By Taeyoung Lee, LNB Law Firm
The Republic of Korea, often referred to as South Korea, is a vibrant and dynamic country known for its technological advancements and innovative industries. As a global economic powerhouse, South Korea offers immense opportunities for businesses to thrive and expand their presence in the Asian market.
In such a competitive landscape, protecting your brand through trademark registration becomes crucial to safeguard your intellectual property rights and maintain a strong market position. In this article, we will provide a comprehensive guide to trademark registration in South Korea, covering the essential requirements, step-by-step procedures, and recommendations to ensure successful trademark protection.
Contents
1. What can be registered as a trademark in the Republic of Korea?
2. Why can you be refused to register a trademark in the Republic of Korea?
3. The process of trademark registration in the Republic of Korea
4. Documents required for registering a trademark in the Republic of Korea
5. Trademark opposition process in the Republic of Korea
6. Costs of trademark registration in the Republic of Korea
7. Particularity of the registration in the Republic of Korea
1. What can be registered as a trademark in the Republic of Korea?
In South Korea, the trademark registration process is open to any individual or legal entity, such as a corporation or partnership, that currently uses or intends to use a trademark. However, it is important to note that only one applicant is allowed per trademark registration.
You can register the following types of trademarks:
- word marks;
- color marks;
- three-dimensional marks;
- combined marks;
- holograms;
- moving marks;
- collective mark;
- certification mark;
- business emblem*.
*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.)
Accurate classification of the goods and services associated with your trademark is crucial in South Korea. This ensures that your application aligns with international standards and provides adequate protection for your brand.
Furthermore, in South Korea, it is possible to file a multi-class trademark application, allowing you to register a single trademark across multiple related classes of goods or services. However, it is important to note that an additional fee must be paid for each additional class included in the application.
Learn about patent registration in the Republic of Korea
2. Why can you be refused to register a trademark in the Republic of Korea?
There are certain reasons why a trademark application may be refused in South Korea. These include absolute and relative grounds.
Here are some examples of situations where a trademark may be rejected due to absolute grounds:
- If the trademark is a common or usual name for the goods or services it represents. For instance, using the term “corn chip” for snack goods or “Tex” for textiles.
- If the trademark directly describes the features of the goods or services, such as their origin, quality, raw materials, usage, shape, or production method.
- If the trademark includes a well-known geographical name, abbreviation, or map.
- If the trademark is a common surname or the name of a legal entity.
- If the trademark is a simple and ordinary sign, like a series of numbers or a basic word like “ONE.”
- If the trademark lacks distinctiveness, such as using common slogans, catchphrases, or expressions used in greetings.
- If the trademark consists solely of a three-dimensional shape, color, combination of colors, sound, or smell that is necessary for the function of the goods or services.
- If the trademark is identical or similar to national flags, emblems, colors, medals, decorations, or insignias of South Korea or other countries, as well as seals or signs used for supervision or certification.
- If the trademark is identical or similar to the title, abbreviated title, or mark of organizations like the Red Cross, the International Olympic Committee, or renowned international organizations.
- If the trademark falsely indicates a relationship with a state, race, ethnic group, public organization, religion, or famous deceased person, or if it slanders, insults, or defames any of them.
- If the trademark is identical or similar to a famous mark indicating nonprofit business or public service, or if it includes names, titles, or trade names of prominent individuals.
- If the trademark conveys a meaning or content that goes against moral norms, prevailing moral sense, or public order.
- If the trademark is likely to mislead or deceive consumers about the quality of the goods or services.
Relative grounds for refusal include the following:
- The trademark is used for goods identical or similar to another person’s registered trademark based on the first-to-file principle.
- It is used on goods recognized as identical to another person’s registered collective mark with geographical indication based on the first-to-file principle.
- It is identical or similar to a trademark widely recognized by consumers as indicating another person’s goods, used on goods identical or similar to the goods of another person.
- It is identical or similar to a geographical indication widely recognized by consumers as indicating goods from a specific region, used on goods recognized as identical to goods using such geographical indication.
- It is identical or similar to a trademark recognized by consumers in South Korea or overseas as indicating the goods of a specific person, used for unlawful purposes.
- It is identical or similar to a geographical indication recognized by customers in South Korea or overseas as indicating goods from a specific region, used for unlawful purposes.
- It is intended to be used on wine or distilled beverages and consists of or contains a geographical indication of the place of production.
- It is identical or similar to the name of a registered plant variety.
- The applicant applies for registration on goods that are identical or similar to another person’s trademark while being aware of the other person’s use or intention to use the trademark through a contractual or business relationship.
3. The process of trademark registration in the Republic of Korea
The process of trademark registration in the Republic of Korea involves several steps to ensure the protection and exclusivity of a trademark.
Before filing a trademark application, it is advisable to conduct a preliminary search to check for existing trademarks that may be similar or identical to your proposed mark. For example, you can use Korea’s online trademark search database called KIPRIS or a global IP database.
