CHAPTER I GENERAL PROVISIONS
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| Article 1 (Purpose) |
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The purpose of this Act is to contribute to the development of industry and to protect the interests of consumers by maintaining the business reputation of those persons using trademarks through the protection of trademarks.
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| Article 2 (Definitions) |
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| (1) |
The terms used in this Act shall be defined as follows: <Amended by Act No. 5083, Dec. 29, 1995; Act No. 5355, Aug. 22, 1997; Act No. 7290, Dec. 31, 2004; Act No. 8190, Jan. 3, 2007; Act No. 11113, Dec. 2, 2011> |
| 1. |
The term "trademark" means any of the following items (hereinafter referred to as "mark") that is used by a person who produces, processes or sells goods for business purpose, in order to distinguish goods related to his/her business from those of another person: |
| (a) |
Any sign, letter, figure, three-dimensional shape or the combination thereof or the combination of them and colors; |
| (b) |
Any color that is not combined with others, the combination of colors, any hologram, movement or other item that can be visually recognized; |
| (c) |
Any item expressed realistically with a sign, letter, figure, or by any other visual means among items that cannot be recognized visually such as sounds and odors; |
| 2. |
The term "service mark" means a mark used by a person who carries on service business for the purpose of distinguishing his/her service business from those of others; |
| 3. |
The term "collective mark" means a mark which is intended to be used directly by a corporation jointly founded by the persons who produce, manufacture, process, or sell goods for business purpose or the persons who carry on service business, or which is intended to be used by members under the supervision of such corporation with respect to the business related to its goods or services; |
| 3-2. |
The term "geographical indication" means an indication which identifies goods as being produced, manufactured or processed in a specific region in cases where a given quality, reputation or any other characteristic of the goods essentially originated from a geographical attribute of such region; |
| 3-3. |
The term "homonymous geographical indication" means a geographical indication which has the same sound as other persons’ geographical indication for the same goods, but the region for which differs from each other; |
| 3-4. |
The term "geographical collective mark" means a collective mark which is intended to be used directly by a corporation composed solely of the persons who carry on the business of producing, manufacturing or processing goods eligible for a geographical indication, or which is intended to be used by members under the supervision of such corporation with respect to the business related to its goods; |
| 4. |
The term "certification mark" means a mark which is intended to be used by a person who carries on the business of certifying the quality, origin, mode of production, or other characteristics of goods or services in order to certify whether the goods of a person who carries on the business of producing, manufacturing, processing or selling such goods or the services of a person who carries on such service business satisfy the specified quality, origin, mode of production or other characteristics; |
| 4-2. |
The term "geographical certification mark" means a certification mark with geographical indication used by a person who carries on the business of certifying the quality, origin, mode of production or other characteristics of goods in order to certify whether the goods of a person who carries on the business of producing, manufacturing or processing goods satisfy specified geographical characteristics; |
| 5. |
The term "business emblem" means a mark which is used by a person who carries on nonprofit business for the purpose of indicating his/her business; |
| 6. |
The term "registered trademark" means a trademark for which trademark registration has been granted; |
| 7. |
The term "use of a trademark" means an act falling under any of the following items: |
| (a) |
Indicating a trademark on goods or packages of goods; |
| (b) |
Transferring or delivering goods or packages of goods on which a trademark is indicated, or displaying, exporting or importing them for such purpose; |
| (c) |
Indicating a trademark on advertisements for goods, price lists, transaction documents, signboards or tags, and displaying or distributing it. |
| (2) |
An act of indicating a trademark on goods, packages of goods, advertisements, signboards or tags under paragraph (1) 7 (a) through (c) shall include an act of using goods, packages of goods, advertisements, signboards or tags as shapes, sounds or odors of marks. <Newly Inserted by Act No. 5355, Aug. 22, 1997; Act No. 11113, Dec. 2, 2011> |
| (3) |
Except as otherwise prescribed by this Act, the provisions of this Act concerning trademarks shall apply to service marks, collective marks, certification marks and business emblems. <Amended by Act No. 11113, Dec. 2, 2011> |
| (4) |
Except as otherwise provided by this Act, the provisions of this Act concerning geographical collective marks shall apply to geographical certification marks. <Newly Inserted by Act No. 11113, Dec. 2, 2011> |
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| Article 3 (Persons Entitled to Have Trademark Registered) |
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Any person who uses or intends to use a trademark in the Republic of Korea may be entitled to have his/her trademark registered: Provided, That no one under jurisdiction of the Korean Intellectual Property Office or the Korean Intellectual Property Tribunal shall have a trademark registered during his/her tenure of office, except in cases of inheritance or bequest. <Amended by Act No. 4895, Jan. 5, 1995>
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| Article 3-2 (Persons Entitled to Have Collective Mark Registered) |
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Any corporation jointly founded by the persons who carry on the business of producing, manufacturing, processing or selling goods or by the persons who carry on service business (in cases of a geographical collective mark, it is limited to a corporation comprised solely of the persons who carry on the business of producing, manufacturing, or processing goods eligible for the geographical indication) may be entitled to have its collective mark registered. <Amended by Act No. 11113, Dec. 2, 2011>
[This Article Newly Inserted by Act No. 7290, Dec. 31, 2004]
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| Article 3-3 (Persons Entitled to Have Certification Mark Registered) |
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| (1) |
A person who can carry on the business of certifying and administering the quality, origin, mode of production or other characteristics of goods or services may be entitled to have his/her certification mark registered in order to allow a person who carries on the business of producing, manufacturing, processing or selling goods or a person who carries on a service business to use the certification mark as a means of confirming that his/her goods or services satisfy specified characteristics such as the quality, origin and mode of production: Provided, That where he/she intends to use a certification mark for goods or services related to his/her own business, such certification mark shall not be registered. |
| (2) |
Notwithstanding paragraph (1), no one who applies for the registration of a trademark, service mark, collective mark or business emblem, or whose trademark, service mark, collective mark or business emblem is registered shall apply for registration of any mark identical or similar to such applied trademark, service mark, collective mark or business emblem or such registered trademark, service mark, collective mark or business emblem, as a certification mark, for goods or services identical or similar to such designated goods or services. |
| (3) |
No one who applies for the registration of a certification mark or whose certification mark is registered shall apply for registration of any mark identical or similar to such certification mark, as a trademark, service mark, collective mark or business emblem for goods or services identical or similar to such designated goods or services. |
[This Article Newly Inserted by Act No. 11113, Dec. 2, 2011]
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| Article 4 (Persons Entitled to Have Business Emblem Registered) |
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A person who carries on nonprofit business in the Republic of Korea may be entitled to have his/her business emblem registered.
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| Article 5 (Legal Capacity of Minors, etc.) |
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| (1) |
A minor, person under limited guardianship or person under adult guardianship shall neither file an application or request for trademark nor undergo other procedures (hereinafter referred to as "trademark-related procedures") without a legal representative: Provided, That the foregoing shall not apply where a minor or person under limited guardianship can perform a juristic act for himself/herself independently. <Amended by Act No. 11747, Apr. 5, 2013> |
| (2) |
A legal representative referred to in paragraph (1) may undergo procedures for an objection, trial or retrial filed by the other party on trademark registration, without the consent of a supervisor of guardianship. <Amended by Act No. 11747, Apr. 5, 2013> |
[This Article Wholly Amended by Act No. 11113, Dec. 2, 2011]
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| Article 5-2 (Associations, etc. which are not Corporation) |
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Where a representative or administrator has been determined for an association or foundation that is not a corporation, he/she may become a person raising an objection to trademark registration or appear as a requester or respondent in a trial or a retrial in its association or foundation name.
[This Article Newly Inserted by Act No. 11113, Dec. 2, 2011]
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| Article 5-3 (Trademark Administrators for Nonresidents) |
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| (1) |
No one who does not have an address or place of business in the Republic of Korea (hereinafter referred to as "nonresident") may, except where such nonresident (referring to a representative in cases of a corporation) is sojourning in the Republic of Korea, undergo trademark-related procedures or file an action against any disposition issued by an administrative agency pursuant to this Act or an order under this Act, without a representative for trademarks who has an address or place of business in the Republic of Korea (hereinafter referred to as "trademark administrator"). |
| (2) |
A trademark administrator shall, within the extent of power delegated to him/her, represent the principal in a trial on trademark-related procedures or any disposition made by an administrative agency pursuant to this Act or an order under this Act. |
[This Article Newly Inserted by Act No. 11113, Dec. 2, 2011]
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| Article 5-4 (Extent of Power of Attorney) |
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No representative delegated with the power to conduct trademark-related procedures from a person who has an address or place of business in the Republic of Korea (including trademark administrators; this shall apply hereinafter) shall conduct any of the following acts, unless expressly so empowered:
| 2. |
Abandonment or withdrawal of application for trademark registration; |
| 3. |
Withdrawal of application filed to register the renewal of the duration of trademark rights, application for the registration of additional designated goods, or application for the registration to convert the goods classification; |
| 4. |
Abandonment of trademark rights; |
| 5. |
Withdrawal of application; |
| 6. |
Withdrawal of request; |
| 8. |
Appointment of a sub-representative. |
[This Article Newly Inserted by Act No. 11113, Dec. 2, 2011]
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| Article 5-5 (Proving Powers of Attorney) |
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The power of attorney of a representative who conduct trademark-related procedures shall be proved in written form.
[This Article Newly Inserted by Act No. 11113, Dec. 2, 2011]
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| Article 5-6 (Ratification of Deficiencies of Legal Capacity, etc.) |
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Any procedure conducted by a person who does not have legal capacity or right of legal representation or who fails to obtain appropriate delegation of authority necessary to conduct trademark-related procedures shall take effect retrospectively at the point of the relevant act if ratification is made by the corrected principal or legal representative.
[This Article Newly Inserted by Act No. 11113, Dec. 2, 2011]
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| Article 5-7 (Non-Extinguishment of Powers of Attorney) |
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A power of attorney of a representative delegated by a person who undergoes trademark-related procedures shall not be extinguished due to the following grounds:
| 1. |
Decease or loss of legal capacity of the principal; |
| 2. |
Extinguishment due to the merge of a corporation who is the principal; |
| 3. |
Termination of trust duties of a trustee who is the principal; |
| 4. |
Decease or loss of legal capacity of a legal representative; |
| 5. |
Extinguishment or alteration of the power of attorney of a legal representative. |
[This Article Newly Inserted by Act No. 11113, Dec. 2, 2011]
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| Article 5-8 (Independence of Representation) |
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If the number of representatives who conduct trademark-related procedures is two or more, each representative shall independently represent the principal before the Commissioner of the Korean Intellectual Property Office or the President of the Korean Intellectual Property Tribunal.
[This Article Newly Inserted by Act No. 11113, Dec. 2, 2011]
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| Article 5-9 (Replacement, etc. of Representatives) |
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| (1) |
If a person who undergoes trademark-related procedures is deemed inappropriate to conduct such procedures because, for example, he/she cannot perform such procedures effectively or does not have the ability to make statements in an oral proceeding, the Commissioner of the Korean Intellectual Property Office or the presiding administrative trademark judge may order his/her representative to conduct such procedures. |
| (2) |
If the representative of a person who conducts trademark-related procedures is deemed inappropriate to conduct such procedures because, for example, he/she cannot perform such procedures effectively or does not have the ability to make statements in an oral proceeding, the Commissioner of the Korean Intellectual Property Office or the presiding administrative trademark judge may order that such representative be replaced. |
| (3) |
In cases under paragraph (1) or (2), the Commissioner of the Korean Intellectual Property Office or the presiding administrative trademark judge may order a patent lawyer to represent the relevant person. |
| (4) |
The Commissioner of the Korean Intellectual Property Office or the President of the Korean Intellectual Property Tribunal may invalidate all or part of the trademark-related procedures initiated with the Commissioner of the Korean Intellectual Property Office or the presiding administrative trademark judge by a person who undergoes trademark-related procedures under paragraph (1) or a representative under paragraph (2), after issuance of his/her order pursuant to paragraph (1) or (2) but before appointment or replacement of a representative pursuant to paragraph (1) or (2). |
[This Article Newly Inserted by Act No. 11113, Dec. 2, 2011]
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| Article 5-10 (Representation of Two or More Persons) |
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| (1) |
When two or more persons jointly apply for trademark registration or request a trial to conduct procedures related to such application or trial, each of them shall represent all the persons involved, except for any of the following cases: Provided, That if they select a representative and report thereon to the Commissioner of the Korean Intellectual Property Office or the President of the Korean Intellectual Property Tribunal, such representative shall represent all the persons involved: |
| 2. |
Abandonment or withdrawal of application for trademark registration; |
| 3. |
Withdrawal of application filed to register the renewal of the duration of trademark rights, application for the registration of additional designated goods, or application for registration to convert the goods classification; |
| 4. |
Withdrawal of application; |
| 5. |
Withdrawal of request; |
| (2) |
When persons involved have reported pursuant to the proviso to paragraph (1), they shall prove the appointment of a representative in written form. |
[This Article Newly Inserted by Act No. 11113, Dec. 2, 2011]
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| Article 5-11 (Application Mutatis Mutandis of the Civil Procedure Act) |
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Except otherwise provided by this Act, the provisions of Section 4 of Chapter II of Part I shall apply mutatis mutandis to representatives.
[This Article Newly Inserted by Act No. 11113, Dec. 2, 2011]
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| Article 5-12 (Trial Jurisdiction for Nonresidents) |
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With regard to trademark rights or rights concerning trademarks of a nonresident, the location of property under Article 11 of the Civil Procedure Act shall be deemed an address or place of business of a trademark administrator, or the location of the Korean Intellectual Property Office if a trademark administrator does not exist.
[This Article Newly Inserted by Act No. 11113, Dec. 2, 2011]
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| Article 5-13 (Calculation of Periods) |
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A period pursuant to this Act or an order under this Act shall be calculated as follows:
| 1. |
The initial day of a period shall not be included: Provided, that the foregoing shall not apply where the period starts from midnight; |
| 2. |
Where a period is determined in terms of month or year, such period shall be calculated based on calendar days; |
| 3. |
Where a period is not calculated from the beginning of a month or year, such period shall expire on the day preceding the date in the last month or year of the period corresponding to the date on which the period started: Provided, That where a month or year is used and there is no corresponding day in the last month, the period shall expire on the last day of that month; |
| 4. |
With regard to trademark-related procedures, if the last day of a period falls on a national holiday (including Saturdays and Workers' Day under the Designation of Workers' Day Act), such period shall expire on the following day. |
[This Article Newly Inserted by Act No. 11113, Dec. 2, 2011]
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| Article 5-14 (Extension, etc. of Periods) |
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| (1) |
For persons in areas with poor transportation service, the Commissioner of the Korean Intellectual Property Office or the President of the Korean Intellectual Property Tribunal may, upon request or ex officio, extend the period for amending the reasons, etc. mentioned in a written objection to trademark registration under Article 26 and the period for requesting a trial under Article 70-2 or 70-3. |
| (2) |
When having determined the period for trademark-related procedures pursuant to this Act, the Commissioner of the Korean Intellectual Property Office, President of the Korean Intellectual Property Tribunal, presiding administrative trademark judge or examiner may, upon request, shorten or extend such period, or may extend such period ex officio. In such cases, the Commissioner of the Korean Intellectual Property Office, etc. shall determine whether to shorten or extend the period so as not to unduly infringe on an interest of any interested party in the relevant procedures. |
| (3) |
When having determined the deadline for trademark-related procedures pursuant to this Act, the presiding administrative trademark judge or examiner may change the deadline upon request or ex officio. |
[This Article Newly Inserted by Act No. 11113, Dec. 2, 2011]
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| Article 5-15 (Invalidation of Procedures) |
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| (1) |
If a person ordered to make an amendment pursuant to Article 13 fails to make such amendment within a prescribed period, the Commissioner of the Korean Intellectual Property Office or the President of the Korean Intellectual Property Tribunal may invalidate the trademark-related procedures. |
| (2) |
If it is deemed that, in cases where the trademark-related procedures have been invalidated pursuant to paragraph (1), the person ordered to make an amendment fails to do so within a prescribed period due to a ground not attributable to him/her, the Commissioner of the Korean Intellectual Property Office or the President of the Korean Intellectual Property Tribunal may revoke the disposition of invalidation upon request by the person ordered to make the amendment within 14 days from the date on which such ground ceases to exist: Provided, That the foregoing shall not apply where one year has passed from the expiry of the prescribed period. |
| (3) |
When the Commissioner of the Korean Intellectual Property Office or the President of the Korean Intellectual Property Tribunal intends to issue the disposition of invalidation under paragraph (1) or revoke such disposition of invalidation under the main sentence of paragraph (2), he/she shall serve a written notice of revocation of disposition on a person ordered to make an amendment. |
[This Article Newly Inserted by Act No. 11113, Dec. 2, 2011]
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| Article 5-16 (Subsequent Completion of Procedures) |
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When a person who has conducted trademark-related procedures is unable to comply with the period for requesting a trial under Article 70-2 or 70-3 or the period for requesting a retrial under Article 84-2 (1) due to a ground not attributable to him/her, he/she may complete the unfinished procedures within 14 days from the date on which such ground ceases to exist: Provided
, That the foregoing shall not apply where one year has passed from the expiry of such period.
