SOUTH KOREA Law and Practice Contributed by: Dongju Kwon, Chulgun Lim, Sejung Lee and Yoon Sun Kim, Yoon & Yang LLC
• correcting errors; • clarifying unclear entries; or • deleting non-essential parts of the trade mark. Change refers to changing the type of right (eg, trade mark or collective mark) without changing the contents of the application. When an application is changed, the initial application is considered withdrawn. 4.8 Dividing a Trade Mark Application An applicant can divide a trade mark application after filing, whereby the application is divided into two or more applications if the initial application was filed for at least two kinds of goods as designated goods – ie, a divisional application only entails a division of the designated goods. A new application should be filed stating the purpose of the division, and the initial application should be amended to remove the designated goods intended for division. 4.9 Incorrect Information in an Application An application with incorrect information can be amended. The examiner has the authority to amend the application ex officio when deciding to publish the application if there is clearly incorrect information in the application (eg, duplicate entries). In such a case, the examiner must notify the applicant of such amendment. If the applicant cannot accept all or part of the amend - ment, they should submit an opinion to MOIP, where - by the correction is deemed not to have been made from the onset, and MOIP’s decision to publish the application is also deemed to have been revoked. 4.10 Refusal of Registration The grounds for MOIP refusing a trade mark registra - tion are as follows: • not meeting the legal definition of a trade mark; • lack of distinctiveness; • falling under the grounds for non-registration; • identical/similar to a prior application; • treaty violation; • violating the one trade mark per application rule; and
• the application is filed by ineligible applicants – eg, MOIP employees. If a ground for refusal is found, the examiner must notify the applicant thereof. The applicant is granted two months in which to submit their written opinion on such ground and amendment. If “lack of distinctive - ness” is the ground for refusal, the applicant typically must prove that the mark is not a generic name or a customary sign, or that it has acquired secondary meaning. If the ground for refusal is unresolved even after submitting these documents, MOIP issues a refusal decision, against which the applicant can request a re-examination or file an appeal with the Intellectual Property Trial and Appeal Board (IPTAB). 4.11 The Madrid System Korea participates in the Madrid System, whereby an international application can be filed in Madrid Agreement member states simultaneously, based on a domestic trade mark application or registration. An international application must be prepared in English based on the domestic trade mark applica - tion or registration to be submitted to MOIP. Following MOIP’s examination, the application may result in the grant or refusal of a Korean trade mark right. 5. Trade Mark Procedure for Inter Partes Proceedings 5.1 Timeframes for Filing an Opposition or Cancellation Timeframe for Filing an Opposition When the examiner determines that there are no grounds for refusal, the application is published in MOIP’s official gazette. Anyone can file an opposition within 30 days of such publication, and can amend the grounds and evidence for the opposition within 30 days after the expiration of the opposition period. The deadline for filing an opposition cannot be extend - ed, but the period for amending the grounds and evi - dence for the opposition can be extended once or twice, for up to 30 days.
532 CHAMBERS.COM
Powered by FlippingBook