The next step is to file a trademark application with the Korean Intellectual Property Office (KIPO). It is crucial to provide accurate and complete information to avoid delays or refusals. After the application is filed, the KIPO conducts an examination to assess the registrability of the trademark.
This examination includes reviewing the formal requirements, conducting a substantive examination on distinctiveness, and conducting a search for prior conflicting trademarks. If any issues or objections arise during this process, the applicant may need to respond to the KIPO’s requests for clarification or provide arguments to overcome objections.
If the trademark application passes the examination, it is published in the Official Gazette for a period of two months. During this time, third parties have the opportunity to oppose the registration of the trademark if they believe it infringes upon their rights.
If there are no oppositions or the oppositions are resolved in favor of the applicant, the trademark is registered, and a registration certificate is issued. The registration grants the applicant exclusive rights to use the trademark in connection with the specified goods or services.
4. Documents required for registering a trademark in the Republic of Korea
For a trademark application, the following documents should be submitted to KIPO:
- an application stating the following: the name and address of the applicant, the designated goods and class thereof, the date of submission, and the country and filing date of the priority application (if the right of priority is claimed);
- specimens of the trademark;
- the priority document (if acceptable);
- scanned copy of the Power of Attorney.
The priority document must be submitted within 3 months from the filing date of the trademark application in the Republic of Korea. This time limit cannot be extended.
The application will be returned to the submitter without an application number and will be treated as if it had never been submitted in any of the following circumstances:
- where the kind of the application is not clear;
- where the name or address of an applicant is not described;
- where the application is not written in Korean;
- where a specimen of the trademark is not attached;
- where the designated goods are not described in the application paper; or
- where the application is submitted, by a person who has no address or place of business in the Republic of Korea, without coming through a patent agent in the Republic of Korea.
Once the application has satisfied such requirements, KIPO assigns an application number and examines it against the formality requirements.
5. Trademark opposition process in the Republic of Korea
Once a trademark application is published in the Trademark Publication Gazette, any person may file an opposition within two months (non-extendable). A notice of opposition containing a brief statement on the grounds for opposition must be submitted within the first 30 days. Then, the opponent may amend, add or supplement the grounds for opposition within the next 30 days.
If the applicant receives and objects to the rejection, they can appeal to the Intellectual Property Trial and Appeal Board within 30 days from the date of delivery of the certified copy of the decision of rejection. If the applicant does not agree with the decision, they can challenge it in Patent court within 30 days.
The final ruling of a trial is delivered by the Supreme Court of Korea. Applicants may file a lawsuit within 30 days.
6. Costs of trademark registration in the Republic of Korea
| Application | |
| Electronic / paper | 62 000 KRW / 72 000 KRW per class |
| Additional charge per number of goods/services exceeding 20 (electronic & paper) | 62 000 KRW per class |
| Priority claim: electronic / paper | 18 000 KRW / 20 000 KRW per class |
| Preferential examination | 160 000 KRW |
| Filling an opposition to a registration | 50 000 KRW per class |
| Registration | |
| Single lump sum payment | 211 000 KRW |
| • additional charge for each class per number of goods/ services exceeding 20 | 2 000 KRW |
| Two installments payment | 132 000 KRW |
| • additional charge for each class per number of goods/ services exceeding 20 | 1 000 KRW |
| Additional registration of designated goods | 211 000 KRW |
| Renewal | |
| Single lump sum payment | 310 000 KRW per class |
| • additional charge for each class per number of goods/ services exceeding 20 | 2 000 KRW |
| Two installments payment | 194 000 KRW per class |
| • additional charge for each class per number of goods/ services exceeding 20 | 1 000 KRW |
| Late renewal | |
| Single lump sum payment | 340 000 KRW per class |
| • additional charge for each class per number of goods/ services exceeding 20 | 2 000 KRW |
| Two installments payment | 213 000 KRW per class |
| • additional charge for each class per number of goods/ services exceeding 20 | 1 000 KRW |
The trademark registration cost in the Republic of Korea via the iPNOTE platform starts from as low as $790, which includes all government fees as well as document preparation. Find the best trademark agent in the Republic of Korea on iPNOTE.
7. Particularity of the registration in the Republic of Korea
The term of registered trademark rights is 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.
An applicant shall file an application to renew the term within 1 year before its expiration date. If the term has expired, the applicant may file an application to renew the term within 6 months of the expiration date. In this case, the applicant shall pay a required negligence fine.
If the scope of a trademark needs to be expanded after application or registration, the applicant or owner of the trademark rights may register the additional goods or services in the same application or registration.
If 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 to the original registration.
Trademarks will be subject to cancellation if they remain unused for 3 or more consecutive years after their registration.
8. Final thoughts
Understanding the trademark registration process in South Korea is vital for businesses seeking to protect their brand identity and intellectual property in this dynamic market. By following the prescribed requirements and procedures set by the Korean Intellectual Property Office (KIPO), companies can establish strong legal protection for their trademarks and position themselves for long-term success.
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