SOUTH KOREA Law and Practice Contributed by: Hwansung Park, Eunwoo (Vera) Lee, Hankil D. Kang and Jung Heo, Lee & Ko
Preliminary Injunction For urgent relief, a patentee may file for a preliminary injunction against infringement before the final ruling on the merits. Since these proceedings are not ex parte, they involve an adversarial process similar to the lawsuit on the merits and typically take about 6 to 12 months depending on the complexities of the case. Costs In civil litigation, the prevailing party may recover a portion of their litigation costs proportional to their success rate. However, recovery of attorney’s fees is subject to statutory caps, making it difficult to recoup the full amount of actual expenses incurred. 2. Trade Marks 2.1 Legal Framework and Protectable Signs Sources of Law Trade mark protection is primarily governed by the Trademark Act, with the Unfair Competition Preven- tion and Trade Secret Protection Act (UCPA) applied supplementarily. Protectable Signs The Trademark Act defines a “trade mark” as a mark used to distinguish one’s own goods from those of others. The term “mark” is broadly defined to include symbols, characters, figures, sounds, scents, three- dimensional shapes, holograms, motions, and col- ours, regardless of their configuration or mode of expression, as long as they are used to indicate the source of the goods. Unregistered Trade Marks Korea operates under a registration-based system, meaning that only registered trade marks are pro- tected under the Trademark Act. However, even unregistered marks may be protected under UCPA if they qualify as (i) well-known or famous marks; (ii) achievements resulting from substantial investment; or (iii) trade dress. 2.2 Requirements for Trade Mark Protection Essential Elements for Protection The core requirement for trade mark protection is distinctiveness, which ensures the mark serves as
a source identifier for goods or services. Marks that are generic, descriptive of a product’s characteristics (such as quality, efficacy, or raw materials), or consist of common advertising slogans or customary signs typically lack distinctiveness and are subject to abso-
lute grounds for refusal. Acquired Distinctiveness
Even if a mark is not inherently distinctive, it may still be registered if it has acquired distinctiveness through use. To prove acquired distinctiveness, the applicant must submit evidence such as the scale of advertis- ing and promotion, sales and duration of use, market share, media coverage, and consumer survey results. In practice, the standard for recognising acquired dis- tinctiveness is applied strictly, and it is relatively dif- ficult to obtain registration on this basis. Famous or Well-known Marks Foreign trade marks that have achieved fame among domestic consumers may be protected under UCPA, even without registration in Korea. Even if a mark has not achieved fame, it may still be protected under the UCPA if it qualifies as an “achievement” resulting from the owner’s substantial investment and effort, and is misappropriated by another party through conduct contrary to fair commercial practices. 2.3 Trade Mark Registration System Effects of Registration As mentioned above, a trade mark may be protected under UCPA even without registration, provided cer- tain requirements are met. However, in order to secure the rights to claim injunction, preventive measures, and damages under trade mark law, trade mark reg- istration is a prerequisite. Procedures, Timelines and Costs Applications can be filed with MOIP via either elec- tronic or paper filing, and the designated goods and services must be specified according to the Nice Classification (NCL). After a formalities examination, a substantive examination is conducted regarding grounds for refusal. If there are grounds for refusal, the examiner issues a Notice of Opinion Submission, and the applicant must submit an opinion statement or an amendment within
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