SOUTH KOREA Law and Practice Contributed by: Dongju Kwon, Chulgun Lim, Sejung Lee and Yoon Sun Kim, Yoon & Yang LLC
Timeframe for Filing a Revocation/Cancellation The timeframe for filing a revocation varies depending on the grounds for revocation, as follows: • using a registered trade mark by the owner or licensee beyond the scope of the licence – eg, using a similar mark that deviates from its identity; • non-use of a registered trade mark domestically for at least three consecutive years without just cause; • violating restrictions on trade mark transfer – eg, transferring a registered trade mark without trans - ferring similar designated goods en bloc, transfer - ring a share of a jointly owned registered trade mark without the consent of all co-owners, or transferring a collective mark without a merger or without MOIP’s approval; • transferring a registered trade mark leading to mul - tiple parties owning similar trade marks, where one of them uses such registered trade mark for the purpose of unfair competition, causing confusion or misunderstanding; • using a registered trade mark constituting unfair competition by the unauthorised use of another’s achievements; and • improperly using a collective mark or certification mark in violation of the articles of incorporation. For the first, fourth and sixth grounds above, a revoca - tion action cannot be filed after three years from the date the relevant grounds ceased to exist. For the fifth ground, a revocation must be filed within five years, but a revocation can be filed at any time for the third ground. For the second ground, the trade mark must have been unused for at least three consecutive years up to the date of filing the revocation Invalidation An interested party or an examiner can file for invali - dation if a trade mark is registered despite lacking distinctiveness, having grounds for non-registration, having another prior application for an identical/simi - lar mark, etc. All of the grounds for a refusal of trade mark registration (except for the violation of the one trade mark per application rule) constitute grounds for invalidation. An invalidation action can be raised at any time while the grounds for invalidation exist. However, an invali -
dation may only be filed within five years from the date of registration for the following grounds for invalida - tion: • trade marks including the name, title or portrait of a famous person; • trade marks identical/similar to another’s prior registered trade mark, another’s prior application, another’s collective mark with geographical indica - tion, or a widely recognised trade mark or geo - graphical indication; • trade marks for geographical indications for wines or spirits in WTO member states; • applications filed after the period for the renewal registration elapsed; and • failure to apply for classification conversion regis - There is no procedure for third parties to seek revoca - tion of a registered copyright. Therefore, any discus - sion of copyright is hereinafter omitted, unless there is a noteworthy issue. 5.2 Legal Grounds for Filing an Opposition or Cancellation The grounds for opposition are the same as the grounds for refusal of registration. tration within the application period. Annulment of Copyright Registration Please see 5.1 Timeframes for Filing an Opposition or Cancellation for the grounds to revoke or invalidate a trade mark registration. When a revocation decision becomes final, the reg - istered trade mark right is extinguished at that point. However, if revocation is due to non-use, such trade mark right is deemed extinguished as of the date of filing the revocation. When an invalidation decision becomes final, the reg - istered trade mark right is deemed to have never exist - ed. However, if the registered trade mark later loses distinctiveness, such trade mark right is considered non-existent from such point onwards. When a revocation or invalidation decision becomes final, MOIP will annul the trade mark registration ex officio.
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