[This Article Newly Inserted by Act No. 11113, Dec. 2, 2011]
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| Article 5-17 (Succession of Effects of Procedures) |
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The effects of procedures conducted in regard to trademark rights or rights concerning trademarks shall extend to the successor of such trademark rights or rights concerning trademarks.
[This Article Newly Inserted by Act No. 11113, Dec. 2, 2011]
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| Article 5-18 (Continuation of Procedures) |
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If trademark rights or rights concerning trademarks are transferred during the time the trademark-related procedures are pending at the Korean Intellectual Property Office or the Korean Intellectual Property Tribunal, the Commissioner of the Korean Intellectual Property Office or the presiding administrative trademark judge may require the successor to such trademark rights or rights concerning trademarks to continue such procedures.
[This Article Newly Inserted by Act No. 11113, Dec. 2, 2011]
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| Article 5-19 (Suspension of Procedures) |
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Where trademark-related procedures fall under any of the following, the procedures pending at the Korean Intellectual Property Office or the Korean Intellectual Property Tribunal shall be suspended: Provided, That the foregoing shall not apply where there exists a representative empowered to take the procedures:
| 1. |
Where the principal has died; |
| 2. |
Where a corporation that is the principal has ceased to exist due to a merger; |
| 3. |
Where the principal has lost the ability to take relevant procedures; |
| 4. |
Where the legal representative of the principal has died or lost the power of attorney; |
| 5. |
Where the duty of a trustee entrusted by the party involved has terminated; |
| 6. |
Where the representative under the proviso to Article 5-10 (1) has died or lost his/her qualification; |
| 7. |
Where a person who became the principal for and on behalf of another person in his/her own name based on specific qualification, such as a bankruptcy trustee, has lost his/her qualification or died. |
[This Article Newly Inserted by Act No. 11113, Dec. 2, 2011]
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| Article 5-20 (Resumption of Suspended Procedures) |
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When the procedure pending at the Korean Intellectual Property Office or the Korean Intellectual Property Tribunal are suspended pursuant to Article 5-19, any of the following persons shall resume such procedures:
| 1. |
In cases under subparagraph 1 of Article 5-19: The inheritor, administrator of inherited property, or a person to resume the procedures pursuant to Acts: Provided, That no inheritor shall resume the procedures until he/she may renounce his/her succession; |
| 2. |
In cases under subparagraph 2 of Article 5-19: The corporation that has been established or survived after merger; |
| 3. |
In cases under subparagraphs 3 and 4 of Article 5-19: The principal who has recovered the ability to conduct the procedures or a person who has become his/her legal representative; |
| 4. |
In cases under subparagraph 5 of Article 5-19: The new trustee; |
| 5. |
In cases under subparagraph 6 of Article 5-19: The new representative or each principal; |
| 6. |
In cases under subparagraph 7 of Article 5-19: A person who has the same qualification. |
[This Article Newly Inserted by Act No. 11113, Dec. 2, 2011]
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| Article 5-21 (Request for Resumption) |
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| (1) |
A request for resumption of procedures suspended pursuant to Article 5-19 may be made by a person falling under any subparagraph of Article 5-20 and the other party. |
| (2) |
When a request for resumption of procedures suspended pursuant to Article 5-19 is made, the Commissioner of the Korean Intellectual Property Office or the presiding administrative trademark judge shall notify the other party of such fact. |
| (3) |
When the Commissioner of the Korean Intellectual Property Office or an administrative trademark judge examines, ex officio, a request for resumption of the procedures suspended pursuant to Article 5-19 and recognizes that no ground exists to accept the request, he/she shall dismiss the request by decision. |
| (4) |
In regard to a request for resumption of the procedures suspended after service of a certified copy of decision or trial decision, the Commissioner of the Korean Intellectual Property Office or an administrative trademark judge shall decide whether to allow a qualified person to resume the procedures. |
| (5) |
If a person as referred to in Article 5-20 fails to resume the suspended procedures, the Commissioner of the Korean Intellectual Property Office or an administrative trademark judge shall determine a period ex officio and order him/her to resume the procedures. |
| (6) |
If the procedures are not resumed within the period under paragraph (5), it shall be deemed that they are resumed on the date following the expiry of such period. |
| (7) |
Where the Commissioner of the Korean Intellectual Property Office or the presiding administrative trademark judge deems that the procedures have been resumed under paragraph (6), he/she shall notify the parties of such fact. |
[This Article Newly Inserted by Act No. 11113, Dec. 2, 2011]
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| Article 5-22 (Suspension of Procedures) |
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| (1) |
When the Commissioner of the Korean Intellectual Property Office or an administrative trademark judge is unable to perform his/her duties due to force majeure or other inevitable grounds, the procedures pending at the Korean Intellectual Property Office or the Korean Intellectual Property Tribunal shall be suspended until such grounds cease to exist. |
| (2) |
Where a reason occurs to any of the party that makes him/her unable to resume the procedures pending at the Korean Intellectual Property Office or the Korean Intellectual Property Tribunal for an unspecified period, the Commissioner of the Korean Intellectual Property Office or an administrative trademark judge may order the suspension of such procedures by decision. |
| (3) |
The Commissioner of the Korean Intellectual Property Office or an administrative trademark judge may revoke the decision under paragraph (2). |
| (4) |
When suspension under paragraph (1) or (2) or revocation under paragraph (3) is made, the Commissioner of the Korean Intellectual Property Office or an administrative trademark judge shall notify each party of such fact. |
[This Article Newly Inserted by Act No. 11113, Dec. 2, 2011]
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| Article 5-23 (Effects of Suspension or Discontinuance) |
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Where trademark-related procedures are suspended or discontinued, the procedures conducted during the relevant period shall be discontinued, and the entirely new period shall begin after the point that notice on resumption of such procedures is served or such procedures are resumed.
[This Article Newly Inserted by Act No. 11113, Dec. 2, 2011]
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| Article 5-24 (Legal Capacity of Foreigners) |
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No foreigner, from among nonresidents, shall enjoy trademark rights or rights concerning trademarks, except in any of the following cases:
| 1. |
Where the country of such foreigner allows nationals of the Republic of Korea to enjoy trademark rights or rights concerning trademarks under the same conditions as their own nationals; |
| 2. |
Where the country of such foreigner allows nationals of the Republic of Korea to enjoy trademark rights or rights concerning trademarks under the same conditions as their own nationals, if the Republic of Korea allows such foreigner to enjoy trademark rights or rights concerning trademarks; |
| 3. |
Where trademark rights or rights concerning trademarks are allowed to be enjoyed pursuant to a treaty or any other agreement corresponding thereto (hereinafter referred to as "treaty"). |
[This Article Newly Inserted by Act No. 11113, Dec. 2, 2011]
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| Article 5-25 (Effective Date of Submitted Documents) |
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| (1) |
Written applications, written requests or other documents submitted to the Commissioner of the Korean Intellectual Property Office or the President of the Korean Intellectual Property Tribunal pursuant to this Act or an order under this Act (including articles; hereinafter the same shall apply in this Article) shall take effect from the date they are received by the Korean Intellectual Property Office or the President of the Korean Intellectual Property Tribunal. |
| (2) |
Where written applications, written requests or other documents as referred to in paragraph (1) are submitted to the Korean Intellectual Property Office or the President of the Korean Intellectual Property Tribunal by mail, they shall be deemed to be received by the Korean Intellectual Property Office or the President of the Korean Intellectual Property Tribunal on the date as stamped by mail if the stamped date is clear, or on the date proved by a receipt of mail if the stamped date is unclear: Provided, That the foregoing shall not apply where written applications for the registration of trademark rights or rights concerning trademarks, or documents for the application for international application (hereinafter referred to as the "international application") under Article 2 (2) of the Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks (hereinafter referred to as the "Protocol") are submitted by mail. |
| (3) |
Apart from matters prescribed in paragraphs (1) and (2), matters necessary for documents submitted due to delay of mail delivery, loss of mail, or suspension of mail service shall be prescribed by Ordinance of the Ministry of Trade, Industry and Energy. <Amended by Act No. 11690, Mar. 23, 2013> |
[This Article Newly Inserted by Act No. 11113, Dec. 2, 2011]
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| Article 5-26 (Entry of Identification Numbers) |
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| (1) |
A person prescribed by Ordinance of the Ministry of Trade, Industry and Energy, from among those undergoing the trade-related procedures, shall apply for the issuance of his/her own identification number to the Commissioner of the Korean Intellectual Property Office or the President of the Korean Intellectual Property Tribunal. <Amended by Act No. 11690, Mar. 23, 2013> |
| (2) |
Where an application under paragraph (1) is filed, the Commissioner of the Korean Intellectual Property Office or the President of the Korean Intellectual Property Tribunal shall issue an identification number to the applicant and notify him/her of such fact. |
| (3) |
The Commissioner of the Korean Intellectual Property Office or the President of the Korean Intellectual Property Tribunal shall, ex officio, issue an identification number to a person who fails to apply for the issuance of an identification number pursuant to paragraph (1) and notify the person of such fact. |
| (4) |
Where a person who has obtained an identification number pursuant to paragraph (2) or (3) undergoes trademark-related procedures, he/she shall enter his/her identification number in the document prescribed by Ordinance of the Ministry of Trade, Industry and Energy. In such cases, he/she may not enter his/her address (referring to place of business in cases of a corporation) in the document. <Amended by Act No. 11690, Mar. 23, 2013> |
| (5) |
Paragraphs (1) through (4) shall apply mutatis mutandis to the representative of a person who undergoes trademark-related procedures. |
| (6) |
Application for the issuance of identification numbers, issuance and notification of identification numbers, and other matters necessary for identification numbers shall be prescribed by Ordinance of the Ministry of Trade, Industry and Energy. <Amended by Act No. 11690, Mar. 23, 2013> |
[This Article Newly Inserted by Act No. 11113, Dec. 2, 2011]
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| Article 5-27 (Taking Trademark-Related Procedures through Electronic Documents) |
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| (1) |
A person who undergoes trademark-related procedures may, as prescribed by Ordinance of the Ministry of Trade, Industry and Energy, convert written applications for trademark registration into electronic documents to submit such documents to the Commissioner of the Korean Intellectual Property Office or the President of the Korean Intellectual Property Tribunal, pursuant to this Act and other documents, by using an information and communications network or by recording them in electronic recording media, such as a floppy disk or optical disk. <Amended by Act No. 11690, Mar. 23, 2013> |
| (2) |
Electronic documents submitted pursuant to paragraph (1) shall have the same effect as any other documents submitted pursuant to this Act. |
| (3) |
Electronic documents submitted through an information and communications network pursuant to paragraph (1) shall be deemed to be received with the details recorded in a file of an electronic information processing system for receipt of applications operated by the Korean Intellectual Property Office or the Korean Intellectual Property Tribunal as at the time the person who has submitted such documents confirms the receipt number through the information and communication network. |
| (4) |
Types of documents that may be submitted in the form of electronic documents pursuant to paragraph (1), the method and other matters necessary for the submission of such electronic documents shall be prescribed by Ordinance of the Ministry of Trade, Industry and Energy. <Amended by Act No. 11690, Mar. 23, 2013> |
[This Article Newly Inserted by Act No. 11113, Dec. 2, 2011]
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| Article 5-28 (Report to Use Electronic Documents and Electronic Signature) |
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| (1) |
A person intending to undergo trademark-related procedures by using electronic documents shall, in advance, report on the use of electronic documents to the Commissioner of the Korean Intellectual Property Office or the President of the Korean Intellectual Property Tribunal and render his/her electronic signature on the electronic documents submitted to the Commissioner of the Korean Intellectual Property Office or the President of the Korean Intellectual Property Tribunal so that the person submitting documents is identified. |
| (2) |
Electronic documents submitted pursuant to Article 5-27 shall be deemed submitted by a person who renders his/her electronic signature under paragraph (1). |
| (3) |
Matters necessary for the procedures for reporting on the use of electronic documents under paragraph (1), method of rendering an electronic signature, etc. shall be prescribed by Ordinance of the Ministry of Trade, Industry and Energy. <Amended by Act No. 11690, Mar. 23, 2013> |
[This Article Newly Inserted by Act No. 11113, Dec. 2, 2011]
law view
| Article 5-29 (Notification, etc. through Information and Communications Networks) |
|
| (1) |
The Commissioner of the Korean Intellectual Property Office, President of the Korean Intellectual Property Tribunal, presiding administrative trademark judge, administrative trademark judge, presiding examiner or examiner may utilize an information and communications network when he/she intends to send notification or make a delivery of documents (hereinafter referred to as "notification, etc.") to a person who has reported by using electronic documents pursuant to Article 5-28 (1). |
| (2) |
Notification, etc. of documents through an information and communications network under paragraph (1) shall have the same effect as in writing. |
| (3) |
Notification, etc. of documents under paragraph (1) shall be deemed delivered with the details recorded in a file of an electronic information processing system for delivery of documents operated by the Korean Intellectual Property Office or the Korean Intellectual Property Tribunal as at the time such documents are recorded in a file of an electronic information processing system used by the person who is the recipient of such notification, etc. |
| (4) |
Matters necessary for the type, method, etc. of notification, etc. through an information and telecommunication network under paragraph (1) shall be prescribed by Ordinance of the Ministry of Trade, Industry and Energy. <Amended by Act No. 11690, Mar. 23, 2013> |
[This Article Newly Inserted by Act No. 11113, Dec. 2, 2011]
CHAPTER II REQUIREMENTS AND APPLICATION FOR TRADEMARK REGISTRATION
law view
| Article 6 (Requirements for Trademark Registration) |
|
| (1) |
Trademark registration may be granted, except a trademark falling under any of the following subparagraphs: <Amended by Act No. 5355, Aug. 22, 1997> |
| 1. |
Any trademark consisting solely of a mark indicating in a common way the ordinary name of the goods; |
| 2. |
Any trademark used customarily on the goods; |
| 3. |
Any trademark consisting solely of a mark indicating in a common way the origin, quality, raw materials, efficacy, use, quantity, shape (including shapes of packages), price, production method, processing method, using method or time of the goods; |
| 4. |
Any trademark consisting solely of a conspicuous geographical name, the abbreviation thereof or a map; |
| 5. |
Any trademark consisting solely of a mark indicating in a common way a common surname or name; |
| 6. |
Any trademark consisting solely of a simple and ordinary mark; |
| 7. |
Any trademark, other than those as referred to in subparagraphs 1 through 6, which does not enable consumers to recognize whose goods it indicates in connection with a person's business. |
| (2) |
Even though a trademark falls under any of paragraph (1) 3 through 6, if whose goods it indicates in connection with a person’s business is remarkably recognized among consumers as a result of using the trademark before the application for trademark registration under Article 9, the trademark may be registered, with goods using such trademark designated (referring to the goods designated under Articles 10 (1) and 47 (2) 3 and those designated additionally; hereinafter the same shall apply). <Amended by Act No. 6414, Feb. 3, 2001> |
| (3) |
Even though a mark falls under paragraph (1) 3 (limited to the place of origin) or 4, if it is a geographical indication for specific goods, the mark may be registered as a geographical collective mark, with goods using the geographical indication designated. <Newly Inserted by Act No. 7290, Dec. 31, 2004> |
law view
| Article 7 (Unregistrable Trademark) |
|
| (1) |
Notwithstanding Article 6, no trademark falling under any of the following subparagraphs shall be registered: <Amended by Act No. 4597, Dec. 10, 1993; Act No. 5355, Aug. 22, 1997; Act No. 6414, Feb. 3, 2001; Act No. 7290, Dec. 31, 2004; Act No. 8190, Jan. 3, 2007; Act No. 9987, Jan. 27, 2010; Act No. 10811, Jun. 30, 2011; Act No. 11113, Dec. 2, 2011; Act No. 11458, Jun. 1, 2012; Act No. 11747, Apr. 5, 2013>1. Any trademark which is identical or similar to the national flag, the national emblem, colors, medals, decorations or badges of the Republic of Korea or seals or signs used for indicating supervision or certification by the Republic of Korea or public institutions;1-2. Any trademark which is identical or similar to the national flags of allied nations of the Paris Convention for the Protection of Industrial Property (hereinafter referred to as the "Paris Convention"), member nations of the World Trade Organization, or contracting parties to the Trademark Law Treaty (hereinafter referred to as "allied nations, etc." in this paragraph); |
