SOUTH KOREA Law and Practice Contributed by: Hwansung Park, Eunwoo (Vera) Lee, Hankil D. Kang and Jung Heo, Lee & Ko
one or two months. If there are no grounds for refusal or if they are overcome, the trade mark is published to inform the general public of the application and pro- vide an opportunity for opposition. A third party may file an opposition within one month from the publica- tion date. If no opposition is filed or if the opposition is dismissed, the trade mark right is established upon registration. Typically, cases without opposition or trial take approximately 6 to 12 months. Fees consist of an application fee and a registra- tion fee, which increase depending on the number of classes of designated goods/services (International Classification). The minimum fee for registering goods in one class is around KRW350,000. Multi-class Applications South Korea allows for multi-class applications, meaning multiple classes can be designated in a sin- gle application. 2.4 Term, Use and Maintenance The term of a trade mark right is ten years from the date of registration and can be extended indefinitely through successive ten-year renewals. A renewal is granted upon payment of the registration fee within the prescribed period before or after the expiration date, without undergoing a separate substantive examination. To maintain the trade mark, the owner must “use” it in Korea – that is, use the mark on the designated goods or services in the ordinary course of trade. Merely advertising a registered trade mark with- out genuine distribution or an intent to distribute the designated goods in the domestic market is insuffi- cient to establish legitimate use. Such nominal efforts made solely to avoid cancellation do not constitute valid use. If a mark is not used for three consecutive years without justifiable cause, any third party may file a petition for non-use cancellation. If the trade mark owner fails to prove actual use or a legitimate reason for non-use, the trade mark right will be cancelled, with the cancellation taking effect retroactively as of the date the petition was filed. 2.5 Trade Mark Rights and Limitations Exclusive Rights A registered trade mark holder has the exclusive right to use the mark on designated goods or services and
to prevent others from using identical or similar marks. For well-known marks, the scope of protection may extend to dissimilar goods or services to prevent the dilution of the mark’s distinctiveness or reputation, or to prevent the unfair exploitation of its fame. Limitations or Defences Article 90 of the Trademark Act provides limitations on the scope of trade mark rights. Specifically, trade mark rights do not extend to: (i) the use of one’s own name, trade name, portrait, signature, seal, or a famous pseudonym or stage name in a custom- ary manner; or (ii) the use of common names, origin, quality, raw materials, efficacy, intended use, quantity, shape, price, or methods of production or usage of the designated goods or similar goods, provided these are indicated in a customary manner. However, the Trademark Act stipulates the “own-name defence”, which defines the scope where trade mark rights do not apply even if another person’s trade mark rights are infringed, provided the mark is used as one’s own name. Furthermore, while the Trademark Act does not have an explicit provision regarding “fair use” of trade marks, the Supreme Court has consist- ently held that even if a mark identical or similar to another’s registered trade mark is used, it cannot be considered trade mark infringement if it is not intend- ed to indicate the origin of goods and therefore cannot be recognised as trade mark use. The Supreme Court recognises the principle of exhaus- tion of rights, under which once a trade mark owner or a party acting with their consent places goods bearing the registered trade mark on the market in Korea, the purpose of the trade mark rights in relation to those goods is deemed fulfilled and trade mark rights no longer restrict subsequent distribution of those goods. However, if a non-exclusive licensee uses the trade mark beyond the scope of the authorisation granted, that use may be treated as use without the trade mark owner’s consent. Even where the licensee breaches the contract, whether the exhaustion of rights is excluded depends on a comprehensive assessment of several factors, including the terms of the contract, whether the trade mark’s functions of indicating origin and guaranteeing quality are impaired, whether the
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