SOUTH KOREA Law and Practice Contributed by: Dongju Kwon, Chulgun Lim, Sejung Lee and Yoon Sun Kim, Yoon & Yang LLC
a geographical indication for specific goods. A “geographical indication” identifies a good origi - nating in a particular region or territory where a given quality, reputation or other characteristic of the good is essentially attributable to its geo - graphical origin. A “certification mark for geo - graphical indication” can also be registered. Protection of Unregistered Famous Foreign Trade Marks Famous foreign trade marks that are not regis - tered in Korea are not protected under the TMA. However, others cannot register a foreign trade mark that is widely recognised in Korea for iden - tical/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 reputa - tion 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 protec - tion under the TMA. A trade mark must have “distinctiveness” in order to qualify for registra - tion. Therefore, a trade mark cannot be regis - tered if it has no or weak distinctiveness, as fol - lows: • it commonly indicates the generic name of a good; • it is commonly used for a good; • it commonly indicates the origin, quality, raw materials, efficacy or production method; • it consists solely of a renowned geographic name or map; • it commonly indicates a common surname/ name; or
• it is simple and common. However, in exceptional cases, if a mark under the last four points above acquires distinctive - ness through use as a source indicator of a spe - cific person’s goods, it may be registered only for the goods where the mark was used. Distinctiveness acquired through use (gaining of secondary meaning) can be evidenced by the following, for example: • the trade mark used; • the goods it was used on; • the fact of use; • the period and geographical scope of use; • the sales figures or market share; • advertising methods and content; and • objective consumer awareness surveys. 2.3 Trade Mark Rights Trade mark rights are granted upon registration, and a trade mark owner has the exclusive right to use the registered trade mark for designated goods under the TMA. Another’s unauthorised use of the registered trade mark on designated goods constitutes trade mark infringement. Trade marks are maintained for the term of their duration, and the term of trade mark protection is ten years from the registration, renewable eve - ry ten years, effectively rendering it indefinite. However, if the registered trade mark is not used for at least three consecutive years, the registra - tion may be revoked or cancelled. 2.4 Use in Commerce To establish the use of a registered trade mark, the mark should be used to indicate the source of a particular good. It does not constitute trade mark use or infringement if the mark is used merely for informational/explanatory purposes
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