| 1-3. |
Any trademark which is identical or similar to the titles, abbreviated names or marks of the Red Cross, the International Olympic Committee, or renowned international organizations: Provided, That the foregoing shall not apply where the Red Cross, the International Olympic Committee, or renowned international organizations have applied for trademark registration of its title, abbreviated name or mark; |
| 1-4. |
Any trademark which is identical or similar to armorial bearings, flags, medals, decorations or badges of allied nations, etc. designated by the Commissioner of the Korean Intellectual Property Office after being notified from the World Intellectual Property Organization under Article 6-3 of the Paris Convention or to titles, abbreviated names, armorial bearings, flags, medals, decorations or badges of inter-governmental international organizations in which allied nations, etc. have joined: Provided, That the foregoing shall not apply where an inter-governmental international organization in which an allied nation or allied nations, etc. have joined applies for trademark registration of its title, abbreviated name (limited to an inter-governmental international organization in which allied nations, etc. have joined) or mark; |
| 1-5. |
Any trademark which is identical or similar to seals or signs used for indicating supervision or certification by allied nations, etc. designated by the Commissioner of the Korean Intellectual Property Office after being notified from the World Intellectual Property Organization under Article 6-3 of the Paris Convention or their public organizations and used for the goods identical or similar to those for which such seals or signs are used; |
| 2. |
Any trademark which falsely indicates a connection with a State, race, ethnic group, public organization, religion or famous deceased person, or which slanders, insults or is liable to defame them; |
| 3. |
Any trademark which is identical or similar to famous marks indicating nonprofit business of the State, a public organization or its agencies or public corporations, or indicating nonprofit public services: Provided, That the foregoing shall not apply where the State, public organization or its agencies or public corporations, or the body of nonprofit public services applies for trademark registration of such marks; |
| 4. |
Any trademark of which, by itself or by being used for goods, the meaning and content conveyed to consumers are feared to be contrary to the virtuous customs deemed as the prevailing moral sense of ordinary people or to harm the public order; |
| 5. |
Any trademark comprising of a mark which is identical or similar to a medal, certificate of merit or decoration awarded at an exhibition held by or with approval from the Government of the Republic of Korea or at an exhibition held by or with approval from the government of a foreign country: Provided, That the foregoing shall not apply where a person who has been awarded a medal, certificate of merit or decoration uses it as part of his/her trademark on the same goods for which such medal, certificate of merit or decoration was awarded at the exhibition; |
| 6. |
Any trademark containing the name, title or trade name, portrait, signature or seal, famous pseudonym, professional name or pen name of wellknown other persons, or an abbreviation thereof: Provided, That the foregoing shall not apply where the consent of the person concerned has been obtained; |
| 7. |
Any trademark which is identical or similar to another person's registered trademark (excluding any registered geographical collective mark) for which the application was filed earlier, and which is to be used on goods identical or similar to the designated goods; |
| 7-2. |
Any trademark which is identical or similar to another person's registered geographical collective mark for which the application was filed earlier, and which is to be used on goods identical or recognized as identical to the designated goods; |
| 8. |
Any trademark which is identical or similar to another person's registered trademark (excluding any registered geographical collective mark) in cases where one year has not elapsed after the date trademark rights are extinguished (in cases where such trial decision invalidated the trademark registration, referring to the date the trial decision became final and conclusive), and which is to be used on goods identical or similar to the designated goods; |
| 8-2. |
Any trademark which is identical or similar to another person's registered geographical collective mark in cases where one year has not elapsed since the date the geographical collective mark right is extinguished (in cases where such trial decision invalidated the collective mark registration, referring to the date the trial decision became final and conclusive), and which is to be used on goods identical or recognized as identical to the designated goods; |
| 9. |
Any trademark which is identical or similar to another person's trademark (excluding any geographical indication) well known among consumers to indicate the goods, and which is to be used on goods identical or similar to such goods; |
| 9-2. |
Any trademark which is identical or similar to another person's geographical indication known among consumers to indicate the goods of a specific region, and which is to be used on goods identical or recognized as identical to the goods using such geographical indication; |
| 10. |
Any trademark which is feared to cause confusion with goods or services of other persons because the trademark is remarkably recognized among consumers to indicate the goods or services of other persons; |
| 11. |
Any trademark which is feared to mislead or deceive consumers concerning the quality of goods; |
| 12. |
Any trademark which is identical or similar to a trademark (excluding any geographical indication) recognized as indicating the goods of a particular person by consumers inside or outside of the Republic of Korea, and which is used for unjustifiable purpose, such as obtaining unfair profits or inflicting harms on the particular person; |
| 12-2. |
Any trademark which is identical or similar to a geographical indication recognized as indicating the goods of a specific region by customers inside or outside of the Republic of Korea, and which is used for any unjustifiable purpose, such as obtaining unfair profits or inflicting harms on any person entitled to use such geographical indication; |
| 13. |
Any trademark consisting solely of three-dimensional shapes, colors, sounds, odors, or the combination of colors, which is essential (in cases of service business, referring to cases in which such constituents are essential to the use and purpose of the service business) to secure the functions of goods whose trademark is to be registered or of the packaging thereof; |
| 14. |
Any trademark consisting of geographical indications or containing such indications with regard to the origin of wines or spirits in a member nation of the World Trade Organization, and which is to be used in connection with wines, spirits, or other similar goods: Provided, That the foregoing shall not apply where any person entitled to use such geographical indications applies for geographical collective mark registration of the goods concerned as designated goods under Article 9 (4); |
| 17. |
Any trademark which is identical or similar to another person’s geographical indication protected pursuant to free trade agreements that have been concluded between the Republic of Korea and foreign countries in a bilateral or multilateral manner and come into effect, or any trademark which consists of or contains such geographical indications and is to be used for goods identical or recognized as identical to the goods using such geographical indications. |
| (2) |
Paragraph (1) 6, 7, 7-2, 8, 8-2, 9, 9-2, and 10 shall apply to relevant trademarks at the time of an application for trademark registration: Provided, That whether an applicant for trademark registration (hereinafter referred to as "applicant") corresponds to a person under the relevant provision shall be determined at the time of a decision on whether to grant or reject trademark registration (hereinafter referred to as "decision on whether to grant or reject trademark registration"). <Amended by Act No. 11747, Apr. 5, 2013> |
| (3) |
Where a requester for a trial for revocation of trademark registration on the ground of Article 73 (1) 3 is identical to an applicant of such trademark registration, any of the following subparagarphs applies after the date of request for a trial for such revocation, whether the relevant application for trademark registration falls under paragraph (1) 7, 7-2, 8 or 8-2 shall be determined at the time of a decision on whether to grant or reject trademark registration, notwithstanding the main sentence of paragraph (2): <Amended by Act No. 11747, Apr. 5, 2013> |
| 1. |
Where a period under the proviso to Article 43 (2) elapses; |
| 2. |
Where a trademark rights holder relinquishes all of his/her trademark rights or some of designated goods under Article 59; |
| 3. |
Where a trial decision on revocation of trademark registration under Article 73 (1) 3 becomes final and conclusive. |
| (4) |
Paragraph (1) 8 and 8-2 shall not apply to any of the following cases: <Amended by Act No. 4597, Dec. 10, 1993; Act No. 5355, Aug. 22, 1997; Act No. 7290, Dec. 31, 2004; Act No. 8190, Jan. 3, 2007; Act No. 9987, Jan. 27, 2010; Act No. 11747, Apr. 5, 2013> |
| 1. |
Where a registered trademark has not been used for one year or more retrospectively after trademark rights became invalid; |
| 2. |
Where an appropriate applicant applies for trademark registration, after a trial decision on invalidation or revocation becomes final and conclusive by reason that a registered trademark violates the provision of paragraph (1) 6, 9, 9-2, 10, 11, 12, and 12-2 of this Article or Article 8 or 73 (1) 7; |
| 3. |
Where an application for trademark registration is made after the period of six months under the proviso to Article 43 (2) expires without any application for the registration for renewal of the duration of registered trademark rights; |
| 4. |
Where a trademark subject to registration contains a mark identical or similar to a registered trademark for which a trial for revocation under Article 73 (1) 3 has been requested; |
| 5. |
Deleted. <by Act No. 11747, Apr. 5, 2013> |
| (5) |
Where a trial for revocation of trademark registration is requested on the grounds that it falls under Article 73 (1) 2, 3, and 5 through 13, and any of the following subparagraphs applies after the date of request for such trial, neither the trademark rights holder nor any person who uses the trademark may apply for the registration of trademarks identical or similar to an extinguished trademark for goods identical or similar to the designated goods (in cases of a geographical collective mark, referring to goods identical or recognized as identical to the designated goods) unless they make an application for trademark registration after three years from the date on which any of the following subparagraphs becomes applicable: <Amended by Act No. 5355, Aug. 22, 1997; Act No. 7290, Dec. 31, 2004; Act No. 10811, Jun. 30, 2011; Act No. 11113, Dec. 2, 2011> |
| 1. |
Where trademark rights are extinguished due to the expiry of the duration; |
| 2. |
Where a trademark rights holder abandons some of trademark rights or designated goods; |
| 3. |
Where a trial decision on revocation of trademark registration becomes final and conclusive. |
| (6) |
The provisions of paragraph (1) 7-2, 8-2, and 9-2 shall not apply between homonymous geographical collective marks. <Newly Inserted by Act No. 7290, Dec. 31, 2004> |
law view
| Article 8 (First-to-File Rule) |
|
| (1) |
When two or more applications for trademark registration are filed on different days with respect to the same or similar trademark to be used on the same or similar goods, only one person who files an application earlier than others shall be entitled to obtain a registration for the trademark. |
| (2) |
When two or more applications for trademark registration are filed on the same day with respect to the same or similar trademark to be used on the same or similar goods, only one applicant determined by agreement among applicants shall be entitled to obtain a registration for the trademark. When they fail to reach an agreement, or they are unable to do so, only one applicant determined by lot drawn by the Commissioner of the Korean Intellectual Property Office shall be entitled to obtain a registration for the trademark. |
| (3) |
When an application for trademark registration is abandoned, withdrawn or invalidated, or a decision or trial decision to reject trademark registration becomes final and conclusive, the application shall, in application of paragraphs (1) and (2), be deemed not to have existed from the beginning. <Amended by Act No. 6414, Feb. 3, 2001> |
| (4) |
In cases of paragraph (2), the Commissioner of the Korean Intellectual Property Office shall order an applicant to report the result of agreement within a prescribed period, and when no report is made in such period, the agreement under paragraph (2) shall be deemed not to have been made. |
| (5) |
and (6) Deleted. <by Act No. 11747, Apr. 5, 2013> |
| (7) |
The provisions of paragraphs (1) and (2) shall not apply to the following cases: <Newly Inserted by Act No. 7290, Dec. 31, 2004; Act No. 8190, Jan. 3, 2007; Act No. 10811, Jun. 30, 2011> |
| 1. |
Where two or more applications for the geographical collective mark registration or for the aforesaid registration and trademark registration are filed with respect to the same or similar marks to be used on the goods that are not identical (including cases in which such goods are recognized as identical); |
| 2. |
Where two or more applications for the registration of geographical collective marks which fall under homonymous geographical indications are filed. |
| (8) |
Deleted. <by Act No. 11747, Apr. 5, 2013> |
law view
| Article 9 (Application for Trademark Registration) |
|
| (1) |
Any person intending to obtain a registration for a trademark shall submit to the Commissioner of the Korean Intellectual Property Office the application form for trademark registration after specifying the following matters: <Amended by Act No. 4541, Mar. 6, 1993; Act No. 5083, Dec. 29, 1995; Act No. 6414, Feb. 3, 2001; Act No. 8852, Feb. 29, 2008; Act No. 11690, Mar. 23, 2013; Act No. 11962, Jul. 30, 2013> |
| 1. |
The name and address of an applicant for trademark registration (if the applicant is a corporation, its title and place of business); |
| 2. |
The name, address, or place of business, if any, of an agent (if the agent is a patent corporation/patent corporation (with limited liability), its title, place of office and the name of its designated patent attorney); |
| 4. |
Designated goods and a classified list thereof; |
| 5. |
Matters prescribed by Article 20 (3) (limited to cases where he/she intends to make a priority claim); |
| 6. |
Deleted; <by Act No. 6414, Feb. 3, 2001> |
| 7. |
Matters prescribed by Ordinance of the Ministry of Trade, Industry and Energy. |
| (2) |
Where a trademark of which an applicant intends to obtain a registration is composed of three-dimensional shapes under Article 2 (1) 1 (a) or marks under Article 2 (1) 1 (b), the purpose and explanation therefor (excluding explanation in cases of three-dimensional shapes), in addition to matters falling under each subparagraph of paragraph (1), shall be entered in the application form, as prescribed by Ordinance of the Ministry of Trade, Industry and Energy. <Amended by Act No. 11113, Dec. 2, 2011; Act No. 11690, Mar. 23, 2013> |
| (3) |
Where a trademark of which an applicant intends to obtain a registration is a trademark falling under Article 2 (1) 1 (c), the purpose and explanation therefor and realistic expression of the relevant mark by a sign, letter, shape or in other visual manner (hereinafter referred to as "visual expression"), in addition to matters falling under each subparagraph of paragraph (1), shall be entered in the application form, as prescribed by Ordinance of the Ministry of Trade, Industry and Energy. <Newly Inserted by Act No. 11113, Dec. 2, 2011; Act No. 11690, Mar. 23, 2013> |
| (4) |
A person intending to obtain a registration for a collective mark shall submit the articles of association providing matters concerning the use of the collective mark as prescribed by Presidential Decree, in addition to the application form specifying matters referred to in subparagraphs of paragraph (1). In such cases, a person intending to obtain a registration for a geographical collective mark under Article 2 (1) 3-4 shall state the purport in the application form for collective mark registration and submit it together with a document prescribed by Presidential Decree, which proves that the geographical collective mark corresponds to the definition of geographical indication under Article 2 (1) 3-2. <Amended by Act No. 7290, Dec. 31, 2004; Act No. 11113, Dec. 2, 2011> |
| (5) |
A person intending to obtain a registration for a certification mark shall submit a document prescribed by Presidential Decree, which provides matters concerning the use of certification marks (referring to the articles of association in cases of a corporation and referring to the covenants in cases of a non-corporation; hereinafter referred to as "articles of association or covenants"), in addition to the application form specifying matter referred to in subparagraphs of paragraph (1), as well as a document proving that he/she can verify and administer the quality, origin, mode of production or other characteristics of the goods or services subject to verification. <Newly Inserted by Act No. 11113, Dec. 2, 2011> |
| (6) |
A person intending to obtain a registration for a business emblem shall submit a document proving the operation of the business in addition to the application form specifying matters referred to in subparagraphs of paragraph (1). <Amended by Act No. 11113, Dec. 2, 2011> |
law view
| Article 9-2 (Recognition, etc. of Filing Date) |
|
| (1) |
The Commissioner of the Korean Intellectual Property Office shall recognize the date on which an application for trademark registration is received by the Korean Intellectual Property Office as the filing date of an application for trademark registration, except in cases falling under any of the following subparagraphs: <Amended by Act No. 11113, Dec. 2, 2011> |
| 1. |
Where a statement on the reason for trademark registration is unclear; |
| 2. |
Where the name or the title of an applicant is omitted, or where the indication of the applicant is not clearly specified; |
| 3. |
Where a trademark subject to registration is omitted in the application form or where the indication is not clearly discernable; |
| 3-2. |
Where visual expression is omitted in the application form for trademark registration (limited to marks under Article 2 (1) 1 (c)); |
| 4. |
Where a statement on the designated goods is omitted; |
| 5. |
Where the application form is entered in the language other than Korean. |
| (2) |
Where an application for trademark registration falls under any subparagraph of paragraph (1), the Commissioner of the Korean Intellectual Property Office shall set a period and order a person intending to obtain trademark registration to supplement the application within such prescribed period. |
