SOUTH KOREA Law and Practice Contributed by: Dongju Kwon, Chulgun Lim, Sejung Lee and Yoon Sun Kim, Yoon & Yang LLC
another’s business in Korea, thereby impairing the distinctiveness or reputation of that identifier; and • transferring, displaying, importing or exporting goods that imitate another’s goods in form/con - figuration, provided that three years have not yet elapsed since such form was established and it does not take the usual form of similar goods. In addition, a design can be protected under the Design Protection Act if it meets the requirements regarding industrial applicability, novelty and creativ - ity, and is registered. Furthermore, a design can be protected under the CA if it constitutes an applied art work that is considered to have independent creativity distinct from its function. Special Rules Regarding Certain Marks/Indicators Surname/name as marks Common surnames/names cannot be registered as trade marks since they lack distinctiveness. However, a foreign surname that is common in its country of origin but uncommon in Korea can be registered. If a person’s name/surname/business name is uncommon but famous, it can be registered as a trade mark with the consent of that person. National flags, emblems and insignia of international organisations Trade marks cannot be registered if they consist of a national flag or the insignia of an international organisation, or are identical/similar to the name, abbreviation or emblem of a renowned international organisation (eg, the International Olympic Commit - tee), unless they are registered by the organisation itself. The International Olympic Committee owns the “Olympic” trade mark in Korea. Collective marks and certification marks A collective mark is used by a collective organisation (eg, co-operative) and its members to identify goods related to the organisation’s business. A certification mark is used by an entity engaged in the business of certifying and managing the quality, origin, production method, etc, of goods to prove that another’s goods meet these criteria. Generally, trade mark registration applications and trade mark rights are transferable. However, collective
marks or certification marks can only be transferred in special circumstances (eg, mergers and business transfers), and pledges or exclusive licences cannot be established on rights related to these marks. Geographical indications Generally, a trade mark that only indicates the origin of goods in a common manner (ie, plain descriptions without images or symbols) or that consists solely of a highly renowned geographical name cannot be reg - istered. However, a foregoing mark can be registered as a “collective mark of geographical indication” if it functions as a geographical indication for specific goods. A “geographical indication” identifies a good originating in a particular region or territory where a given quality, reputation or other characteristic of the good is essentially attributable to its geographical ori - gin. A “certification mark for geographical indication” can also be registered. Protection of Unregistered Famous Foreign Trade Marks Famous foreign trade marks that are not registered in Korea are not protected under the TMA. However, others cannot register a foreign trade mark that is widely recognised in Korea for identical/similar goods. Moreover, under the UCPA, using a trade mark that is identical/similar to another’s famous trade mark in Korea to cause confusion with another’s goods or business, or to dilute or tarnish the distinctiveness or reputation of another’s mark, is prohibited as an act of unfair competition, except where the trade mark started to be used without unlawful intent before the foreign trade mark gained fame in Korea. 2.2 Essential Elements of Trade Mark Protection Trade mark registration is necessary for protection under the TMA. A trade mark must have “distinctive - ness” in order to qualify for registration. Therefore, a trade mark cannot be registered if it has no or weak distinctiveness, as follows: • it commonly indicates the generic name of a good; • it is commonly used for a good; • it commonly indicates the origin, quality, raw mate - rials, efficacy or production method;
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