SOUTH KOREA Law and Practice Contributed by: Dongju Kwon, Chulgun Lim, Sejung Lee and Yoon Sun Kim, Yoon & Yang LLC
Although the Korean judicial system generally com - prises three instances (trial, appellate and final appeal), trade mark disputes are effectively subject to a two-instance system after IPTAB’s decision – namely, the Intellectual Property High Court and the Supreme Court. 5.6 Amendment in Revocation/Cancellation Proceedings The contents of a registered trade mark cannot be amended during revocation/invalidation proceedings. 5.7 Combining Revocation/Cancellation and Infringement Trade Mark Infringement suits and revocation/invalidation pro - ceedings are bifurcated: civil courts handle infringe - ment actions, while IPTAB handles revocation/ invalidation actions. Both procedures may occur concurrently, but courts handling infringement law - suits often wait for revocation/invalidation outcomes. An expedited revocation/invalidation proceeding may be requested during an ongoing infringement lawsuit, which, if accepted, can result in the judgment being issued within three months from the date of the deci - sion to expedite. Appeals for both revocation/invalidation decisions and infringement suits are directed to the IP High Court, although each appeal case is handled sepa - rately. However, if appeal cases involving the same trade mark between the same parties occur at the IP High Court around the same time, they may be con - currently heard by the same panel of judges. 5.8 Measures to Address Fraud If an applicant submits false documents to register a trade mark with weak distinctiveness, the registration will be refused; if registered, it will be subject to an invalidation decision once the falsehood is revealed. Furthermore, anyone who obtains trade mark registra - tion through fraudulent or improper conduct may be punished with imprisonment of no more than three years or a criminal fine not exceeding KRW30 million. There is no regulation for suspending the examination of the application when the investigation is pending. In practice, if such misconduct is detected during the
examination and an investigation ensues, the applica - tion will be suspended.
6. Assignments and Licensing 6.1 Assignment Requirements and Restrictions Trade Mark
Trade marks are freely transferable, but there are restrictions to prevent confusion and misunderstand - ing. Jointly owned registered trade marks require the consent of all co-owners for assignment. Although a registered trade mark can be divided and transferred for each designated good, similar designated goods must be transferred together. Violating these provi - sions can lead to revocation. Trade mark transfer can occur through contractual arrangement or the comprehensive succession of rights/obligations in inheritance or mergers. In the for - mer, the transfer becomes effective upon registering the transfer; in the latter, a trade mark is transferred to the successor even without registering the transfer, but a report to MOIP must be filed promptly. Further - more, if an inherited trade mark is not registered within three years of the owner’s death, the trade mark right extinguishes on the day following the three-year anni - versary of the owner’s death. Copyright While moral rights are not assignable, the economic rights may be wholly or partially assigned without spe - cial procedures. Collaborative works require consent from all authors for assignment. Registration of copy - right and the assignment of economic rights allow the assertion of assignment against third parties. Upon the copyright owner’s death, economic rights are inherited in accordance with the Civil Code, but moral rights cannot be inherited. 6.2 Licensing Requirements or Restrictions Trade Mark Trade mark owners can permit third parties to use a registered trade mark on designated goods within the agreed scope. Jointly owned registered trade marks can only be licensed with the consent of all co-own -
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