| (3) |
Where a person supplements an application for trademark registration pursuant to an order under paragraph (2), he/she shall submit a document concerning the supplement of procedures (hereinafter referred to as "document of procedure supplement"). |
| (4) |
Where a person who has been ordered to supplement the application under paragraph (2) successfully comply within a prescribed period, the Commissioner of the Korean Intellectual Property Office shall recognize the date on which a document of procedure supplement is received by the Korean Intellectual Property Office as the filing date of the application for trademark registration. |
| (5) |
Where a person who has been ordered to supplement the application under paragraph (2) fails to comply within a prescribed period, the Commissioner of the Korean Intellectual Property Office may reject the application for trademark registration on the grounds that the application is defective. |
[This Article Newly Inserted by Act No. 6414, Feb. 3, 2001]
law view
| Article 10 (One Application for One Trademark) |
|
| (1) |
A person intending to make an application for trademark registration shall designate one category or more for goods on the basis of the goods classification prescribed by Ordinance of the Ministry of Trade, Industry and Energy, and apply for each trademark. In such cases, the goods and the service business may be simultaneously designated in a single application form, as prescribed by Ordinance of the Ministry of Trade, Industry and Energy. <Amended by Act No. 4541, Mar. 6, 1993; Act No. 5083, Dec. 29, 1995; Act No. 5355, Aug. 22, 1997; Act No. 6414, Feb. 3, 2001; Act No. 8190, Jan. 3, 2007; Act No. 8852, Feb. 29, 2008; Act No. 11690, Mar. 23, 2013> |
| (2) |
Specific goods that are subject to the goods classification referred to in paragraph (1) shall be determined and published by the Commissioner of the Korean Intellectual Property Office. <Newly Inserted by Act No. 8190, Jan. 3, 2007> |
| (3) |
The goods classification under paragraph (1) shall not be construed to limit the extent of similarity of the goods. <Amended by Act No. 8190, Jan. 3, 2007> |
law view
| Article 11 Deleted. <by Act No. 5355, Aug. 22, 1997> |
|
law view
| Article 12 (Succession to and Divided Transfer, etc. of Application) |
|
| (1) |
No succession to an application for trademark registration shall take effect unless a report on the change of applicant is filed, except in cases of inheritance and other general succession. <Amended by Act No. 6414, Feb. 3, 2001> |
| (2) |
An application for trademark registration may be divided by each type of designated goods to be transferred. In such cases, similar types of designated goods shall be transferred en bloc. |
| (3) |
Deleted. <by Act No. 5355, Aug. 22, 1997> |
| (4) |
Where any application for trademark registration is inherited or succeeded in general, the successor shall report the reason to the Commissioner of the Korean Intellectual Property Office without delay. |
| (5) |
Where an application for trademark registration is owned jointly, each joint owner may not transfer his/her share without the consent of all of other joint owners. <Amended by Act No. 5355, Aug. 22, 1997> |
| (6) |
Any application for trademark registration that is divided and transferred under paragraph (2), shall be considered to have been filed at the time the initial application for trademark registration was filed: Provided, That the foregoing shall not apply where Article 20 (3) and (4) or 21 (2) applies. |
| (7) |
Any application for business emblem registration shall be non-transferable: Provided, That the foregoing shall not apply where it is transferred together with the business. |
| (8) |
Any application for trademark registration under the provisos to Article 7 (1) 1-3, 1-4 and 3 shall be non-transferable: Provided, That the foregoing shall not apply where it is transferred together with the business related to the titles, abbreviated names or marks under Article 7 (1) 1-3, 1-4 and 3. <Amended by Act No. 9987, Jan. 27, 2010> |
| (9) |
Any application for collective mark registration shall be non-transferable: Provided, That in cases of a merger of corporations, it may be transferred with the permission from the Commissioner of the Korean Intellectual Property Office. |
| (10) |
Any application for certification mark registration shall be non-transferable: Provided, That where it is transferred together with its business to a person who may obtain a registration for such certification mark under Article 3-3, it may be transferred upon permission from the Commissioner of the Korean Intellectual Property Office. <Newly Inserted by Act No. 11113, Dec. 2, 2011> |
law view
| Article 13 (Amendment of Procedure) |
|
Where any application, request or other procedure for trademarks falls under any of the following subparagraphs, the Commissioner of the Korean Intellectual Property Office or the President of the Korean Intellectual Property Tribunal shall order an applicant to amend it within a prescribed period: <Amended by Act No. 6414, Feb. 3, 2001; Act No. 8190, Jan. 3, 2007; Act No. 11113, Dec. 2, 2011>
| 2. |
Where it is contrary to the form provided by this Act or an order issued under this Act; |
| 3. |
Where any official fee to be paid under Article 37 is not paid. |
law view
| Article 14 (Amendments before Decision to Publish Application) |
|
| (1) |
Except as provided in Article 15, any applicant may make amendments to the designated goods and trademark relevant to his/her application for trademark registration to the extent that the purport of the initial application for trademark registration remains unchanged. |
| (2) |
No amendment under paragraph (1) may be made after a written notice of a decision on whether to grant or reject trademark registration is served: Provided, That where a trial is requested against a decision of rejection under Article 70-2, amendments may be made within 30 days from such request was made, or within a period for submission of a written opinion under Article 23 (2), (4), 46-4 (2), (3), 48 (2) or (3), the provisions of which are applicable mutatis mutandis under Article 81. <Amended by Act No. 4597, Dec. 10, 1993; Act No. 5329, Jan. 5, 1995; Act No. 6414, Feb. 3, 2001; Act No. 9987, Jan. 27, 2010; Act No. 11747, Apr. 5, 2013> |
law view
| Article 15 (Amendments after Decision to Publish Application) |
|
Where an applicant, after service of a certified copy of a decision to publish an application under Article 24, falls under any of the following cases, he/she may make amendments to a trademark and designated goods to the extent that the purport of the initial application for trademark registration remains unchanged within a period prescribed in each subparagraph:
| 1. |
Where he/she is notified of the grounds for rejection under Article 23 (2) or 48 (2) and intends to amend matters indicated in such grounds for rejection: The period for submission of a written opinion; |
| 2. |
Where an objection to trademark registration has been filed pursuant to Article 25, and he/she intends to amend matters indicated in the grounds for such objection: The period for submission of a written response under Article 27 (1); |
| 3. |
Where a decision is rendered to reject trademark registration or the registration of additional designated goods under Article 23 (1) and Article 48 (1) respectively, and he/she requests a trial on the decision of rejection under Article 70-2 with respect to matters indicated in the grounds for the decision to reject trademark registration or the registration of additional designated goods: 30 days from the date on which such trial is requested. |
[This Article Wholly Amended by Act No. 11113, Dec. 2, 2011]
law view
| Article 16 (Modification to Purport of Application) |
|
| (1) |
Where any amendment prescribed by Articles 14 and 15 falls under any of the following subparagraphs, the purport of an application for trademark registration shall be deemed unchanged: |
| 1. |
Reduction of the scope of designated goods; |
| 2. |
Rectification of any clerical error; |
| 3. |
Explanation of any obscure entry; |
| 4. |
Deletion of part of any supplementary note in the trademark. |
| (2) |
When any amendment to a trademark or designated goods concerning an application for trademark registration filed before service of a certified copy of a decision to publish an application is recognized to have modified the purport after the establishment of trademark rights is registered, the application for trademark registration shall be deemed to have been filed at the time a written amendment thereof is submitted. <Amended by Act No. 5329, Apr. 10, 1997> |
| (3) |
When any amendment of a trademark or designated goods concerning an application for trademark registration filed after service of a certified copy of a decision to publish an application is recognized to have violated Article 15 after the establishment of trademark rights is registered, trademark rights granted as a result of the application for trademark registration before such amendment is made shall be deemed established and registered. <Newly Inserted by Act No. 5329, Apr. 10, 1997> |
law view
| Article 17 (Dismissal of Amendment) |
|
| (1) |
When any amendment under Article 14 to an application for trademark registration modifies the purport of the application, an examiner shall dismiss the amendment by decision. |
| (2) |
Upon a decision of dismissal under paragraph (1), no examiner shall make a decision on whether to grant or reject trademark registration in regard to the application concerned until 30 days elapse from the date on which a certified copy of the decision is served, and when a decision of dismissal is made under paragraph (1) before publication of the application is decided, no examiner shall decide to publish the application. <Amended by Act No. 6414, Feb. 3, 2001> |
| (3) |
When any applicant requests a trial on the decision to dismiss an amendment under Article 70-3 as to a decision of dismissal under paragraph (1), an examiner shall suspend the examination of the relevant application for trademark registration until the trial decision becomes final and conclusive. <Amended by Act No. 4895, Jan. 5, 1995> |
| (4) |
When any amendment under by Article 15 to an application for trademark registration modifies the purport of the application, an examiner shall dismiss such amendment by decision. |
| (5) |
A decision of dismissal under paragraphs (1) and (4) shall be made in writing with the grounds therefor specified. |
| (6) |
No decision of dismissal under paragraph (4) shall be disobeyed: Provided, That the foregoing shall not apply in cases of a request for a trial on the decision of rejection under Article 70-2. <Amended by Act No. 4895, Jan. 5, 1995; Act No. 6414, Feb. 3, 2001> |
law view
| Article 17-2 (Submission of Amended Articles of Association, etc.) |
|
| (1) |
When it is needed to amend the articles of association prescribed in Article 9 (4), an applicant for the registration of a collective mark may submit amended articles of association to the Commissioner of the Korean Intellectual Property Office within a period specified in Article 14 (2) or 15. <Amended by Act No. 11113, Dec. 2, 2011> |
| (2) |
When it is needed to amend the articles of association or an agreement prescribed in Article 9 (5), an applicant for the registration of a certification mark may submit amended articles of association or an amended agreement to the Commissioner of the Korean Intellectual Property Office within a period specified in Article 14 (2) or 15. <Newly Inserted by Act No. 11113, Dec. 2, 2011> |
[This Article Newly Inserted by Act No. 7290, Dec. 31, 2004]
law view
| Article 18 (Division of Application) |
|
| (1) |
Where an application for trademark registration is filed to register two or more goods as the designated goods, the application for trademark registration may be divided into two or more within a period during which the amendments under Articles 14 and 15 may be made. <Amended by Act No. 5355, Aug. 22, 1997> |
| (2) |
Where an application for trademark registration is divided into two or more pursuant to paragraph (1) (hereinafter referred to as "divisional application"), the divisional application shall be deemed filed at the time the initial application for trademark registration has been filed: Provided, That the foregoing shall not apply where the provisions of Article 20 (3) and (4) or 21 (2) apply. <Amended by Act No. 8190, Jan. 3, 2007> |
law view
| Article 19 (Conversion of Application) |
|
| (1) |
Any applicant who files an application falling under any of the following subparagraphs may convert such application to another application falling under any of the following subparagraphs: <Amended by Act No. 11113, Dec. 2, 2011> |
| 1. |
An application for the registration of a trademark; |
| 2. |
An application for the registration of a service mark; |
| 3. |
An application for the registration of a collective mark (excluding applications for the registration of geographical collective marks); |
| 4. |
An application for the registration of a certification mark (excluding applications for the registration of geographical certification marks). |
| (2) |
Any applicant who has filed an application for the registration of additional designated goods may convert such application to an application for trademark registration: Provided, That the foregoing shall not apply where a trial is requested for invalidation or revocation of a registered trademark that provides the basis for the registration of additional designated goods or where the registered trademark is extinguished by a trial for invalidation, revocation, etc. <Amended by Act No. 9987, Jan. 27, 2010> |
| (3) |
In cases of an application converted under paragraph (1) or (2) (hereinafter referred to as "converted application"), such converted application shall be deemed filed at the time an application referred to in any subparagraph of paragraph (1) or in paragraph (2) has been initially filed: Provided, That the foregoing shall not apply where Article 20 (3) and (4) or 21 (2) applies. <Amended by Act No. 9987, Jan. 27, 2010> |
| (4) |
No conversion of application pursuant to paragraphs (1) and (2) shall apply after a decision on whether to grant or reject a registration filed for the initial application referred to in any subparagraph of paragraph (1) or in paragraph (2) or a trial decision thereon becomes final and conclusive. <Amended by Act No. 9987, Jan. 27, 2010> |
| (5) |
Where a converted application is filed, the initial application filed as specified in any subparagraph of paragraph (1) or in paragraph (2) shall be deemed withdrawn. <Amended by Act No. 9987, Jan. 27, 2010> |
[This Article Wholly Amended by Act No. 8190, Jan. 3, 2007]
law view
| Article 20 (Priority Claim under Treaty) |
|
| (1) |
Where a citizen of a State party which recognizes the priority of an application for trademark registration filed by a citizen of the Republic of Korea by virtue of a treaty files an application for trademark registration in the State party or another State party, and then he/she files an application for the registration of the same trademark in the Republic of Korea and claims the priority thereof, the date on which the application was filed in the State party shall be deemed, where Article 8 applies, the date on which the application is filed in the Republic of Korea. The same shall also apply where a citizen of the Republic of Korea files an application for trademark registration in a State party which recognizes the priority of an application for trademark registration filed by a citizen of the Republic of Korea by virtue of a treaty and files an application for the registration of the same trademark in the Republic of Korea. <Amended by Act No. 11113, Dec. 2, 2011> |
| (2) |
No one who intends to claim priority under paragraph (1) shall claim priority unless he/she files an application within six months after the date of the initial application which is the basis of the priority claim. |
| (3) |
A person intending to claim priority under paragraph (1) shall specify the purport, the name of the country in which the application was initially filed, and the filing date of the application in the application form for trademark registration at the time of filing an application. |
| (4) |
A person who claims priority under paragraph (3) shall submit to the Commissioner of the Korean Intellectual Property Office certified copies of documents indicating the date of the application for trademark registration recognized by the government of the country in which the initial application is filed, trademark, and designated goods within three months after the filing date of an application for trademark registration. |
| (5) |
If a person who claims priority under paragraph (3) fails to submit the documents referred to in paragraph (4) within the period referred to in the said paragraph (4), the priority claim shall lose its effect. |
law view
| Article 21 (Special Cases upon Application) |
|
| (1) |
Where any person entitled to obtain a registration of trademarks files an application for the registration of a trademark used for goods exhibited in any of the following exhibitions, with such goods designated as the designated goods, within six months from the date on which the goods are exhibited, the application for trademark registration shall be deemed filed at the time of the exhibition of the goods: |
| 1. |
An exhibition held by the Government or a local government; |
| 2. |
An exhibition held by a person who obtained the approval from the Government or a local government; |
| 3. |
An exhibition held outside the Republic of Korea with the approval from the Government; |
| 4. |
An international exhibition held by the government of a State party to a treaty or by any person who obtained the approval from such government in the territory of the State party. |
| (2) |
A person who desires to be governed by the provisions of paragraph (1) shall submit to the Commissioner of the Korean Intellectual Property Office the application form for trademark registration stating the purport and also submit a document proving the relevant facts to the Commissioner of the Korean Intellectual Property Office within 30 days from the filing date of the application. <Amended by Act No. 10358, Jun. 8, 2010> |
law view
| Article 22 (Examination by Examiners) |
|
| (1) |
The Commissioner of the Korean Intellectual Property Office shall have examiners examine applications for trademark registration and objection to trademark registration. |
| (2) |
Matters necessary for the qualifications for examiners shall be prescribed by Presidential Decree. |
| (3) |
Where an application for trademark registration is deemed to fall under any subparagraph of Article 23 (1), any person may inform the Commissioner of the Korean Intellectual Property Office of such fact, together with supporting evidence. <Amended by Act No. 5355, Aug. 22, 1997> |
law view
| Article 22-2 (Request, etc. for Search of Trademark by Specialized Search Agency) |
|
| (1) |
If deemed necessary for the examination of an application for trademark registration, the Commissioner of the Korean Intellectual Property Office may designate a specialized search agency to request such agency to search trademarks and classify goods. <Amended by Act No. 6414, Feb. 3, 2001; Act No. 8190, Jan. 3, 2007; Act No. 10811, Jun. 30, 2011> |
| (2) |
If deemed necessary for the examination of an application for trademark registration, the Commissioner of the Korean Intellectual Property Office may request assistance or hear opinions from any relevant administrative authorities, persons with vast knowledge and experience in trademarks, or interested parties. |
