SOUTH KOREA Law and Practice Contributed by: Dongju Kwon, Chulgun Lim, Sejung Lee and Yoon Sun Kim, Yoon & Yang LLC
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 mis - understanding. 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 desig - nated good, similar designated goods must be transferred together. Violating these provisions can lead to revocation. Trade mark transfer can occur through contrac - tual arrangement or the comprehensive succes - sion of rights/obligations in inheritance or merg - ers. In the former, the transfer becomes effective upon registering the transfer; in the latter, a trade mark is transferred to the successor even with - out registering the transfer, but a report to KIPO must be filed promptly. Furthermore, if an inher - ited 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 anniversary of the owner’s death. Copyright While moral rights are not assignable, the eco - nomic rights may be wholly or partially assigned without special procedures. Collaborative works require consent from all authors for assignment. Registration of copyright and the assignment of economic rights allow the assertion of assign - ment 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-owners. Types of licences include an exclusive licence, a non-exclusive licence and a sole licence. Trade mark licensing can be granted without any formal requirements, and even unregistered licences and licences granted in respect of a pending application have effects between the parties. However, the licensee cannot assert its right against third parties without registration. Trade marks can effectively be protected indefi - nitely through renewal of their duration, and can also be licensed perpetually. Copyright No special form or procedure is required for copyright licensing. Collaborative works need consent from all authors for licensing. Parties are free to determine licence details, including the type – eg, an exclusive, non-exclusive or sole licence. There is no prohibition on granting licences without a specified term, and licences can encompass archival rights with agreement between the parties. 6.3 Registration or Recording of an Assignment or Licence Except in cases of inheritance or general succes - sion, the transfer of trade mark rights becomes effective only upon registration. Granting a licence is effective between the parties even without registration but, if registered, the right to use can be asserted against anyone. Therefore, if a third party registers the trade mark rights
586 CHAMBERS.COM
Powered by FlippingBook