Trademark registration in Korea

Trademark registration in Korea is essential for trader in fact that the competition in business in Korea is a top priority. South Korea’s economy has undergone extraordinary development, rising from a poor postwar country to a world-leading advanced economy. Currently, South Korea has been an attractive destination for foreign investment (FDI) over the past decades. South Korea has a stable macroeconomy with high GDP growth rates, low inflation, and a stable political environment. This creates peace of mind for foreign investors. South Korea has a large domestic market of 51 million people with high incomes and growing consumer demand. This is an attractive market for foreign companies looking to expand their business. South Korea has signed numerous free trade agreements with countries and regions around the world, including the United States, the European Union, and ASEAN. This helps reduce tariffs and trade barriers, facilitate import and export activities and attract foreign investment. The Korean government offers many tax incentives and other supportive policies for foreign investors. This includes corporate income tax exemptions, subsidies for research and development, and market access support. Viet An Law would like to guide customers preliminarily through the procedure for trademark registration in Korea through the article below.

Legal basis

• Trademark Law (amended to Law No. 19809 dated October 31, 2023)

The concept of “trademark” in Korea

A trademark is understood in a broad sense, encompassing all reasonable modes of expression used to distinguish the goods of one enterprise from those of another. However, Korea’s Trademark Law (hereinafter referred to as the “Law”) regulates which elements are protected as a trademark.

The Trademark Law has been amended several times over time:

• Before July 1, 2007: The law only protected elements such as symbols, letters, charts, three-dimensional shapes or combinations thereof, along with the color combination of trademarks.
• From 01/07/2007: The scope of protection was extended, including:
  • The trademark uses only one color or a combination of multiple colors.
  • Motion pictures.
  • All other types of visual recognition signs.

Update under the Korea-EU Free Trade Agreement (ROK-EU FTA): The law is amended to reject a trademark application if the trademark is identical or similar to a geographical indication that has been protected by the FTA and Korean law.

Update under the Korea-US Free Trade Agreement (ROK-US FTA): The law is amended to allow trademark registration for non-visual trademarks such as sounds and scents.

In addition, the Law also provides:

• Do not protect signs that do not have the function of distinguishing the goods of one enterprise from another.
• Do not protect designs that are only for aesthetic purposes or list price, without regard to identifying the owner.
• Collective marks and certification marks may be considered trademarks.

Other concepts:

• Certification mark: A mark used by a certification body to certify and manage the quality, origin, production method or other characteristics of goods.
• Collective mark: A mark used by a nonprofit organization that identifies it (e.g., Korean National Red Cross, Junior Chamber of Commerce, Rotary Club, Korean Consumer Agency, etc.).

Conditions for trademark registration in Korea

Who can register?

• Individuals (including Korean citizens and foreigners)
• Legal entity (company, organization)
• Co-managers use trademarks for a business

Registration conditions for foreigners: Foreigners can register a trademark in Korea, but their conditions depend on:

• Treaty: Agreements between South Korea and the foreigner’s home country on intellectual property rights.
• Principle of Reciprocal Treatment: If South Korea grants trademark rights to citizens of a foreign country, that foreigner is likely to enjoy the same rights in Korea.

Registration required

There are two main types of requirements for trademark registration in Korea:

• Procedural requirements: These requirements relate to the application process, including application types, forms, and fees.
• Requirements of nature: These requirements focus on the characteristics of the mark itself and ensure that it has the uniqueness necessary for registration. This requirement includes active and restrictive requirements.
  • Positive Requirements (Uniqueness): The most important factor is that the trademark must be unique. It must clearly distinguish your goods or services from those of others. The Trademark Law restricts the registration of signs lacking originality, such as:
    • The general designation or description of the merchandise (e.g. “snacks” for snacks)
    • Conventional signs are already used in the industry (e.g. “Tex” for textiles)
    • Geographic name (unless used as a geographical indication)
    • Simple and common signs (e.g. numbers, individual letters)
    • Generic slogans or phrases
  • Negative Claims (No Legal Barriers): A trademark must not violate public order, good morals, or the rights of others.