| (3) |
Where an application for the registration of a geographical collective mark is filed with respect to items entitled for a registration of geographical indication under the Agricultural and Marine Products Quality Control Act, the Commissioner of the Korean Intellectual Property Office shall hear opinions from the Minister of Agriculture, Food and Rural Affairs or the Minister of Oceans and Fisheries about whether it falls under geographical indication. <Newly Inserted by Act No. 7290, Dec. 31, 2004; Act No. 8190, Jan. 3, 2007; Act No. 8852, Feb. 29, 2008; Act No. 10885, Jul. 21, 2011; Act No. 11690, Mar. 23, 2013> |
| (4) |
Matters necessary for the standards for designating specialized search agencies and the request for the search of trademarks, etc. pursuant to paragraph (1) shall be prescribed by Presidential Decree. <Amended by Act No. 8190, Jan. 3, 2007; Act No. 10811, Jun. 30, 2011> |
[This Article Newly Inserted by Act No. 5355, Aug. 22, 1997]
law view
| Article 22-3 (Revocation, etc. of Designation of Specialized Search Agency) |
|
| (1) |
Where any specialized search agency designated pursuant to Article 22-2 (1) falls under subparagraph 1, the Commissioner of the Korean Intellectual Property Office shall revoke the designation thereof, and where it falls under subparagraph 2, he/she may revoke the designation thereof or order the specialized search agency to suspend its business for a prescribed period not exceeding six months: |
| 1. |
Where the specialized search agency has been designated by fraud or other illegal means; |
| 2. |
Where the specialized search agency is not in conformity with the designation standards provided for in Article 22-2 (4). |
| (2) |
When the Commissioner of the Korean Intellectual Property Office intends to revoke the designation of any specialized search agency or to issue an order to suspend its business pursuant to paragraph (1), he/she shall hold a hearing. <Amended by Act No. 11747, Apr. 5, 2013> |
| (3) |
Standards for revoking the designations of specialized search agencies pursuant to paragraph (1) and suspending their business as well as other necessary matters shall be prescribed by Ordinance of the Ministry of Trade, Industry and Energy. <Amended by Act No. 8852, Feb. 29, 2008; Act No. 11690, Mar. 23, 2013> |
[This Article Newly Inserted by Act No. 8190, Jan. 3, 2007]
law view
| Article 22-4 (Order of Examinations and Accelerated Examinations) |
|
| (1) |
The examination of applications for trademark registration shall be made in the order the applications are filed. |
| (2) |
Notwithstanding paragraph (1), the Commissioner of the Korean Intellectual Property Office may have an examiner examine an application for trademark registration which falls under any of the following subparagraphs, prior to other applications: <Amended by Act No. 11747, Apr. 5, 2013> |
| 1. |
In cases where a person other than an applicant is recognized to use for business purpose a trademark identical or similar to a trademark of which the registration is filed, for identical or similar designated goods, without reasonable grounds, after the application for trademark registration is filed; |
| 2. |
In cases of an application for trademark registration prescribed by Presidential Decree, which are deemed to require urgent attention, including cases where an applicant is using a trademark filed for an application for trademark registration for all of the designated goods. |
[This Article Newly Inserted by Act No. 9987, Jan. 27, 2010]
law view
| Article 23 (Decision to Reject Trademark Registration and Notification of Grounds for Rejection) |
|
| (1) |
Where an application for trademark registration falls under any of the following subparagraphs, an examiner shall make a decision to reject trademark registration with respect to such application: <Amended by Act No. 5355, Aug. 22, 1997; Act No. 6414, Feb. 3, 2001; Act No. 7290, Dec. 31, 2004; Act No. 8190, Jan. 3, 2007; Act No. 11113, Dec. 2, 2011> |
| 2. |
Where a trademark is in violation of the provisions of a treaty; |
| 3. |
Where a trademark is identical or similar to a trademark registered in the territory of a State party to a treaty and has been filed by a person who is or was an agent or a representative of the owner of the trademark, within one year prior to the filing date, without such owner's authorization, for designated goods identical or similar to the designated goods covered by the owner's trademark: Provided, That this shall apply only where an objection to trademark registration has been filed or information has been furnished under Article 22 (3) by the owner; |
| 4. |
Where a trademark is not consistent with the definition of marks under Article 2 (1) 1 through 3, 4 and 5 or where, in cases of geographical collective marks or geographical certification marks, the geographical indication and marks are not in accord with the definition of the geographical indication and marks under Article 2 (1) 3-2, 3-4 and 4-2; |
| 5. |
Where, in cases of an application for the registration of a geographical collective mark, the articles of association of the organization concerned prohibit any other person who, for business purpose, produces, manufactures, or processes goods entitled for the geographical indication, from joining the organization, or the articles of association include very strict conditions of entry into the organization, which substantially do not allow any other person to join the organization; |
| 6. |
Where the articles of association under Article 9 (4) lack all or some of the matters concerning the use of collective marks prescribed by Presidential Decree, or where the articles of incorporation or an agreement under Article 9 (5) lacks all or some of the matters concerning the use of certification marks prescribed by Presidential Decree; |
| 7. |
Where an applicant is not a person entitled to have collective marks, certification marks or business emblems registered under Article 3-2, 3-3 or 4; |
| 8. |
Where, in cases of an application for the registration of certification marks, the use of a certification mark is not allowed to a person who carries on the business of producing, manufacturing, processing or selling goods that may use such certification mark or who carries on a service business that uses such certification mark, by means of the articles of incorporation or an agreement without justifiable grounds, or the use of a certification mark is not allowed in effect, for instance, by prescribing conditions for use that are difficult to be met in the articles of incorporation or an agreement. |
| (2) |
Where an examiner intends to make a decision to reject trademark registration pursuant to paragraph (1), he/she shall notify an applicant of the grounds for rejection. In such cases, the applicant may submit a written opinion about the grounds for rejection within a period prescribed by Ordinance of the Ministry of Trade, Industry and Energy. <Amended by Act No. 11747, Apr. 5, 2013> |
| (3) |
Where an examiner notifies an applicant of the grounds for a decision to reject trademark registration pursuant to the forepart of paragraph (2), if the grounds for rejection exist in all or some of two or more designated goods, he/she shall specify the ground and basis for rejecting each of the relevant designated goods. <Newly Inserted by Act No. 11747, Apr. 5, 2013> |
| (4) |
An applicant who fails to submit a written opinion within a period under the latter part of paragraph (2) may apply for continuing procedures for the trademark within two months from the expiry of such period and submit a written opinion about the grounds for rejection within the period. <Newly Inserted by Act No. 11747, Apr. 5, 2013> |
law view
| Article 24 (Publication of Application) |
|
| (1) |
When an examiner fails to find any ground for rejection of an application for trademark registration, he/she shall decide to publish such application: Provided, That in cases falling under any of the following subparagraphs, he/she may omit the decision to publish the application: <Amended by Act No. 8190, Jan. 3, 2007> |
| 1. |
When the applicant divides his/her application for trademark registration that has already been published into two or more pursuant to Article 18 after a certified copy of a decision to publish the application is served on the applicant, and no reason for rejecting the divisional application can be found; |
| 2. |
When, in cases where a trial decision on revocation of a decision to reject the application for trademark registration is made, the application for the relevant trademark registration has already been published and no reason for rejecting such application can be found. |
| (2) |
When a decision under paragraph (1) is made, the Commissioner of the Korean Intellectual Property Office shall serve a certified copy of the decision on the applicant and publish the application in the Trademark Gazette. |
| (3) |
The Commissioner of the Korean Intellectual Property Office shall make the application documents and attached documents thereto available for public inspection at the Korean Intellectual Property Office for two months from the date of publication of the application. <Amended by Act No. 8190, Jan. 3, 2007> |
law view
| Article 24-2 (Right to Demand Compensation for Loss) |
|
| (1) |
An applicant may, after his/her application is published under Article 24 (2) (including cases applied mutatis mutandis under Articles 49 (3) and 81 (1)), warn, in writing, a person who uses a trademark identical or similar to the trademark of the said published application on goods that are identical or similar to the designated goods of the said published application: Provided, That where the applicant shows a copy of the said application for trademark registration, he/she may give a warning, in writing, even before the publication of the application. |
| (2) |
An applicant who has sent a warning under paragraph (1) may claim payment of compensation in an amount equivalent to the loss of business caused by use of the said trademark from the date of warning to the date on which the establishment of trademark rights is registered. |
| (3) |
The right of claim under paragraph (2) shall be exercised only after the establishment of trademark rights is registered for an application for trademark registration. |
| (4) |
The exercise of the right of claim under paragraph (2) shall not preclude the exercise of trademark rights. |
| (5) |
Articles 52, 66, 69, and 70 of this Act, and Articles 760 and 766 of the Civil Act shall apply mutatis mutandis to cases of exercising the right of claim under paragraph (2). In such cases, "date on which the injured party or his/her legal representative becomes aware of such damage and of the identity of the person who caused it" in Article 766 (1) of the Civil Act shall be construed as "date on which the establishment of the said trademark rights is registered". <Amended by Act No. 8190, Jan. 3, 2007> |
| (6) |
Where an application for trademark registration falls under any of the following subparagraphs, the right of claim under paragraph (2) shall be deemed not to have existed: <Amended by Act No. 8190, Jan. 3, 2007> |
| 1. |
Where an application for trademark registration has been abandoned, withdrawn or invalidated; |
| 2. |
Where a decision to reject trademark registration for an application for trademark registration has become final and conclusive; |
| 3. |
Where a trial decision to invalidate trademark registration pursuant to Article 71 (excluding cases under Article 71 (1) 4 through 6) has become final and conclusive. |
[This Article Newly Inserted by Act No. 6414, Feb. 3, 2001]
law view
| Article 24-3 (Amendment Ex Officio, etc.) |
|
| (1) |
An examiner may amend ex officio (hereinafter referred to as "amendment ex officio") evidently erroneous matters concerning designated goods or classification thereof entered in an application for trademark registration, in making a decision to publish the application. |
| (2) |
Where an examiner intends to make an amendment ex officio under paragraph (1), he/she shall inform the applicant of matters subject to amendment ex officio, serving the applicant with a certified copy of a decision to publish the application under Article 24 (2). |
| (3) |
If an applicant cannot accept all or some of the matters subject to amendment ex officio, he/she shall submit to the Commissioner of the Korean Intellectual Property Office a written opinion about the matters subject to amendment ex officio no later than the expiry of the period of publication of the application under Article 24 (3). |
| (4) |
If an applicant submits a written opinion under paragraph (3), all or some of the matters subject to amendment ex officio shall be deemed not to have existed. |
| (5) |
If amendment ex officio is made to matters which are not evidently erroneous, such amendment ex officio shall be deemed not to have existed. |
[This Article Newly Inserted by Act No. 9987, Jan. 27, 2010]
law view
| Article 25 (Objection to Trademark Registration) |
|
| (1) |
When any application is published, any person may raise an objection to the Commissioner of the Korean Intellectual Property Office against the registration of the relevant trademark on the grounds that the application falls under any subparagraph of Article 23 (1) or Article 48 (1) 2 and 4 within two months from the date on which such application is published. <Amended by Act No. 8190, Jan. 3, 2007> |
| (2) |
Where any person intends to raise an objection to trademark registration, he/she shall submit to the Commissioner of the Korean Intellectual Property Office a written objection specifying the following matters, together with supporting evidence: <Amended by Act No. 5355, Aug. 22, 1997; Act No. 6414, Feb. 3, 2001; Act No. 8190, Jan. 3, 2007; Act No. 11962, Jul. 30, 2013> |
| 1. |
The name and address of the person raising an objection to trademark registration (if the person is a corporation, its title and place of business); |
| 1-2. |
The name, address, or place of business of, if any, an agent (if the agent is a patent corporation/patent corporation (with limited liability), its title, place of office, and the name of the designated patent attorney); |
| 2. |
The subject of the objection raised against trademark registration; |
| 3. |
Deleted; <by Act No. 8190, Jan. 3, 2007> |
| 4. |
Matters concerning the application for the objection to trademark registration; |
| 5. |
Reasons for the application for the objection to trademark registration and indication of supporting evidence. |
law view
| Article 26 (Amendment of Reason, etc. for Objection to Trademark Registration) |
|
A person who has raised an objection to trademark registration under Article 25 (1) (hereinafter referred to as "objector") may amend the reasons and evidence mentioned in a written request for objection to trademark registration within 30 days after the period of the objection to trademark registration expires.
law view
| Article 27 (Decision on Request for Objection to Trademark Registration) |
|
| (1) |
An examiner shall, upon receiving a request for objection to trademark registration, serve on the applicant a copy of a written request for objection to trademark registration, and provide him/her with an opportunity to submit a written response in a prescribed period. |
| (2) |
An examiner shall make a decision on the request for objection to trademark registration after expiry of the period provided in Article 26 or the period provided in paragraph (1). |
| (3) |
Notwithstanding paragraph (1), if any objector fails to present reasons or evidence, the request for objection to trademark registration may be dismissed by a decision after the expiry of the period provided Article 26. <Amended by Act No. 8190, Jan. 3, 2007> |
| (4) |
A decision on the request for objection to trademark registration shall be made in writing with the reason therefor specified. |
| (5) |
The Commissioner of the Korean Intellectual Property Office shall, upon a decision under paragraph (2), serve a certified copy of the decision on the applicant and the objector. |
| (6) |
No decision on the request for objection to trademark registration shall be disobeyed. |
| (7) |
Where reasons given in accordance with paragraph (4) are different for two or more designated goods, they shall be given for each of such goods. <Newly Inserted by Act No. 5355, Aug. 22, 1997> |
law view
| Article 28 (Decision to Reject Trademark Registration Ex Officio after Publication of Application for Trademark Registration) |
|
| (1) |
Where an examiner discovers any ground for rejection after the publication of an application, he/she may make a decision ex officio to reject trademark registration under Article 23. <Amended by Act No. 6414, Feb. 3, 2001> |
| (2) |
Where an examiner decides to reject trademark registration under paragraph (1), he/she shall not render a decision on any objection to trademark registration filed under Article 25. <Amended by Act No. 6414, Feb. 3, 2001> |
| (3) |
Where a decision to reject trademark registration has been made under paragraph (1), the Commissioner of the Korean Intellectual Property Office shall serve a certified copy of the decision of rejection on the objector. <Amended by Act No. 6414, Feb. 3, 2001> |
law view
| Article 29 (Concurrence of Objections against Trademark Registration) |
|
| (1) |
Where two or more objections have been raised, an examiner may merge or separate such cases for an examination or decision. |
| (2) |
Where two or more objections have been raised, and one of them is recognized well-grounded after examination, the examiner may not render a decision on the other objection or the rest of objections. |
| (3) |
The Commissioner of the Korean Intellectual Property Office shall serve the certified copies of the decision to reject trademark registration even on objectors whose objection to trademark registration has not been decided under paragraph (2). <Amended by Act No. 6414, Feb. 3, 2001> |
law view
| Article 30 (Decision to Grant Trademark Registration) |
|
Where an examiner cannot find any grounds for rejection of an application for trademark registration, he/she shall render a decision to grant trademark registration. <Amended by Act No. 6414, Feb. 3, 2001>
law view
| Article 31 (Method of Decision on Whether to Grant or Reject Trademark Registration) |
|
| (1) |
A decision on whether to grant or reject trademark registration shall be rendered in writing, and the reasons for the decision shall be given. <Amended by Act No. 6414, Feb. 3, 2001> |
| (2) |
Where an examiner has rendered a decision on whether to grant or reject trademark registration, the Commissioner of the Korean Intellectual Property Office shall serve a certified copy of the decision on the applicant. <Amended by Act No. 6414, Feb. 3, 2001> |
law view
| Article 32 (Suspension of Examination or Litigation Procedures) |
|
| (1) |
If necessary for the examination of an application for trademark registration, the procedures for the examination of the application for trademark registration may be suspended until a trial decision becomes final and conclusive or litigation procedures are concluded. |
| (2) |
The court may, if necessary for the litigation, suspend the procedures for litigation until a decision on whether to grant or reject trademark registration becomes final and conclusive. <Amended by Act No. 6414, Feb. 3, 2001> |
law view
| Article 33 (Application Mutatis Mutandis of Provisions on Trials) |
|
[This Article Wholly Amended by Act No. 11113, Dec. 2, 2011]
CHAPTER IV TRADEMARK REGISTRATION FEES AND TRADEMARK REGISTRATION, ETC.
