SOUTH KOREA Law and Practice Contributed by: Dongju Kwon, Chulgun Lim, Sejung Lee and Yoon Sun Kim, Yoon & Yang LLC
Reapplication is possible three years after the regis - tered trade mark right is extinguished due to a revo - cation, unless the revocation was for a violation of a restriction on trade mark transfer. In contrast, if a trade mark registration becomes invalid, reapplication for the same trade mark is impossible unless the ground for invalidation is resolved. 5.3 Ability to File an Opposition or Revocation/Cancellation Opposition Anyone can file an opposition to the application, and appointing an attorney is not mandatory. The cost of filing an opposition is KRW50,000 per class of goods. Attorney fees, if applicable, can vary based on the complexity of proving the grounds for opposition, etc. Revocation Anyone may file a revocation action against a reg - istered trade mark if a ground for revocation exists; however, only an interested party may file for revoca - tion where there is a violation of certain trade mark transfer restrictions or where the use of a registered trade mark constitutes unfair competition. An “inter - ested party” here is a person likely to suffer harm because they cannot use an identical/similar trade mark due to the existing trade mark that should be revoked (eg, the recipient of a cease-and-desist letter from the registered trade mark owner). Invalidation Only an interested party or an examiner may file an invalidation action. An “interested party” here is a per - son who has used, is currently using or is likely to use a trade mark that is identical/similar to the registered trade mark on identical/similar designated goods, or is manufacturing/selling goods of the same type as the designated goods of the registered trade mark. It also includes a person who has not used a similar trade mark but has registered it prior to the registered trade mark at issue. The determination regarding an inter - ested party depends on the timing of the decision. 5.4 Opposition or Revocation/Cancellation Procedure To file an opposition, the opponent must submit a writ - ten application providing the following information to MOIP:
• contact information for the opponent and attorney (if any); • the application subject to the opposition; • the designated goods or class thereof subject to the opposition; and • the grounds and evidence for the opposition. The opposition is examined and decided by a panel of three MOIP examiners. Upon receipt of the oppo - sition, the examiner in charge must send a copy to the applicant and set a period for them to submit a response. The applicant can amend the designated goods and trade mark within such a response period, provided that the essence of the initial application remains unchanged. The panel of examiners can also consider grounds raised by neither the applicant nor the opponent, in which case both can present their opinions. Revocation or invalidation actions for trade marks are filed with IPTAB. Trade marks may be partially revoked or invalidated. If there are two or more designated goods covered by the registered trade mark, a revocation/invalidation action may be requested for each designated good. 5.5 Legal Remedies Against the Decision of the Trade Mark Office If MOIP accepts the opposition, it simultaneously renders a refusal decision on the application. In such cases, the applicant may appeal against the refusal decision to IPTAB within three months from the date of receiving a copy thereof. Conversely, if MOIP rejects the opposition, it renders a registration decision. In such cases, the opponent may apply to IPTAB for the invalidation of the registra - tion. Direct appeals against the opposition decision itself are not permitted. IPTAB operates under a single-tier system. For deci - sions involving opposition, revocation or invalidation, a party dissatisfied with IPTAB’s decision may file an appeal with the Intellectual Property High Court within 30 days of receiving the copy of IPTAB’s decision. If a party remains dissatisfied with the High Court’s ruling, it may then appeal to the Supreme Court.
534 CHAMBERS.COM
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