Trademark registration dossier in Korea

To file a trademark application with the Korean Intellectual Property Office (KIPO), you need to prepare the following documents:

• Application form: The application form must state the following information:
  • Name and address of the applicant (including the name of the legal representative if the applicant is a legal entity).
  • List of protected goods and classified according to the Nice Classification.
  • Date of application.
  • Country and date of filing of priority application (if right-of-way claimed).
• Trademark samples (10 copies):
  • 10 clear copies of the trademark with a maximum size of 8cm x 8cm.
  • Submit within the deadline required by KIPO if not submitted at the same time as the application.
• Certificate of precedence (if any): An applicant whose country is a party to the Paris Convention or pursuant to a bilateral agreement between the two governments concerned or on the basis of reciprocal treatment may claim priority in the trademark application. To enjoy the right-of-way, the application must be submitted in Korea within 6 months of the priority application date. Priority documentation must be submitted to KIPO within 3 months from the date of submission of the application
• Power of attorney (if necessary): Submit within the deadline required by KIPO if not submitted at the same time as the application.

Fee to register a trademark in Korea

Trademark registration in Korea through the Madrid System

The Madrid system is a convenient and cost-effective solution for global trademark registration and management. File a single international trademark application and pay a one-time fee to apply for protection in up to 130 countries. Claimants can modify, renew or expand their global trademark portfolio through a centralized system.

Madrid Agreement:

• The Madrid Agreement allows trademark owners to register their trademarks in a single member state (“country of origin”) and then extend protection to other member states (“nominating countries”) through a single international application.

Madrid Protocol:

• South Korea accessed the Madrid Protocol on 10 April 2003.
• The Madrid Protocol modernizes and simplifies the international registration system of trademarks established under the Madrid Agreement.
• The Madrid Protocol allows trademark owners to designate additional member states to an international application already filed under the Madrid Agreement or Madrid Protocol.

Trademark registration dossier under the Madrid System

The Madrid Applications consist of the Madrid Singles of Vietnamese origin and the Madrid Applications with Korean designations.

For the Madrid Application of Vietnamese origin, the applicant must submit through the state management agency for industrial property rights, i.e. the National Office of Intellectual Property of Vietnam. According to Article 25 of Decree 65/2023/ND-CP, a Madrid application of Vietnamese origin includes the following documents:

• Declaration of request for international registration of a trademark of Vietnamese origin (Form No. 01 in Vietnamese in Appendix II of Decree 65/2023/ND-CP);
• 02 MM2 declarations according to the form of the International Office in English or French;
• 02 trademark samples exactly as the trademark in the application filed in Vietnam (establishment application) or trademark registration certificate (establishment registration);
• 02 MM18 declarations in English (if the application has a US designation);
• Written authorization in Vietnamese (According to the form of Viet An Law Firm);
• Documents of payment of fees for international registration of trademarks of Vietnamese origin;
• Other relevant documents (if necessary).

Application fees through the Madrid System

The fees include:

• Basic fee (653 Swiss francs; or 903 Swiss francs for a color mark) (Note! A 90% discount applies if the applicant lodges an application with the Intellectual Property Office of a developing country at least); and

Additional fees depend on where the claimant wishes to protect his trademark and the number of classes of goods and services he or she wishes to register. In order to expand its geographic reach, or modify or renew its international registration, the applicant will have to pay additional fees.

Trademark registration service in Korea of Viet An Law Firm

• Perform the search and notify customers in writing the results of trademark search in Korea;
• Drafting dossiers and directly submitting and monitoring the status of trademark application filings in Korea on behalf of trademark owners;
• Inform, advise and handle deficiencies/refusals of competent State agencies (if any) in the process of monitoring trademark applications in Korea;
• Support monitoring, representing the resolution of objections and feedback with intellectual property representatives to carry out procedures in Korea.
• Receive dispatches, certificates and hand over to customers (if any).

If you need to file a trademark application in Korea, please contact Viet An Law Firm for the most effective support.