law view
| Article 34 (Trademark Registration Fees) |
|
| (1) |
A person intending to obtain a registration of the establishment of trademark rights, registration of additional designated goods, or registration for renewal of the duration of trademark rights shall pay a trademark registration fee. In such cases, a person intending to obtain a registration of the establishment of trademark rights or renewal of the duration of trademark rights may pay a trademark registration fee in two installments. |
| (2) |
An interested party may pay a trademark registration fee, irrespective of the intention of a person liable to pay a trademark registration fee under paragraph (1). |
| (3) |
Matters necessary for trademark registration fees under paragraph (1), method of payment, period of payment, payment in installments and other relevant matters shall be prescribed by Ordinance of the Ministry of Trade, Industry and Energy. <Amended by Act No. 11690, Mar. 23, 2013> |
[This Article Wholly Amended by Act No. 9987, Jan. 27, 2010]
law view
| Article 34-2 (Abandonment of Some Designated Goods at Time of Payment of Trademark Registration Fees) |
|
| (1) |
A person who has obtained a decision granting trademark registration in an application for trademark registration that includes two or more designated goods, who has obtained a decision granting the registration of additional designated goods in an application for the registration of additional designated goods, or who has filed an application for renewal registration of duration of trademark rights may abandon each of the said designated goods when he/she pays trademark registration fees (referring to the first installment of trademark registration fees when payment is made in installments under the latter part of Article 34 (1)). <Amended by Act No. 9987, Jan. 27, 2010> |
| (2) |
Matters necessary for the abandonment of designated goods under paragraph (1) shall be prescribed by Ordinance of the Ministry of Trade, Industry and Energy. <Amended by Act No. 8852, Feb. 29, 2008; Act No. 11690, Mar. 23, 2013> |
[This Article Newly Inserted by Act No. 6414, Feb. 3, 2001]
law view
| Article 35 (Extension of Payment Period of Trademark Registration Fees) |
|
The Commissioner of the Korean Intellectual Property Office may, upon a request, extend the payment period of trademark registration fees under Article 34 (3) within the extent of 30 days.
law view
| Article 36 (Abandonment of Application due to Failure to Pay Trademark Registration Fees) |
|
Where no relevant trademark registration fees (referring to the first installment of trademark registration fees when payment is made in installments under the latter part of Article 34 (1)) are paid within a period of payment under Articles 34 (3) and 35 (referring to any time the remainder fails to be paid within a period for remainder payment, in cases where an order to pay the remainder is issued under Article 36-2 even if the period of payment expires, and any time a payment fails to be made within the relevant period in cases falling under Article 36-3), an application for trademark registration, application for the registration of additional designated goods or application for registering renewal of the duration of trademark rights shall be deemed abandoned.
[This Article Wholly Amended by Act No. 9987, Jan. 27, 2010]
law view
| Article 36-2 (Payment of Remainder of Trademark Registration Fees) |
|
| (1) |
Where a person intending to obtain any registration of the establishment of trademark rights, registration of additional designated goods, or the registration of renewal of the duration of trademark rights, or a trademark rights holder fails to pay some of trademark registration fees within the period of payment under Article 34 (3) or 35, the Commissioner of the Korean Intellectual Property Office shall order him/her to pay the remainder of trademark registration fees. <Amended by Act No. 9987, Jan. 27, 2010> |
| (2) |
A person who has been ordered to pay the remainder under paragraph (1) may pay the remainder of trademark registration fees within one month after he/she receives such order. |
| (3) |
Where a person who is to pay the remainder of trademark registration fees under paragraph (2) pays the fees after the period of payment under Article 34 (3) or 35, he/she shall pay an amount prescribed by Ordinance of the Ministry of Trade, Industry and Energy within the extent of double the amount of the unpaid trademark registration fee. <Amended by Act No. 9678, May 21, 2009; Act No. 11690, Mar. 23, 2013> |
[This Article Newly Inserted by Act No. 6765, Dec. 11, 2002]
law view
| Article 36-3 (Restoration, etc. of Application for Trademark Registration by Payment of Trademark Registration Fees or Payment of Remainder) |
|
| (1) |
Where an applicant who has filed an application for trademark registration, an application for the registration of additional designated goods, or an application for registering renewal of the duration of trademark rights, or a trademark rights holder fails to pay trademark registration fees within a period of payment under Article 34 (3) or 35 or to pay the remainder within a period of remainder payment under Article 36-2 (2) due to reasons not attributable to the applicant or the trademark rights holder, he/she may pay the trademark registration fees or the remainder within 14 days from the date on which the said reason ceases to exist: Provided, That the foregoing shall not apply where six months have elapsed since the expiry of the period of payment or of the period of remainder payment, whichever is later. <Amended by Act No. 6765, Dec. 11, 2002; Act No. 9987, Jan. 27, 2010> |
| (2) |
Notwithstanding Article 36, a person who has paid trademark registration fees or the remainder thereof under paragraph (1) (referring to a person who has paid the first installment of the trademark registration fees or the remainder thereof if payment is made in installments under the latter part of Article 34 (1)) shall be deemed not to have abandoned the application for trademark registration, application for the registration of additional designated goods, or application for registering renewal of the duration of trademark rights. <Amended by Act No. 6765, Dec. 11, 2002; Act No. 9987, Jan. 27, 2010> |
| (3) |
Where an application for trademark registration, application for the registration of additional designated goods, or trademark rights have been restored under paragraph (2), the application for trademark registration, application for the registration of additional designated goods, or trademark rights shall be ineffective against the use of a trademark that is identical or similar to the relevant registered trademark on goods identical or similar to the designated goods if the said use occurred within a period ranging from the expiry of the payment period under Article 34 (3) or 35 to the restoration date of the application for trademark registration, the application for the registration of additional designated goods, or trademark rights. |
[This Article Newly Inserted by Act No. 6414, Feb. 3, 2001]
law view
| Article 37 (Official Fees) |
|
| (1) |
A person who files an application, submits a request, or undergoes other procedures for a trademark shall pay an official fee: Provided, That the foregoing shall not apply to an official fee for a trial for invalidation requested by an examiner under Articles 71 (1) and 72 (1). |
| (2) |
Matters necessary for official fees under paragraph (1), its payment method and period, etc. shall be determined by Ordinance of the Ministry of Trade, Industry and Energy. <Amended by Act No. 4541, Mar. 6, 1993; Act No. 5083, Dec. 29, 1995; Act No. 6414, Feb. 3, 2001; Act No. 8852, Feb. 29, 2008; Act No. 11690, Mar. 23, 2013> |
| (3) |
A person intending to file an application for renewal registration of the duration of trademark rights within a period under the proviso to Article 43 (2) shall pay an official fee under paragraph (2) in addition to an amount determined by Ordinance of the Ministry of Trade, Industry and Energy. <Amended by Act No. 9987, Jan. 27, 2010; Act No. 11690, Mar. 23, 2013> |
law view
| Article 38 (Refund of Trademark Registration Fees, etc.) |
|
| (1) |
No trademark registration fees and official fees already paid shall be refunded: Provided, That in cases falling under any of the following subparagraphs, the trademark registration fees and official fees shall be refunded upon receiving claims filed by persons who have paid them: <Amended by Act No. 9987, Jan. 27, 2010> |
| 1. |
Where the trademark registration fees and official fees are mistakenly paid; |
| 2. |
Where the application filed for trademark registration (excluding divisional applications, converted applications, or applications for the trademark registration providing the basis for divisional applications or converted applications, applications filed with a request for an accelerated examination, and applications for the registration of international trademarks that are deemed applications for trademark registration provided in this Act pursuant to Article 86-14 (1)) is withdrawn or abandoned within one month from the date on which the relevant application is filed for trademark registration, the application fees for trademark registration and application fees for the priority claim for the application of trademark registration from among the official fees already paid. |
| (2) |
Where any trademark registration fees and official fees already paid fall under any subparagraph of paragraph (1), the Commissioner of the Korean Intellectual Property Office shall inform the persons who have paid such fees of the fact. |
| (3) |
No claims for the refund of the trademark registration fees and official fees referred to in the proviso to paragraph (1), other than its subparagraphs, may be filed if three years have passed from the date on which the persons concerned are informed pursuant to paragraph (2). <Amended by Act No. 8458, May 17, 2007> |
[This Article Wholly Amended by Act No. 8190, Jan. 3, 2007]
law view
| Article 39 (Trademark Register) |
|
| (1) |
The Commissioner of the Korean Intellectual Property Office shall keep the trademark register at the Korean Intellectual Property Office and shall register the following matters: <Amended by Act No. 6414, Feb. 3, 2001; Act No. 6765, Dec. 11, 2002> |
| 1. |
The establishment, transfer, modification, extinguishment, restoration, renewal of the duration, conversion of the goods classification under Article 46-2, registration of additional designated goods, or restriction on disposition, of trademark rights; |
| 2. |
The establishment, maintenance, transfer, modification, extinguishment, or restriction on disposition of an exclusive or non-exclusive license; |
| 3. |
The establishment, transfer, modification, extinguishment, or restriction on disposition of a pledge of which the object is trademark rights, exclusive license, or non-exclusive license. |
| (2) |
The trademark register referred to in paragraph (1) may be prepared wholly or partially by using magnetic tape, etc. |
| (3) |
Matters necessary for the items, procedures, etc. for the registration, other than those referred to in paragraphs (1) and (2), shall be prescribed by Presidential Decree. |
law view
| Article 40 (Issuance of Trademark Registration Certificate) |
|
| (1) |
When the Commissioner of the Korean Intellectual Property Office registers an establishment of trademark rights, he/she shall issue a trademark registration certificate to a trademark rights holder. |
| (2) |
When a trademark registration certificate is not coincident to a trademark register, the Commissioner of the Korean Intellectual Property Office shall, upon a request or ex officio, withdraw the trademark registration certificate to issue an amended certificate or a new certificate. |
CHAPTER V TRADEMARK RIGHTS
law view
| Article 41 (Registration of Establishment of Trademark Right) |
|
| (1) |
Trademark rights shall come into effect upon registration of the establishment. |
| (2) |
In cases when trademark registration fees (referring to the first installment of trademark registration fees if payment is made in installments under the latter part of Article 34 (1); hereinafter the same shall apply in this paragraph) are paid in accordance with Article 34 (1) or 35, when the remainder of trademark registration fees are paid in accordance with Article 36-2 (2), or when trademark registration fees or the remainder is paid in accordance with Article 36-3 (1), the Commissioner of the Korean Intellectual Property Office shall register the establishment of trademark rights concerned. <Amended by Act No. 9987, Jan. 27, 2010> |
law view
| Article 42 (Duration of Trademark Rights) |
|
| (1) |
The duration of trademark rights shall be ten years from the date of registration of the establishment. |
| (2) |
The duration of trademark rights may be renewed for a period of ten years upon the application for the registration for renewal of the duration. <Amended by Act No. 9987, Jan. 27, 2010> |
| (3) |
Where trademark registration fees are paid in installments under the latter part of Article 34 (1), and the second installment of trademark registration fees are not paid within a period of payment under Articles 34 (3) and 35 (referring to any time the remainder is not paid within the period of remainder payment in cases where an order to pay the remainder is issued under Article 36-2 even if the period of payment expires, and any time the fees are not paid within the relevant period of payment in cases falling under Article 36-3), trademark rights concerned shall be extinguished after five years elapse from the registration date of establishment or renewal of the duration, notwithstanding paragraphs (1) and (2). <Newly Inserted by Act No. 9987, Jan. 27, 2010> |
law view
| Article 43 (Application for Renewal Registration of Duration of Trademark Rights) |
|
| (1) |
A person intends to obtain a registration for renewal of the duration of trademark rights under Article 42 (2) shall submit to the Commissioner of the Korean Intellectual Property Office the application form for renewal registration of the duration of trademark rights, stating the following matters: <Amended by Act No. 5355, Aug. 22, 1997; Act No. 6414, Feb. 3, 2001; Act No. 9987, Jan. 27, 2010> |
| 1. |
Requirements under Article 9 (1) 1, 2, 4, and 7; |
| 2. |
Registration number of the registered trademark; |
| 3. |
Deleted. <by Act No. 4597, Dec. 10, 1993> |
| (2) |
An application for renewal registration of the duration of trademark rights shall be filed within one year prior to the expiry of the duration of trademark rights: Provided, That a person who fails to apply for renewal registration of the duration of trademark rights within this period may apply for renewal registration of the duration of trademark rights within six months after the duration of trademark rights expires. <Amended by Act No. 9987, Jan. 27, 2010> |
| (3) |
Where trademark rights are owned jointly, all of the joint owners shall jointly file an application for renewal registration of the duration of trademark rights. <Amended by Act No. 9987, Jan. 27, 2010> |
| (4) |
Matters necessary for an application for renewal registration of the duration of trademark rights, other than those referred to in paragraphs (1) through (3), shall be determined by Ordinance of the Ministry of Trade, Industry and Energy. <Amended by Act No. 9987, Jan. 27, 2010; Act No. 11690, Mar. 23, 2013> |
law view
| Articles 44 and 45 Deleted. <by Act No. 9987, Jan. 27, 2010> |
|
law view
| Article 46 (Effects of Application, etc. for Renewal Registration of Duration of Trademark Rights) |
|
| (1) |
Where an application for renewal registration of the duration of trademark rights has been filed within the period under Article 43 (2), the duration of trademark rights shall be deemed renewed. <Amended by Act No. 9987, Jan. 27, 2010> |
| (2) |
The registration for renewal of the duration of trademark rights shall be effective on the following date of the expiry of the initial registration. |
law view
| Article 46-2 (Application Filed to Register Conversion of Goods Classification) |
|
| (1) |
A trademark rights holder who has obtained a registration of the establishment of trademark rights, registration of additional designated goods, or registration for renewal of the duration of trademark rights by designating the goods according to the goods classification prescribed by Ordinance of the Ministry of Commerce and Industry under the previous Article 10 (1) of the Trademark Act, before the enforcement of the Trademark Act amended by Act No. 5355, shall obtain a registration after converting the classification of designated goods (hereinafter referred to as "conversion of the goods classification") as prescribed by Ordinance of the Ministry of Trade, Industry and Energy: Provided, That the foregoing shall not apply where a person has obtained a registration for renewal of the duration of trademark rights for the designated goods according to the goods classification prescribed by Ordinance of the Ministry of Commerce and Industry under Article 10 (1) of the Trademark Act amended by Act No. 5355. <Amended by Act No. 8852, Feb. 29, 2008; Act No. 11690, Mar. 23, 2013> |
| (2) |
A person intending to obtain the registration of the conversion of the goods classification under paragraph (1) (hereinafter referred to as "registration of the conversion of the goods classification") shall submit to the Commissioner of the Korean Intellectual Property Office the application form for the registration of the conversion of the goods classification describing the particulars of the following subparagraphs: <Amended by Act No. 9987, Jan. 27, 2010; Act No. 11962, Jul. 30, 2013> |
| 1. |
The name and address of an applicant (if the applicant is a corporation, its title and place of business); |
| 2. |
The name, address, or place of business of, if any, an agent (if the agent is a patent corporation/patent corporation (with limited liability), its title, place of office, and the name of the designated patent attorney); |
| 3. |
Registration number of the registered trademark; |
| 4. |
Designated goods and the corresponding classification that the applicant wishes to convert. |
| (3) |
An application for registration of the conversion of the goods classification shall be filed within the period from one year before the expiry of the duration of trademark rights to six months after the expiry of the duration. |
| (4) |
Where trademark rights are owned jointly, all joint owners shall jointly file an application for registration for the conversion of the goods classification. |
[This Article Newly Inserted by Act No. 6414, Feb. 3, 2001]
law view
| Article 46-3 Deleted. <by Act No. 9987, Jan. 27, 2010> |
|
law view
| Article 46-4 (Decision to Reject Registration of Conversion of Goods Classification and Notification of Grounds for Rejection) |
|
| (1) |
An examiner shall make a decision to reject the registration of the conversion of the goods classification in cases where an application of the registration for the conversion of the goods classification falls under any of the following subparagraphs: <Amended by Act No. 8190, Jan. 3, 2007; Act No. 8852, Feb. 29, 2008; Act No. 9987, Jan. 27, 2010; Act No. 11690, Mar. 23, 2013> |
| 1. |
Where the designated goods for which an application filed to register the conversion of the goods classification has been filed are not the goods designated under the registered trademark or where an applicant expands the actual scope of the designated goods; |
| 2. |
Where the designated goods of an application filed to register the conversion of the goods classification fail to comply with the goods classification prescribed by Ordinance of the Ministry of Trade, Industry and Energy; |
| 3. |
Where an applicant of the registration of the conversion of the goods classification is not the owner of trademark rights concerned; |
| 4. |
Where the requirements for an application for the registration of the conversion of the goods classification provided in Article 46-2 are not met; |
| 5. |
Where the trademark is extinguished, or the application for renewal registration of the duration of trademark rights is abandoned, withdrawn or invalidated. |
| (2) |
Where an examiner intends to make a decision to reject the registration of the conversion of the goods classification pursuant to paragraph (1), he/she shall notify the applicant of the grounds for rejection. In such cases, the applicant may submit a written opinion about the grounds for rejection within a period prescribed by Ordinance of the Ministry of Trade, Industry and Energy. <Amended by Act No. 11747, Apr. 5, 2013> |
| (3) |
An applicant who fails to submit a written opinion within a period under the latter part of paragraph (2) may request the continuation of the procedures for registration of the conversion of the goods classification within two months from the expiry of such period, and submit a written opinion about the grounds for rejection within the period. <Newly Inserted by Act No. 11747, Apr. 5, 2013> |
[This Article Newly Inserted by Act No. 6414, Feb. 3, 2001]
law view
| Article 46-5 (Registration of Conversion of Goods Classification) |
|
Where an examiner makes a decision to register the conversion of the goods classification under Article 30 applied mutatis mutandis
under Article 49 (2), the Commissioner of the Korean Intellectual Property Office shall register the converted classification of the designated goods.
