Trademark

Practice Areas

Overview

Trademarks/Servicemarks can be protected in Korea under the Trademark Act; and for such protection, marks should be registered with the Korean Intellectual Property Office(“KIPO”).

The use of a trademark is not a prerequisite for filing an application for the registration of a trademark. Unregistered marks are not protected under the Korean Trademark 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.

Under the Korean Trademark Act, the trademark forms have expanded from the more traditional ones such as (a) a sign, a character, a figure, a three-dimensional shape or any combination of those; or (b) any combination of color with any of the items of (a) of this paragraph, to include further a color mark, a hologram mark, a motion mark and other types of visually perceivable objects as trademarks.

After April 1, 2009, it is possible to request a preferential examination for trademark application when some requirements are met and additional fees are paid.

The Korean Trademark System is characterized by :

ⅰ) First-to-File Rule ;
ⅱ) Substantial Examination;
ⅲ) Preferential Examination, if requested;
iv) Pre-grant Opposition

In order to file a trademark application in Korea, it is required to receive an order letter from client, containing the specific information for the trademark application to be filed in Korea. The followings are also required at the time of filing:

(a) Information for Applicant
– The full name, address and nationality of each applicant, or, if the applicant is a company, the legal address of the company headquarter is required;
(b) A specification of the goods or services to be designated in the application;
(c) At least one trademark specimen;
(d) Power of Attorney, signed by the applicant or by the representative of the applicant company. General Power of Attorney is highly recommended;
(e) *Priority Certificate of the home application, in order to claim Paris Convention priority;

The specification of goods or services of Korean application must be within the scope of (without necessarily being identical to those of) the home application. Furthermore, the trademark specimen must be the identical to those of the home application.

Flowchart for Korean Trademark Procedure

Trademark & Design Group

Trademark & Design Group of IROJE is led by attorneys who are experts in all aspects of trademark/design and experienced in all sectors (public and private, domestic and international). Thanks to the vast experience, dedication and talent of our professional members, Trademark/Design Group can provide our clients with the highest quality and full-scale services for all matters relating to trademark and design.

Our services encompass licensing, assignment, unfair competition, trade secret as well as searching, watching, filing and prosecuting applications to registration, post-registration procedures, counseling on all stages of trademark/design protection and litigation. The Trademark/Design Group of IROJE has expertise to advise and manage the trademark portfolio of multi-national corporations on a worldwide basis and trademark-filing schemes for the protection and acquisition of trademark rights from a strategic business perspective.

We know the best property of IROJE is integrity (honesty) toward clients. Our Trademark & Design group promise to do its best to provide professional legal service to clients, and therefore, contribute to creating stable profits for clients.

Our Trademark & Design Group provides the following legal service to our clients:

– Inquiry for the Korean Trademark/Design system
– Search for prior-mark and -design
– Korean and International trademark and design prosecution
– Response to Official Action
– Assignment and Licensing
– Renewal(Trademark) and Annuity(Design)
– Trademark/Design Map
– Development of Brand and Design Strategy
– Trademark/Design Opposition, Cancellation and Invalidations
– Domestic watch service to track new trademark/design filings by third parties
– Initiating and defending infringement suits in the area of trademark, trade dress, design and related unfair competition cases
– Infringement and anti-counterfeiting measures with the customs office and assisting customs to seize unlawful imports
– Negotiating and preparing licenses and assignment relating to trademark, design, trade secret and know-how