Let's continue the discussion on “Introduction to Intellectual Property and Understanding Intellectual Property”. Among them, today we will look at “Trademark Rights and Protection of Trademark Holders”.
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. In addition, the effect of trademark rights is limited or expanded due to the public interest of protecting the interests of consumers.
1. 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. In order to prevent cancellation, 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. A divisional transfer is also possible, but in this case, goods similar to the private goods subject to the transfer must also be transferred.
4) Trademark license system: The trademark owner may grant an exclusive license to others for his/her trademark right. In this case, the exclusive licensee will inherit both the positive and passive effects of the trademark right. In addition, with the consent of the trademark holder, the exclusive license can be transferred or the non-exclusive license can be established. As a result of the Korea-US FTA, the protection of exclusive licensees has been strengthened. Previously, registration of the exclusive licensee with the Korean Intellectual Property Office was required, but after the Korea-US FTA, that provision was abolished. However, 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.
A normal user is a person who has the right to use the designated trademark within the set range, and has only the right to use the registered trademark, but not the right to claim prohibition. A trademark owner or an exclusive licensee can designate a normal user, and the transfer and establishment of a non-exclusive license must also be registered with the Korean Intellectual Property Office to counter a third party. Also, like the exclusive licensee, the regular user must also indicate his or her name or designation on the product.
5) Licensing of trademark: Allowing others to use one's registered trademark under certain conditions, which 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.
2. Effect of Trademark Rights
The trademark right holder possesses both the positive effect of exclusively using the registered trademark and the passive effect of prohibiting the unauthorized use of 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 trademarks with only one three-dimensional shape. In addition, if the registered trademark has lost its distinctiveness or is a trademark that cannot be registered, the use of the trademark by others cannot be prohibited.
3. Remedies for trademark infringement
1) Examine whether trademark infringement is certain: You may request a trial to verify the scope of your rights to the Korean Intellectual Property Office 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 with the fact of infringement, a kind of request for royalties and cessation of infringement.
3) Claims 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 charged criminally with infringement.
Today, we learned about “Trademark Rights and Protection of Trademark Holders”. Next, we will discuss “other trademark matters”.
*I am a student learning IP, not an IP expert. Translation is also a translator and my short English skills. I hope it will be helpful for those who do not have the relevant knowledge or who want to learn about IP.
*The above is what I learned from a book compiled by the Korean Intellectual Property Office and Korea Invention Promotion Association (published by Pakmungak) entitled “Introduction to Intellectual Property, Understanding Intellectual Property”.
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