South Korea (KR)
09-02-2012 (Newsletter Issue 13/12)
Announcement with respect to Examination Guideline
The Korean Intellectual Property Office (KIPO) announced amendments to the examination guideline on August 17, 2012. KIPO is not going to refuse a trademark application based on a similar prior service mark anymore unless the prior service mark owner files an opposition. Under the same rule, KIPO is not going to refuse a service mark application based on a similar prior trademark anymore unless the prior trademark owner files an opposition.
Before the announcement the Examiner refused trademark application based on a similar prior service mark and vice versa.
Source: Markkorea Patent and Law Firm, South Korea
03-27-2012 (Newsletter Issue 5/12)
Official Fees Increased
The official fee system in trademark matters was recently amended. Under the new regulation, additional fees will be charged for trademark applications, registrations and renewal petitions designating over twenty goods/services in one class.
An additional fee of KRW 2,000.- (approx. EUR 1.40 ) will be incurred for each designated good/service in excess of twenty per one class. The amended regulation enters into force as of April 1, 2012.
Source: Kim & Chang Intellectual Property, Seoul, South Korea
03-27-2012 (Newsletter Issue 5/12)Amendments to Trademark ActThe amendment to the Korean Trademark Act ("TMA") became effective as of March 15, 2012. Notable changes are as follows:
1. Protection of Sound and Scent Marks
Under the amended TMA, it is possible to protect sound or scent marks as long as they are capable of graphical representation (for example by way of a sign, character or figure).
2. Recognition of Certification Marks
It is also possible to apply for and obtain certification marks.
3. Abolishment of Recordation Requirement for Exclusive Licenses
Previously, an exclusive license was required to be recorded with KIPO to be effective. However, such requirement has been abolished as of March 15, 2012.
4. Statutory Damages for Trademark Infringement
The amended TMA implements a system of statutory damages, in which a trademark owner will be able to claim damages for up to KRW 50,000,000 instead of claiming actual damages.
For further information please also check the article of Kim & Chang Intellectual Property, South Korea here
Source: Kim & Chang Intellectual Property, Seoul, South Korea 08-02-2010 (Newsletter Issue 13/10)Fee Schedule RevisedThe Korean Intellectual Property Office (KIPO) has announced a new fee schedule, effective July 2010.
To access the list of fees please click here
06-01-2010 (Newsletter Issue 11/10)New Installment Payment Changes Postponed til July, 2010The Korean Intellectual Property Office (KIPO) has postponed the new changes to the trademark fee payment until the end of July, 2010.
KIPO initially announced that the changes should be effective from June, 2010, as reported in the May Newsletter. For more information please click hereSource: www.ajupatent.com 05-05-2010 (Newsletter Issue 10/10)
Renewal Process/New Installment Payment Changed
Effective by June 2010, a registered trademark can be renewed without any separate examination.
Furthermore, a five-year installment payment of trademark registration fees will be introduced:
Ten years of trademark registration fees have currently been based on a lump-sum based payment. Starting June 2010, however, the introduction of this system will allow customers to pay the first portion of trademark registration fees at the time of registration and the second portion within five years before the term of trademark rights expires.
Legal basis is the Trademark Act, last amended on December 2, 2011, and said amendments became effective on March 15, 2012.
South Korea is a member of the Madrid Protocol.
Trademark protection is obtained by registration. Unregistered marks are not protected under the Trademarks Act, although the owner of a well-known or famous mark is given some protection under the Trademark Act by way of preventing others from obtaining a trademark registration for an identical or similar mark.
South Korea follows the first-to-file system.
Nice classification
The international classification of goods and services has been adopted (in force since March 1st, 1998, 45 classes since January 1st, 2002). However, for applications filed before March 1st, 1998, the old classification of 53 goods and 12 service classes is still valid.
A trademark is conventionally defined as a sign, a character, a figure, a three-dimensional shape or any combination of colour with the preceding items. However, protect are colour marks, hologram marks, motion marks, sound marks, scent marks and other types of visually perceivable objects as trademarks.
The following trademark types are registrable: trade marks, service marks, collective marks and certification marks.
The application is filed at the Korean Intellectual Property Office (KIPO).
Multiple-class applications are possible.
Foreign applicants need a local agent.
Local agents require a power of attorney (POA), specific or general, to prosecute an application. A general POA is valid for all future applications as well once it is registered at KIPO. It is posible to restrict a general POA.
Foreign applicants do not need a domestic domicile.
