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 registered trade mark right is extinguished due to a revocation, 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 registered trade mark if a ground for revocation exists; however, only an interested party may file for revocation where there is a violation of certain trade mark transfer restrictions or where the use of a registered trade mark constitutes unfair competition. An “interested party” here is a person likely to suffer harm because they can - not 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 person 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 interested party depends on the timing of the decision. 5.4 Opposition or Revocation/ Cancellation Procedure To file an opposition, the opponent must sub - mit a written application providing the following information to KIPO: • 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 KIPO examiners. Upon receipt of the opposition, 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 appli - cant 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 invali - dated. If there are two or more designated goods covered by the registered trade mark, a revo - cation/invalidation action may be requested for each designated good.
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