Korea, which adopts a first-to-file principle, allows trademark registration as long as it meets the requirements as a trademark, regardless of whether or not it is actually used. The Trademark Act stipulates that registration can be obtained except for trademarks that have no distinctiveness or that anyone wants to use.
1. Trademarks eligible for registration
1) Distinctive trademark - The most important function of a trademark is to discriminate a product among others.
2) Acquisition of distinctiveness by use - Even if a trademark has no distinctiveness, it is recognized when it is worth protecting as a trademark if a specific mark has acquired a certain distinctiveness in the field through repeated use for a long period of time. .
2. Trademarks that cannot be registered
The trademarks that cannot be registered under the Trademark Act are as follows:
1) Emblem, and public marks of public organizations around the world
2) Words that can represent an organization, a race, or a country, but that can be insulting
3) Marks of non-profit public interest corporations
4) In case there is a risk of violating public order
5) Marks similar to plaques, awards, or packaging at trade fairs
6) Marks containing the name and likeness of well-known others
7) Marks identical to or similar to the previously acquired trademarks
8) Mark identical or similar to a trademark that has not passed one year after its expiry date
9) Mark identical or similar to a trademark that is well-known among consumers
10) Mark that is likely to cause business confusion with a well-known trademark
11) Misleading consumers about the quality of the product
12) Marks recognized as domestic and foreign goods of a specific person
13) Marks recognized as a specific goods by domestic and foreign geographical indications
14) Marks consisting only of three-dimensional shapes for the function of goods or packaging
15) WTO’s geographical indication of wine and spirits production area within a member country
16) Species names registered under the Seed Industry Act
17) Marks of others registered under the Agricultural Products Quality Control Act or Seafood Quality Control Act
18) Marks of others protected by the Free Trade Agreement of bilateral/multilateral agreement between Korea and a foreign country or countries
3. A similar trademark
Among various intellectual property rights, a trademark has relatively strong visual elements and is easy to imitate. For this reason, the Trademark Act extends the scope of protection of trademark rights to areas of similarity Even though the different parts are clear, if the source may be confused, it can be set as a similar trademark.
4. The three factors for judging trademark similarity
1) Appearance similarity
2) Similarity of names
3) Perceptual similarity
5. Identicality and Similarity of Products
It means that two products that are in contrast are similar enough to cause confusion within their trading market. It was defined that judgment should be made according to the conventional myth of the trading market.
6. Trademark infringement
In Korea, the concept of “similarity” is used to judge the abstract concept of “confusion” because rights are judged based only on the possibility of confusion. When applying for a trademark or in a trademark infringement lawsuit, the similarity of a trademark is an important concept that serves as a criterion for determining whether or not infringement of a trademark has occurred .
7. Effect of trademarks
The effect of trademark rights arises through establishment registration, and consists of an active effect for exclusive use of the registered trademark and a passive effect for prohibiting unauthorized use by others.
According to the Trademark Act, trademark rights are indispensable for securing official trademarks, trademarks with geographical names, and the functions of products by using technical marks such as the person's name, trade name, etc. The effect does not apply to marks with only one three-dimensional shape. In addition, if the registered a mark has lost its distinctiveness or is a trademark that cannot be registered, the use of the trademark by others cannot be prohibited.
8. Contents of trademark rights
1) Duration of trademark rights: Although trademark rights can be protected for 10 years from the date of registration of establishment of trademark rights, semi-permanent protection is possible because it can be renewed once every 10 years
2) Cancellation of non-use of trademarks: If there is no use of a trademark for three years, a third party may request a trial to cancel the registration of the trademark. Trademark owner can avoid cancellation only by using the trademark. And only those who have requested a trial for revocation of a trademark registration can use the trademark for 6 months after cancellation.
3) Transfer of trademark rights: Trademark rights can be freely transferred by sale or gift.
4) Trademark license system: The trademark owner may grant an exclusive license to others for his/her trademark right. As a result of the Korea-US FTA, the protection of exclusive licensees has been strengthened. The establishment and transfer of exclusive licenses must be registered to counteract a third party. In addition, the exclusive licensee must indicate his or her name or designation on the goods using the registered trademark.
5) Licensing of trademark: Allowing others to use one's registered trademark under certain conditions can be viewed as a value-added act that allows simultaneous use of the same trademark. Licensing has quality regulations in place that require the consumer's trust in the trademark not to be compromised.
9. Remedies for trademark infringement
1) Examine whether trademark infringement is certain: You may request a trial to ensure that there is an infringement.
2) Send a warning letter to the infringer: In this case, the goal of the warning letter is a letter to negotiate, a kind of request for royalties and cessation of infringement.
3) Claim prohibition of infringement, compensation for damages, and credit recovery through civil litigation: Usually, an injunction against infringement is applied together. In addition to civil lawsuits, the infringer can also be criminally charged with infringement.
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