The application process includes a formal examination, an examination of distinctiveness and a search for prior trademarks.
As from August 2012, KIPO is not going to refuse a trademark application based on a similar prior service mark anymore unless the prior service mark owner files an opposition. Under the same rule, KIPO is not going to refuse a service mark application based on a similar prior trademark anymore unless the prior trademark owner files an opposition.
The processing time from first filing to registration or first office action is approx. 9 to 12 months.
The trademark application is published prior to registration in the Trademark Gazette.
National:
The opposition period is 2 months (30 days for applications filed before July 1st, 2007) from publication date of the application.
Opposition against designation of IR Mark
(The period starts from the national publication date, if not stated differently):
2 months
Protection begins from the date of registration. A trademark registration is valid for 10 years from the date of registration. The registration is renewable for periods of 10 years.
Trademarks may be subject to cancellation if they remain unused for three or more consecutive years after their registration. Subsequent use of the trademark can restore protection if no party has requested cancellation due to non-use in the meantime.
The official application fee is KRW 66,000.00 (approx. EUR 44.00) for one class. The online application fee is KWR 56,000.00 (approx. EUR 38.00) per class.
An additional fee of KRW 2,000.- (approx. EUR 1.40 ) will be incurred for each designated good/service in excess of twenty per one class as of April 1, 2012.
Effective by July 2010, registration fees can be paid either via two installment payments or on lump-sum basis. The fee via the installment payments is KRW 132,000.00 (approx. EUR 89.00) for each installment and KRW 132,000.00 per classification in case of multiple applications. The fee via the lump sum is KRW 211,000.00 (approx. EUR 142.00) and another KRW 211,000 per classification in case of multiple applications.
Trademark Licence Agreement
In South Korea it is possible to form a licence agreement orally. In the event of an oral agreement it is considered that the specific contents of the licence agreement and its limitation are determined by the commercial transactional relationship between the actual parties. It is permitted to license the use of unregistered trademarks. A trademark may be licensed for some or all of the goods or services in respect of which the mark is registered. There are exclusive and non-exclusive licences. The sale of a registered trademark does not automatically terminate the licence. There are no statutory provisions prescribing the terms of licensing..
Recordal
There are provisions in law for the recordal of a licensee. Recordal is however voluntary for non-exclusive licences, but recordation of a licence serves as a notice to third parties that the mark is being used and deters third parties from bringing cancellation trials based on non-use. Previously an exclusive licence had to be recorded with the Korean Intellectual Property Office (KIPO) in order for it to be effective. This requirement has been abolished as of March 15, 2012, based on the recent amendment to the Trademark Act. There is no time frame for a recordal and no prescribed form or content for the validity of a licence agreement. No further documents are required.
Effectiveness
A licence becomes effective when the licence agreement is entered into, but it is enforceable against third parties from the date on which the licence is recorded with the KIPO. The licence is not required to be published but it is indicated through the trademark registration certificate once it is recorded with the KIPO.
Infringement Proceedings
There is an evidentiary presumption that use of a recorded licensee is permitted use. An exclusive licensee can join the proprietor in infringement proceedings and file an infringement action without the assistance of the trademark proprietor, but he may not assert any rights in the trademark against a third party. The non-exclusive licensee can call upon the trademark owner to institute infringement proceedings when provided for in the licence contract. The licensee does not need to cite the proprietor as co-defendant in infringement proceedings.
| Search type |
First class |
Add. class |
| Word Mark Search (availability) |
590,00 € |
510,00 € |
| Word Mark Search (identical) |
420,00 € |
270,00 € |
| Extended Search (word mark, company name, domain) |
880,00 € |
510,00 € |
| Device Mark Search (availability) |
750,00 € |
650,00 € |
| Trademark Owner Search |
390,00 € |
|
| Company Name Search |
390,00 € |
|
| Domain Name Search (extended) |
|
|
| i-Search (word mark availability + legal opinion) |
630,00 € |
540,00 € |
The Prices above are S.M.D. Markeur Search Fees
Country Index is a free service of S.M.D. Markeur, an international IP searching and monitoring firm.
We would like to thank the following law firms for their assistance in updating the information provided:
Country Survey
03-30-2012
Kim & Chang Intellectual Property, Seoul, South Korea
12-19-2011
Kim & Chang Intellectual Property, Seoul, South Korea
Licensing
12-19-2011
Kim & Chang Intellectual Property, Seoul, South Korea