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The use of a trademark(servicemark, trademark hereinafter) is not a prerequisite for filing an application for the registration of a trademark. Unregistered marks are not protected under the Trademark Act, although the owner of a well-known or famous mark is given some protection under the Trademark Act by way of preventing others from obtaining a trademark registration for an identical or similar mark. There is no course of action against infringement of a well-known or famous unregistered trademark under the Trademark Act, but an action may be brought under the Unfair Competition Prevention Act. The Korean Trademark system is characterized by:

(ⅰ) Registration System, not Use System:
(ⅱ) First-to-File Rule :
(ⅲ) Substantial Examination:
(ⅳ) Pre-grant Opposition:

1) Name(s), Address(es) and Nationality of applicant(s);
2) Mark(if possible, along with its digital format preferably in jpg or tiff format);
3) Specification of Goods and Class (NICE) ;
* Korean Intellectual Property Office requires the applicant to designate the very specific name of goods according to NICE.
4) Priority Documents(if any); and
5) Power of Attorney simply signed by the applicant. [DownLoad]

Power of Attorney simply signed by the applicant.

Multi-Class Application

A trademark application may be filed for goods or services which fall under several classes in accordance with the Nice Classification.

Priority Claim

If convention priority is claimed, basic filing particulars of priority application (including the application number, the filing date, and the country priority application was filed) on which a claim of priority is based, must be specified in a Korean application. A convention trademark/service mark application must be filed in Korea within the six (6) months of the date that the basic foreign application has field. A certified copy of the basic application may be submitted to the KIPO up to three (3) months after the Korean application is filed.

Power of Attorney

Though original Power of Attorney must be filed when filing, in URGENT case faxed copy thereof will be available provided original Power of Attorney should be filed later, within about a month from the filing date.

Use of General Power of Attorney form

Use of a General Power of Attorney is recommended because it can be used for future cases of the same applicant, thus saving the client time and expenses. A General Power of Attorney form can cover applications for patents, utility models, trademarks and designs and subsequent proceedings. However, filing of oppositions and procedures in inter partes trial cases requires a separate Power of Attorney.

☞ Same as that of patent.

(1) Initiation of Examination

Unlike patent or utility model applications, trademark applications are automatically examined in order of their filing date. No request for examination is needed for the initiation of substantial examination. The examination of a trademark application generally takes about 1 year from its filing date.

(2) Requirement for Registration

For a trademark to be registered under the Trademark Act, it should meet the following requirements:

(a) It should fall under the definition of a trademark prescribed in the Trademark Act:
According to the Korean Trademark Law, a trademark is defined as a sign, a character, a figure, a three-dimensional shape or any combination thereof, or a combination of colors with any of the above items which is used on goods related to the business of a person who carries on business activities, such as producing, processing, certifying or selling such goods, for the purpose of distinguishing them from the goods of others. Color trademarks and three-dimensional trademarks are protected in Korea.
(b) It should be distinctive so as to serve as an indication of goods or services or, if it is not inherently distinctive, it should have acquired a secondary meaning;
(c) It should not fall into any of the categories of unregistrable trademark prescribed in the Trademark Act.

If the examiner finds no ground for rejection of a trademark application, or he considers that the rejection has been overcome by the applicant's response (argument and/or amendment), he shall render a decision to publish the trademark application. Once a trademark application is published in the official gazette, called the "Trademark Publication Gazette," any person may file an opposition within 30 days from the publication date. The thirty-day period cannot be extended. A notice of opposition containing a brief statement on the grounds for opposition must be submitted within the thirty-day period. Then, the opponent may amend, add or supplement the grounds for opposition within 30 days after the expiration of the thirty-day period.

If a examiner finds a ground for rejection of a trademark application, a notice of preliminary rejection will be issued; and the applicant will be given an opportunity to submit a response to the preliminary rejection within the time limit designated by the examiner. Such time limit is extendable to the request for an extension by the applicant. In responding to the preliminary rejection, the applicant may file an argument with or without an amendment to the specification and/or claims. If the examiner determines that the argument is without merit and the ground for rejection has not been overcome, he will issue a notice of final rejection of the trademark application.

When a trademark applicant receives a notice of decision to register a trademark he should pay, as a registration fee, within two(2) months from the date of receipt of such notice. In case he fails to pay the registration fee within the two(2), the trademark application will be deemed to have been abandoned.

(1) Issuance of Certificate of Registration

When a trademark is registered with payment of the registration fee, a Certificate of Registration shall be issued.

(2) License (Recordation of trademark license)

An exclusive license comes into existence by an establishment contract and registration of the exclusive license. When a trademark registration is jointly owned, the consent of all the co-owners is required in granting an exclusive license. The license agreement may be in a simplified form stating: 1) the designated goods; 2) the term of the license agreement; and 3) the area of use. A nonexclusive licensee has no obligation to register the license. But non-exclusive licenses cannot be enforced against any third party unless they are recorded in the trademark register.

Documents required for recordation of trademark license

(a) Trademark license agreement, indicating whether it is an exclusive or non-exclusive license;
(b) Powers of attorney from licensor and licensee;
(c) Certificate of corporate nationality of the licensor (or certificate of individual nationality); and
(d) Certificate of corporate nationality of the licensee (or certificate of individual nationality)

(3) Recordation of assignment

Assignment of either a pending application or a registered right must be recorded to enforce the legal rights of its owner(s). To record an assignment, the following documents must be filed: 1) Deed of Assignment by the assignor only; and 2) Power of Attorney from both the assignor and the assignee.

☞ Appeal and Trial procedure is same with that of patent.

The duration of the protection of a trademark right is 10 years from the date of registration of the trademark, which may be renewed every 10 years. For the renewal of a trademark registration, an application for the renewal should be filed with KIPO.