Trademarks in South Korea: Making Life Easier

South Korea’s Trademark Act has been revised entirely for the first time since 1990. According to Choi Gyuwan, Director General of the Trademark and Design Examination Bureau at the Korean Intellectual Property Office (KIPO), the main focus of the amendments is for user convenience by making the system more consistent.

The changes came into effect on September 1, 2016, and clarified difficult and complicated terms which existed within the law. Mr. Choi explains that the amendments are also intended to protect users from bad-faith filings, so they can avoid “wasting their time and money.”

“The amendments brought major changes to the trademark regime in Korea, for instance, streamlining the trademark system by integrating the category of the service mark into the trademark and allowing ‘any person’ to request a trial to cancel a mark that is registered but not in use,” says Mr. Choi.

Korea is trying to improve the trademark system, but the country still faces challenges, especially when it comes to trademark squatting. According to Mr. Choi, squatting is one of the main threats for trademark owners in Korea.

“While trademark owners need to do their best to prevent others free-riding on the goodwill and reputation of their brands, KIPO strictly examines if a filed mark is identical to or substantially indistinguishable from a registered mark, and has a special judicial police system for trademark rights to prevent infringement,” he explains.

KIPO has announced that more than 1,000 Korean trademarks were counterfeited overseas and up to 600 companies were affected as of May 2016, Mr. Choi says. He adds that counterfeiting is becoming more sophisticated. In response to this, KIPO has implemented policies to support companies to secure and protect their trademark rights from being infringed.

“We have put multiple policies in place to enhance trademarks, for instance, providing consulting services for applicants when filing an application to prevent disputes and infringement.”

KIPO also offers financial support through insurance which protects trademark holders in case they are hit with an IP lawsuit, Mr. Choi explains.

With regard to trademark filings, Mr. Choi explains that the number of applications has been on the rise gradually from 2011 to 2015, with a slight decline in 2016. In 2011, there were 134,234 filings—both domestic and foreign—which rose to 185,443 in 2015 and fell to 181,592 in 2016.

Working Together

KIPO is a member of the group of five national trademark offices known as the TM5, and engages in multiple bilateral cooperations with other TM5 partners. For example, KIPO works with the European Union Intellectual Property Office (EUIPO) and the U.S. Patent and Trademark Office (USPTO) to digitize the classification system, enhance examination qualities, and share examination know-how through examiner exchange programs. It is also currently sharing information about trademark systems and examination practices with the Japan Patent Office.

The office is also joining forces with its neighbors to build a framework for a Korea-Japan-China trilateral cooperation, says Mr. Choi.

In response to bad-faith filings, KIPO has collaborated with China’s State Administration for Industry and Commerce (SAIC), holding meetings. KIPO also offers training programs in cooperation with the World Intellectual Property Organization (WIPO) for examiners from developing countries in the Asia-Pacific region, Africa, Latin America, and the Middle East. This, Mr. Choi says, is to give other regions the opportunity to learn from Korea’s trademark examination system, and through that contribute to building their region’s IP capacity.

One of KIPO’s biggest recent trademark cases was against Seoul National University in Korea. KIPO refused to register SEOUL NATIONAL UNIVERSITY on the ground that “Seoul” merely refers to a geographical location and “National University” is merely a type of school. However, the Supreme Court upheld that SEOUL NATIONAL UNIVERSITY could be registered as a trademark as it created a new concept in the mind of most people that it was “the national university located in Gwanak-gu, Seoul,” not just any university in the city.

This case, Mr. Choi says, shows that if use of a trademark results in creating a new concept in the mind of the general public beyond awareness or popularity, it can be exclusively used as a trademark. In the future this will influence cases in which a geographical location is combined with a type of business.

These amendments to the Trademark Act, which have brought major changes to the trademark regime in Korea, are set to fulfill KIPO’s vision for making life easier for trademark owners.

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