[This Article Newly Inserted by Act No. 6414, Feb. 3, 2001]
law view
| Article 47 (Application for Registration of Additional Designated Goods) |
|
| (1) |
A trademark rights holder or an applicant may obtain a registration to add designated goods to the registered trademark or to the application for trademark registration. In such cases, the expiry of the duration of trademark rights for designated goods that are to be additionally registered shall be the expiry of the duration of the registered trademark rights concerned. <Amended by Act No. 5355, Aug. 22, 1997; Act No. 10811, Jun. 30, 2011> |
| (2) |
A person intending to obtain a registration of additional designated goods under paragraph (1) shall submit to the Commissioner of the Korean Intellectual Property Office the application form for the registration of additional designated goods, specifying the following matters: <Amended by Act No. 6414, Feb. 3, 2001; Act No. 8190, Jan. 3, 2007> |
| 1. |
Matters provided in Article 9 (1) 1, 2, 5 and 7; |
| 2. |
Registration number of the registered trademark, or application number of the application for trademark registration; |
| 3. |
Goods to be designated additionally and the classification thereof. |
law view
| Article 48 (Decision to Reject Registration of Additional Designated Goods and Notification of Grounds for Rejection) |
|
| (1) |
Where any application for the registration of additional designated goods falls under any of the following subparagraphs, an examiner shall make a decision to reject the registration of additional designated goods with regard to such application: <Amended by Act No. 6414, Feb. 3, 2001; Act No. 8190, Jan. 3, 2007> |
| 1. |
Where it falls under any subparagraph of Article 23 (1); |
| 2. |
Where an applicant for the registration of additional designated goods is not the owner of trademark rights nor applicant thereof; |
| 3. |
Deleted; <by Act No. 8190, Jan. 3, 2007> |
| 4. |
Where trademark rights of the registered trademark are extinguished, or an application for trademark registration is abandoned, withdrawn or invalidated, or a decision to reject trademark registration in regard to the application for trademark registration becomes final and conclusive. |
| (2) |
Where an examiner intends to make a decision to reject the registration of additional designated goods pursuant to paragraph (1), he/she shall notify the applicant of the grounds for rejection. In such cases, the applicant may submit a written opinion about the grounds for rejection within a period prescribed by Ordinance of the Ministry of Trade, Industry and Energy. <Amended by Act No. 11747, Apr. 5, 2013> |
| (3) |
An applicant who fails to submit a written opinion within a period under the latter part of paragraph (2) may request the continuation of the procedures for the registration of additional designated goods within two months from the expiry of such period, and submit a written opinion about the grounds for rejection within the period. <Newly Inserted by Act No. 11747, Apr. 5, 2013> |
law view
| Article 49 (Provisions Applicable Mutatis Mutandis) |
|
| (1) |
Article 13 shall apply mutatis mutandis to the amendments of the procedures for an application for the registration for renewal of the duration of trademark rights. <Amended by Act No. 9987, Jan. 27, 2010> |
| (2) |
Articles 10 (1), 13, 14, 16, 17, 22 and 30 through 32, and subparagraphs 1 through 5 and 7 of Article 77-10 shall apply mutatis mutandis to applications for the registration of the conversion of the goods classification of trademark rights. <Amended by Act No. 11113, Dec. 2, 2011> |
| (3) |
Articles 9-2, 10 (1), 13 through 17, 17-2, 20 through 22, 22-4, 24, 24-2, 24-3, and 25 through 32, Article 77-4, subparagraphs 1 through 5 and 7 of Article 77-10, and Article 77-20, and Articles 143, 299 and 367 of the Civil Procedure Act shall apply mutatis mutandis to applications for the registration of additional designated goods. <Amended by Act No. 9987, Jan. 27, 2010; Act No. 11113, Dec. 2, 2011> |
law view
| Article 50 (Effects of Trademark Rights) |
|
A trademark rights holder shall have an exclusive right to use the registered trademark for the designated goods: Provided
, That if an exclusive license is established with respect to trademark rights, the foregoing shall not apply to the extent that an exclusive licensee monopolizes the right to use the registered trademark in accordance with Article 55 (3).
law view
| Article 51 (Scope of Ineffectiveness of Trademark Rights) |
|
| (1) |
No effect of trademark rights (excluding geographical collective mark rights) shall be extended to a trademark which falls under any of the following subparagraphs: <Amended by Act No. 5355, Aug. 22, 1997; Act No. 6414, Feb. 3, 2001; Act No. 7290, Dec. 31, 2004; Act No. 8190, Jan. 3, 2007; Act No. 11113, Dec. 2, 2011; Act No. 11747, Apr. 5, 2013> |
| 1. |
Any trademark indicating his/her own name, title or trade name, portrait, signature, seal or well-known pseudonym, stage name, pen name and the well-known abbreviated name thereof in a common way; |
| 2. |
Any trademark indicating in the normal denomination, place of origin, quality, raw materials, efficacy, use, quantity, shape (including shapes of wrappers), price or producing, processing and using methods and time of goods identical or similar to the designated goods of the registered trademark in a common way; |
| 2-2. |
In cases of trademarks comprised of three-dimensional shapes provided in Article 9 (2) and where it is impossible to recognize by the three-dimensional shape whose business the goods are related to, any trademark comprised of the shapes identical or similar to the three-dimensional shape of the registered trademark that is used for the goods identical or similar to the designated goods of the registered trademark; |
| 3. |
Any trademark used commonly for goods identical or similar to designated goods of the registered trademark, and trademark comprised of distinguished geographical denomination and abbreviation thereof or map; |
| 4. |
Any trademark with shapes, colors, the combination of colors, sounds or odors essential to secure the functions of the designated goods of the registered trademark or their packaging. |
| (2) |
No effect of geographical collective mark rights shall be extended to the trademark or geographical indication which falls under any of the following subparagraphs: <Newly Inserted by Act No. 7290, Dec. 31, 2004; Act No. 10811, Jun. 30, 2011> |
| 1. |
Any trademark falling under paragraph (1) 1, 2 (excluding cases falling under the place of origin), or 4; |
| 2. |
Any trademark used commonly for goods identical or recognized as identical to designated goods of the registered geographical collective mark; |
| 3. |
Any geographical indication used for goods identical or recognized as identical to designated goods of the registered geographical collective mark, which is used by a person who produces, manufactures or processes the goods in the relevant region for business purpose, or any other geographical indication which has homonymous relation to the aforesaid geographical indication; |
| 4. |
In cases where a registered trademark of which the application was filed earlier contains a geographical indication identical or similar to a registered geographical collective mark, any registered trademark used by the trademark rights holder or any other relevant exclusive or non-exclusive licensee as to the designated goods. |
| (3) |
Paragraph (1) 1 shall not apply where a person uses his/her own name, title or trade name, portrait, signature, seal or well-known pseudonym, stage name, pen name and the well-known abbreviated name thereof for the purpose of unfair competition after the establishment of trademark rights is registered. <Newly Inserted by Act No. 11747, Apr. 5, 2013> |
law view
| Article 52 (Scope of Protection of Registered Trademark, etc.) |
|
| (1) |
The scope of protection of registered trademarks shall be determined by a trademark specified in the application form for trademark registration (referring to visual expression in cases of a trademark falling under Article 2 (1) 1 (c)). <Amended by Act No. 11113, Dec. 2, 2011> |
| (2) |
The scope of protection of designated goods shall be determined by the goods specified in the application form for trademark registration or the application form for registration of the conversion of the goods classification. <Amended by Act No. 6414, Feb. 3, 2001> |
law view
| Article 53 (Relation to Design Right, etc. of Another Person) |
|
Where a registered trademark used by its trademark rights holder, or exclusive or non-exclusive licensee conflicts, depending on how the trademark is used, with another person's patent right, utility model right or design right applied for prior to the application for the registration of such trademark, or with another person's copyright created before the application for the registration of such trademark, he/she may not use the registered trademark for designated goods in conflict with the relevant right of another person without obtaining the consent of the patentee, owner of a utility model right, owner of design right, or owner of copyright. <Amended by Act No. 7289, Dec. 31, 2004>
law view
| Article 54 (Transfer and Joint Ownership of Trademark Rights, etc.) |
|
| (1) |
Trademark rights may be divided by designated goods so as to be transferred. In such cases, similar types of designated goods shall be transferred all together. |
| (2) |
through (4) Deleted. <by Act No. 5355, Aug. 22, 1997> |
| (5) |
Where trademark rights are owned jointly, no joint owner may transfer his/her share or establish a pledge on the share without obtaining the consent of all of other joint owners. <Amended by Act No. 5355, Aug. 22, 1997> |
| (6) |
Where trademark rights are owned jointly, no joint owner may establish any exclusive or non-exclusive license to use trademark rights without obtaining the consent of all of other joint owners. <Amended by Act No. 5355, Aug. 22, 1997> |
| (7) |
A business emblem right shall be non-transferable: Provided, That the foregoing shall not apply to cases of transferring it together with the business. |
| (8) |
Trademark rights registered under the provisos to Article 7 (1) 1-3, 1-4 and 3 shall be non-transferable: Provided, That the foregoing shall not apply to cases of transferring it together with the business related to the titles, abbreviated names or marks under Article 7 (1) 1-3, 1-4 and 3. <Amended by Act No. 9987, Jan. 27, 2010> |
| (9) |
A collective mark right shall be non-transferable: Provided, That in cases of a merger of corporations, it may be transferred with permission from the Commissioner of the Korean Intellectual Property Office. |
| (10) |
A certification mark right shall be non-transferable: Provided, That it may be transferred, upon permission from the Commissioner of the Korean Intellectual Property Office, if it is transferred with its business to a person eligible to obtain a registration of such certification mark pursuant to Article 3-3. <Newly Inserted by Act No. 11113, Dec. 2, 2011> |
| (11) |
No pledge, the object of which is trademark rights under the provisos to Article 7 (1) 1-3, 1-4 and 3, business emblem rights, collective mark rights, or certification mark rights, may be established. <Amended by Act No. 9987, Jan. 27, 2010; Act No. 11113, Dec. 2, 2011> |
law view
| Article 54-2 (Division of Trademark Rights) |
|
| (1) |
Where trademark rights cover two or more designated goods, such trademark rights may be divided for each of the designated goods. |
| (2) |
Where an invalidation trial is requested pursuant to Article 71 (2), the division under paragraph (1) may be performed, until a trial decision becomes final and conclusive, even after trademark rights are extinguished. |
[This Article Newly Inserted by Act No. 5355, Aug. 22, 1997]
law view
| Article 55 (Exclusive License) |
|
| (1) |
A trademark rights holder may establish an exclusive license for another person to use trademark rights. |
| (2) |
No exclusive license may be established to use a business emblem right, collective mark right, or certification mark right. <Amended by Act No. 11113, Dec. 2, 2011> |
| (3) |
An exclusive licensee for whom an exclusive license has been established under paragraph (1) shall have the exclusive right to use the registered trademark on the designated goods to the extent provided in the license agreement. |
| (4) |
An exclusive licensee shall indicate his/her own name or title on the goods. |
| (5) |
No exclusive licensee may transfer the exclusive license without the consent of a trademark rights holder, except in cases of inheritance or other general succession. |
| (6) |
No exclusive licensee may establish a pledge or non-exclusive license on the exclusive license without the consent of a trademark rights holder. |
| (7) |
Article 54 (5) and (6) shall apply mutatis mutandis to exclusive licenses. |
law view
| Article 56 (Effects of Registration of Trademark Rights, etc.) |
|
| (1) |
The matters falling under each of the following subparagraphs shall be ineffective without being registered: <Amended by Act No. 6414, Feb. 3, 2001; Act No. 8190, Jan. 3, 2007; Act No. 11113, Dec. 2, 2011> |
| 1. |
Transfer (excluding transfer by inheritance or other general succession), modification, or extinguishment by abandonment, renewal of the duration, conversion of the goods classification, addition of designated goods or restriction on disposition, of trademark rights; |
| 2. |
Deleted; <by Act No. 11113, Dec. 2, 2011> |
| 3. |
Establishment, transfer (excluding transfer by inheritance or other general succession), modification, extinguishment (excluding cases caused by confusion of any right) or restriction on disposition, of a pledge, the object of which is trademark rights. |
| (2) |
In cases of inheritance of or other general succession to trademark rights and a pledge, which are referred to in the subparagraphs of paragraph (1), the reason therefor shall be reported to the Commissioner of the Korean Intellectual Property Office without delay. <Amended by Act No. 11113, Dec. 2, 2011> |
law view
| Article 57 (Non-exclusive License) |
|
| (1) |
A trademark rights holder may establish a non-exclusive license for another person to use his/her trademark rights. |
| (2) |
A non-exclusive licensee for whom a non-exclusive license has been established under paragraph (1) shall have the right to use the registered trademark on the designated goods to the extent provided in the license agreement. |
| (3) |
No non-exclusive license shall be transferred without the consent of a trademark rights holder (or a trademark rights holder and an exclusive licensee, in cases of a non-exclusive license as to an exclusive license), except in cases of inheritance or other general succession. |
| (4) |
No pledge shall be established on a non-exclusive license without the consent of a trademark rights holder (or a trademark rights holder and an exclusive licensee, in cases of a non-exclusive license as to an exclusive license). |
| (5) |
Articles 54 (5) and 55 (2) and (4) shall apply mutatis mutandis to non-exclusive licenses. |
law view
| Article 57-2 (Right to Use Trademark After Expiry of Duration of Patent Right, etc.) |
|
| (1) |
Where a registered patent right under a patent application filed prior to or on the filing date of an application for trademark registration conflicts with trademark rights under such trademark application, and the duration of the patent right has expired, the original patentee shall have the right to use, within the scope of the original patent right, the registered trademark or other trademarks similar thereto on the designated goods covered by the trademark application or goods similar thereto: Provided, That the foregoing shall not apply where the registered trademark is used for the purpose of unfair competition. |
| (2) |
Where a registered patent right under a patent application filed prior to or on the filing date of an application for trademark registration conflicts with trademark rights under such trademark application, and the duration of the patent right has expired, any person who has an exclusive license with respect to the patent right or a non-exclusive license with respect to the patent right or its exclusive license effective under Article 118 (1) of the Patent Act at the time of the expiry, shall have the right to use, within the scope of the original right, the registered trademark or other trademarks similar thereto on the designated goods or goods similar thereto: Provided, That the foregoing shall not apply where the registered trademark is used for the purpose of unfair competition. <Amended by Act No. 8190, Jan. 3, 2007> |
| (3) |
A person who has a right to use a trademark under paragraph (2) shall pay reasonable consideration to a trademark rights holder or an exclusive licensee. |
| (4) |
A trademark rights holder or an exclusive licensee may request a person who has a right to use the trademark under paragraph (1) or (2) to make indications necessary to prevent confusion between goods of the trademark rights holder's or exclusive licensee's business and goods of such person's business. |
| (5) |
No right to use a trademark under paragraph (1) or (2) shall be transferred (excluding cases where it is transferred by inheritance or other general succession) without the consent of a trademark rights holder or an exclusive licensee. |
| (6) |
Paragraphs (1) through (5) shall apply mutatis mutandis to cases where a utility model right or a design right under a utility model application or a design application, respectively, filed prior to or on the filing date of an application for trademark registration conflicts with trademark rights under such trademark application, and the duration of the utility model right or the design right has expired. <Amended by Act No. 7289, Dec. 31, 2004> |
[This Article Newly Inserted by Act No. 6414, Feb. 3, 2001]
law view
| Article 57-3 (Right to Continually Use Trademark on Grounds of Prior Use) |
|
| (1) |
A person who uses the trademark identical or similar to the registered trademark of any other person on the goods identical or similar to the designated goods and meets all of the following requirements (including a person who succeeds to his/her status) shall hold the right to continually use the goods that is affixed with the relevant trademark: <Amended by Act No. 11747, Apr. 5, 2013> |
| 1. |
He/she shall have continually used the trademark in the Republic of Korea before any other person files an application for the registration of such trademark without any purpose of unfair competition; |
| 2. |
An awareness that the trademark indicates his/her goods shall be widespread among domestic consumers, as a result of using the trademark under subparagraph 1, at the time when any other person files an application for the registration of the trademark. |
| (2) |
A person who meets the requirements referred to in paragraph (1) 1 and uses a means identifying the personality, such as his/her name or trade name, as a trademark according to customary business practice shall have the right to continuously use the relevant trademark on goods that use the trademark. <Amended by Act No. 11747, Apr. 5, 2013> |
| (3) |
A trademark rights holder or an exclusive licensee may request a person who has the right to use the trademark under paragraph (1) to make appropriate indications to prevent any mistake or confusion about the origin between his/her goods and goods of such person. <Newly Inserted by Act No. 11747, Apr. 5, 2013> |
[This Article Newly Inserted by Act No. 8190, Jan. 3, 2007]
law view
| Article 58 (Effects of Registration of Exclusive License, Non-exclusive License, etc.) |
|
| (1) |
The matters falling under the following subparagraphs shall have no effect on any third parties unless they are registered: <Amended by Act No. 11113, Dec. 2, 2011> |
| 1. |
Establishment, transfer (excluding transfer by inheritance or other general succession), modification, extinguishment by abandonment or restriction on disposition, of an exclusive license or a non-exclusive license; |
| 2. |
Establishment, transfer (excluding transfer by inheritance or other general succession), modification, extinguishment by abandonment or restriction on disposition, of a pledge, the object of which is an exclusive license or a non-exclusive license. |
| (2) |
When an exclusive license or a non-exclusive license is registered, it shall also be effective to any person who acquires trademark rights or an exclusive license after the registration. <Amended by Act No. 11113, Dec. 2, 2011> |
| (3) |
In cases of inheritance of or other general succession to an exclusive license, non-exclusive license and pledge right under the subparagraphs of paragraph (1), the reason therefor shall be reported to the Commissioner of the Korean Intellectual Property Office without delay. <Amended by Act No. 11113, Dec. 2, 2011> |
law view
| Article 59 (Abandonment of Trademark Rights) |
|
A trademark rights holder may abandon his/her trademark rights for each of the designated goods.
