SOUTH KOREA Law and Practice Contributed by: Dongju Kwon, Chulgun Lim, Sejung Lee and Yoon Sun Kim, Yoon & Yang LLC
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 KIPO’s official gazette. Anyone can file an opposition within two months of such publica - tion, and can amend the grounds and evidence for the opposition within two months and 30 days of filing such opposition. The deadline for filing an opposition cannot be extended, but the period for amending the grounds and evidence for the opposition can be extended once or twice, for up to 30 days. 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 domes - tically for at least three consecutive years without just cause; • violating restrictions on trade mark transfer – eg, transferring a registered trade mark with - out transferring similar designated goods en bloc, transferring 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 KIPO’s approval; • transferring a registered trade mark leading to multiple parties owning similar trade marks,
• 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, KIPO employees. If a ground for refusal is found, the examiner must notify the applicant thereof. The applicant is granted two months to submit their written opinion on such ground and amendment. If “lack of distinctiveness” 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, KIPO 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, where - by an international application can be filed in Madrid Agreement member states at once, based on a domestic trade mark application or registration. An international application must be prepared in English based on the domestic trade mark appli - cation or registration to be submitted to KIPO. Following KIPO’s examination, the application may result in the grant or refusal of a Korean trade mark right.
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