INFORMATION ON TRADEMARK APPLICATIONS IN KOREA
A single application for a single trademark
According to the Doctrine of a Single Application for a Single Trademark, an applicant shall file a single trademark application for each of the classes of goods he/she has designated as prescribed by an ordinance of the Ministry of Knowledge Economy. The filing of two trademarks in one application is not permitted.
This doctrine is principally applied to an application for new trademark registration, an application for the additional registration of designated goods, and an application for renewal of the term of a trademark right.
Under the Trademark Act enacted in 1997, the "Principle of a Single Application for a Single Trademark" was abolished on March 1, 1998, while the "Principle of One Multiple Class Application for a Single Trademark" was implemented. As a result, an applicant must file an application for each trademark and designate both the trademark and service business in the application.
Designation to use a registered trademark
When an applicant files an application for trademark registration, he/she may designate a trademark and the goods using the trademark to be protected as one or multiple classes in accordance with the 'Classification of Goods' and the 'Notice of the Name and Classification of Goods and Service Businesses' as specified in Article 6 of the Enforcement Regulations of the Trademark Act. The Addendum of the Enforcement Regulations of the Trademark Act specifies 34 classifications of goods from the 1st class to 34th class and 11 classifications of service businesses from the 34th class to 45th class.
Before March 1, 1998, the Korean Intellectual Property Office used the classification of goods class prepared by KIPO. Now, KIPO uses the 'Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks.'
Additional application of designated articles
If the scope of a trademark needs to be expanded due to the situation after application or registration, the applicant or owner of the trademark rights may register the additional designated goods which adds new articles to the goods designated by the registered trademark or trademark application. As a result, the scope of the trademark rights will be extended to protect the owner of the rights.
An applicant may designate one or more articles at a time. However, for designated goods added after filing an application or registration, the applicant must file an additional application for goods designated separately and add them to the application or registration.
To register additional designated goods, the following criteria must be met and must not correspond to any reason for refusal against common trademark applications: the owner of the original trademark rights or application for original trademark registration must be in existence; the applicant must be the same as the owner of the registered trademark or applicant for trademark registration; and the trademark under which the additional designated goods are to be registered must be the same as the relevant registered trademark or trademark application.
When there is an additional registration of designated goods, the goods are incorporated into the original trademark rights as a combined whole. As the original trademark rights are extinguished, the additional registration is extinguished as well. However, grounds for invalidation cases of infringement shall be judged independently, irrelevant of the original registration.
Prior to March 1, 1998, the Trademark Act restricted the registration of two of the same trademarks in the same class of goods and the additional registration articles were limited to the same classification of goods. After the registration system for a multiples class application has been implemented, an applicant can file a separate application and registration for each article.
Divisional application
If an applicant designates one or more goods on his/her application, the application can be divided into two or more applications for each good or classification of goods. In other words, a divisional application does not entail a division of the trademark, but a division of its designated goods.
Conversion of application
The conversion of an application is permitted among trademark applications, service mark applications, and collective mark applications with the exclusion of collective mark applications for geographical indication and business emblem applications.
An application to renew the term of registered trademark rights or an application for the additional registration of designated goods may be converted into an application for trademark registration, except if an invalidation trial or a cancellation trial is requested in relation to the registered trademark that served as the basis of the converted application. To prevent the misuse of this system, the conversion of an application is not permitted where an invalidation trial or a cancellation trial is requested.
In addition, the conversion of an application through other Acts (mutual conversion of an application among trademark, patent, utility model, and design) must not be permitted - including reciprocal conversion of an application among an application for new trademark registration, an application for additional registration of designated goods, or an application to renew the term of registered trademark rights.
Application to renew the term of a registered trademark
The term of registered trademark rights is ten (10) years from the registration date. However, the term may be extended by an application to renew the term of the trademark rights every 10 years. As long as the trademark rights are in use, they are considered semi-permanent.
To renew the term of registered trademark rights, an applicant shall file an application to renew the term within one year before its expiration date. If the term has expired, the applicant may file an application to renew the term within six (6) months of the expiration date. In this case, the applicant shall pay a required negligence fine.
Read more about Korean Trademark here :
Korean Trademark System
- Neighboring Concepts of a Korean Trademark
- Information on Trademark Applications in Korea
Application Procedure for Trademark in Korea
DAEILPAT
Trademark
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Learn more about Trademarks Registration and Protection in Korea
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