

 

The basic correlation between characteristics of the goods and the geographical environment is required. A geographical indication is based on the geographical environment including natural conditions (e.g. climate, soil, topography) or personal conditions (e.g. specific production method) as well as the quality, reputation, or other characteristics of goods which are produced, manufactured, or processed in a region.

 

[Subjective Requirement] Establishment of a group with corporate personality composed of producers, and preparation of articles of association

 

An application to register a collective mark for a geographical indication shall be filed by groups (producer group, processor group, etc.) with a corporate personality that consist only of persons who produce, manufacture, or process goods corresponding to the geographical indication of a certain region. An application filed by an individual, companies under Commercial Law, or groups without a corporate personality shall not be registered.

 

[Procedural Requirement] Submission, examination and registration of filing documents and documentary evidence

 

To register a collective mark as a geographical indication, a legal entity such as a producer group qualified to file shall prepare and submit the required application to the Korean Intellectual Property Office together with documentary evidence validating its qualification as a geographical indication, the registration fee, and the registration decision of an examiner.

 

• Effect

A collective mark for a geographical indication excludes any third party from registering a trademark or a collective mark as a geographical indication which is identical or similar to a registered collective mark for another geographical indication. When a person in another region uses a mark which is identical or similar to the registered geographical indication on the designated goods, he/she may assume civil and criminal liability for infringement of trademark rights.

 

The collective mark right for a geographical indication does not apply to marks which are customarily used for goods identical to the designated goods for the registered collective mark for a geographical indication; or a geographical indication or a homonymous geographical indication used by a person who produces, manufactures, or processes goods related to a geographical indication in the relevant region.