law view
| Article 60 (Restriction on Abandonment of Trademark Rights, etc.) |
|
| (1) |
No trademark rights holder may abandon his/her trademark rights without the consent of an exclusive or non-exclusive licensee or a pledgee. |
| (2) |
No exclusive licensee may abandon his/her exclusive license without the consent of a pledgee or a non-exclusive licensee under Article 55 (6). |
| (3) |
No non-exclusive licensee may abandon his/her non-exclusive license without the consent of a pledgee under Article 57 (4). |
law view
| Article 61 (Effect of Abandonment) |
|
When trademark rights, an exclusive license, a non-exclusive license, or a pledge has been abandoned, trademark rights, an exclusive license or a non-exclusive license or a pledge shall be extinguished from that point.
law view
| Article 62 (Pledge) |
|
Where a pledge has been established on trademark rights or an exclusive or non-exclusive license, no pledgee may use the registered trademark concerned.
law view
| Article 63 (Subrogation of Pledge) |
|
The pledge right may be exercised even to any consideration or article to be paid or handed over in exchange for the use of trademark rights under this Act: Provided, That it shall be seized before it is paid or handed over.
law view
| Article 64 (Extinguishment of Trademark Rights) |
|
| (1) |
Where a successor fails to make a transfer registration of trademark rights within three years after the date of decease of the trademark rights holder, trademark rights shall be extinguished on the following day of the expiration of three years after the trademark rights holder died. |
| (2) |
Where a registration fails to be made for the transfer of trademark rights owned by any corporation under liquidation procedure on or before the registration date of the liquidation completion (in cases where the liquidation works are not actually completed even after the liquidation completion is registered, referring to the date on which the liquidation works are actually completed, or the date six months after the registration date of the liquidation completion, whichever is earlier; hereinafter the same shall apply in this paragraph), trademark rights shall be extinguished on the following day of the registration date of the liquidation completion. <Newly Inserted by Act No. 8190, Jan. 3, 2007> |
law view
| Article 64-2 (Extinguishment of Trademark Rights in Absence of Registration of Conversion of Goods Classification) |
|
| (1) |
Where there is any reason falling under any of the following subparagraphs, trademark rights covering designated goods subject to a registration of the conversion of the goods classification shall extinguish on the following day of the expiry of the duration that is included in the application period of the registration of the conversion of the goods classification under Article 46-2 (3): <Amended by Act No. 8190, Jan. 3, 2007; Act No. 11113, Dec. 2, 2011> |
| 1. |
Where a person who is required to obtain a registration of the conversion of the goods classification fails to file an application thereof within the period under Article 46-2 (3); |
| 2. |
Where an application for registration of the conversion of the goods classification has been withdrawn; |
| 3. |
Where the procedures relating to the conversion of the goods classification have been invalidated pursuant to Article 5-15 (1); |
| 4. |
Where a decision to reject a registration of the conversion of the goods classification becomes final and conclusive; |
| 5. |
Where a trial decision to invalidate the registration of the conversion of the goods classification under Article 72-2 becomes final and conclusive. |
| (2) |
Trademark rights covering designated goods subject to a registration of the conversion of the goods classification but not indicated in the application form for registration of the conversion of the goods classification under Article 46-2 (2) shall extinguish on the date when the designated goods that are indicated in the said application form are converted and registered in accordance with Article 46-5: Provided, That where the conversion of the goods classification is registered prior to the date on which the duration of trademark rights expires, trademark rights are extinguished on the following day of the expiry of the duration of trademark rights. <Amended by Act No. 8190, Jan. 3, 2007> |
[This Article Newly Inserted by Act No. 6414, Feb. 3, 2001]
CHAPTER VI PROTECTION OF TRADEMARK RIGHTS HOLDERS
law view
| Article 65 (Right to Seek Injunction, etc. against Infringement) |
|
| (1) |
A trademark rights holder or an exclusive licensee may request a person who infringes or is likely to infringe on his/her trademark rights or exclusive license to discontinue or prevent the infringement. |
| (2) |
When a trademark rights holder or an exclusive licensee makes a request under paragraph (1), he/she may demand the destruction of items to which an act of infringement was attributed, removal of the facilities used for the act of infringement, or other necessary measures. <Amended by Act No. 11113, Dec. 2, 2011> |
| (3) |
Where an action is brought to request the discontinuance or prevention of infringement under paragraph (1), the court may provisionally order the discontinuance of the relevant act of infringement, confiscation of items, etc. used for the relevant act of infringement, or other necessary measures, upon the request of the plaintiff or complainant (limited to cases in which a public action is instituted pursuant to this Act). In such cases, the court may require the plaintiff or complainant to provide security. <Newly Inserted by Act No. 11113, Dec. 2, 2011> |
law view
| Article 66 (Acts Deemed Infringement) |
|
| (1) |
Any act which falls under any of the following subparagraphs shall be deemed to infringe on trademark rights (excluding a geographical collective mark right) or an exclusive license: <Amended by Act No. 5355, Aug. 22, 1997; Act No. 7290, Dec. 31, 2004> |
| 1. |
Using a trademark identical to a registered trademark of another person on the goods similar to the trademark’s designated goods, or using a trademark similar to the registered trademark of another person on the goods identical or similar to the trademark’s designated goods; |
| 2. |
Delivering, selling, forging, imitating or possessing a trademark identical or similar to a registered trademark of another person with intention to use or make another person use it on any goods identical or similar to the trademark’s designated goods; |
| 3. |
Manufacturing, delivering, selling or possessing tools used for making a registered trademark of another person with intention to forge or imitate or to make a third person forge or imitate the registered trademark; |
| 4. |
Keeping, for a purpose of transfer or delivery, goods identical or similar to the designated goods on which another person's registered trademark or any other similar trademark is used. |
| (2) |
Any act which falls under any of the following subparagraphs shall be deemed to infringe on a geographical collective mark right: <Newly Inserted by Act No. 7290, Dec. 31, 2004; Act No. 10811, Jun. 30, 2011> |
| 1. |
Using a trademark (excluding a homonymous geographical indication; hereinafter the same shall apply in this paragraph) similar to a registered geographical collective mark of another person on the goods identical or recognized as identical to the geographical collective mark’s designated goods; |
| 2. |
Delivering, selling, forging, imitating or possessing a trademark identical or similar to the registered geographical collective mark of another person with intention to use or make a third person use it on any goods identical or recognized as identical to the geographical collective mark’s designated goods; |
| 3. |
Manufacturing, delivering, selling or possessing tools used for making the registered geographical collective mark of another person with intention to forge or imitate or to make a third person forge or imitate the registered geographical collective mark; |
| 4. |
Keeping, for a purpose of transfer or delivery, goods identical to the designated goods on which a trademark identical or recognized as identical or similar to another person's registered geographical collective mark is used. |
law view
| Article 67 (Presumption, etc. of Amount of Damage) |
|
| (1) |
Where a trademark rights holder or an exclusive licensee claims compensation from a person who has intentionally or negligently infringed on his/her trademark rights or exclusive license for damages caused by the infringer's transfer of infringing articles, the amount of damages may be calculated as the number of transferred articles multiplied by the estimated profit per unit of the articles that the trademark rights holder or an exclusive licensee might have sold in the absence of the act of infringement. In such cases, the maximum compensation shall be an amount calculated as follows: the estimated profit per unit multiplied by the number of articles that the trademark rights holder or licensee could have produced subtracted by the number of articles actually sold: Provided, That where the trademark rights holder or an exclusive licensee fails to sell his/her product for reasons other than the act of infringement, a sum calculated according to the number of articles unsold due to reasons other than such act of infringement shall be deducted. <Newly Inserted by Act No. 6414, Feb. 3, 2001> |
| (2) |
Where a trademark rights holder or an exclusive licensee claims compensation from a person who has intentionally or negligently infringed on his/her trademark rights or exclusive license for damages caused to him/her by such infringement, the profits gained by the infringer by his/her act of infringement shall be presumed to be the amount of damage suffered by the trademark rights holder or an exclusive licensee. |
| (3) |
Where a trademark rights holder or an exclusive licensee claims compensation from a person who has intentionally or negligently infringed on his/her trademark rights or exclusive license for damages caused to him/her by the infringement, the amount of money which he/she would normally receive for the use of the registered trademark may be claimed as the amount of damages suffered by him/her. |
| (4) |
Where the amount of damages exceeds the amount under paragraph (3), the amount in excess may also be claimed as compensation for damage, notwithstanding paragraph (3). In such cases, the court may take into consideration, in determining the amount of damages, whether there has been either intention or gross negligence on the part of the person who has infringed on trademark rights or the exclusive license. <Amended by Act No. 6414, Feb. 3, 2001> |
| (5) |
In litigation over an act of infringement of trademark rights or an exclusive license, where the court recognizes that the nature of the facts of the case make it difficult to provide evidence proving the amount of damages that has occurred, the court may determine a reasonable amount on a review of all the arguments and on the basis of an examination of the evidence, notwithstanding paragraphs (1) through (4). <Newly Inserted by Act No. 6414, Feb. 3, 2001> |
law view
| Article 67-2 (Claim for Statutory Damages) |
|
| (1) |
A trademark rights holder or an exclusive licensee may claim compensation for a reasonable amount of damages up to 50 million won from a person who has intentionally or negligently infringed on trademark rights or the exclusive license by using a trademark identical or similar to a registered trademark of the trademark rights holder or the exclusive licensee for goods identical or similar to the relevant designated goods, instead of claiming compensation under Article 67 from such person. In such cases, the court may recognize a reasonable amount of damages in consideration of all the arguments and the result of examination of the evidence. |
| (2) |
A trademark rights holder or an exclusive licensee who has claimed compensation pursuant to Article 67 against any act of infringement specified in the former part of paragraph (1) may alter such claim to the claim specified in paragraph (1) by the time the court closes the relevant argument. |
[This Article Newly Inserted by Act No. 11113, Dec. 2, 2011]
law view
| Article 68 (Presumption of Intention) |
|
A person who has infringed on trademark rights or an exclusive license of another person who indicated that it is a registered trademark pursuant to Article 90 shall be presumed to have known that the trademark was already registered, with respect to his/her act of infringement.
law view
| Article 69 (Recovery of Reputation of Trademark Rights Holders, etc.) |
|
With respect to a person who damages a business reputation of a trademark rights holder or an exclusive licensee by infringing intentionally or negligently on trademark rights or an exclusive license, the court may, upon request of the trademark rights holder or the exclusive licensee, order any measures necessary for recovering the business reputation of the trademark rights holder or the exclusive licensee in lieu of, or along with, compensation for damages.
law view
| Article 70 (Submission of Documents) |
|
In litigation over an infringement on trademark rights or an exclusive license, the court may, upon request of the party concerned, order the other party to submit documents necessary for calculating the damage caused by the act of infringement: Provided, That the foregoing shall not apply where a person who possesses the documents has a justifiable ground for refusing to submit the documents.
law view
| Article 70-2 (Trial on Decision of Rejection) |
|
Any person dissatisfied with a decision to reject trademark registration, a decision to reject the registration of additional designated goods, or a decision to reject the registration for the conversion of the goods classification (hereinafter referred to as "decision of rejection") may request a trial within 30 days from the date on which a certified copy of the decision of rejection is received.
[This Article Wholly Amended by Act No. 9987, Jan. 27, 2010]
law view
| Article 70-3 (Trial on Decision to Dismiss Amendment) |
|
Any person dissatisfied with a ruling decision to dismiss an amendment under Article 17 (1) may request a trial within 30 days from the date on which a certified copy of the decision is received.
[This Article Newly Inserted by Act No. 4895, Jan. 5, 1995]
law view
| Article 71 (Trial for Invalidation of Trademark Registration) |
|
| (1) |
Where trademark registration or the registration of additional designated goods falls under any of the following subparagraphs, an interested party or examiner may request a trial for invalidation. In such cases, if there exist two or more designated goods for the registered trademark, a request for a trial may be made for each of the designated goods: <Amended by Act No. 5355, Aug. 22, 1997; Act No. 6414, Feb. 3, 2001; Act No. 7290, Dec. 31, 2004; Act No. 8190, Jan. 3, 2007; Act No. 11113, Dec. 2, 2011> |
| 1. |
Where trademark registration or the registration of additional designated goods is in violation of Article 3, 5-24, 6 through 8, the latter part of Article 12 (2), Article 12 (5), or (7) through (10), or 23 (1) 4 through 8; |
| 2. |
Where trademark registration or the registration of additional designated goods is in violation of the treaty; |
| 3. |
Where trademark registration or the registration of additional designated goods is made by a person other than those who succeed to the right created by the application for trademark registration; |
| 3-2. |
Where the registration of additional designated goods is in violation of Article 48 (1) 4; |
| 4. |
Where a trademark rights holder becomes a person who is unable to enjoy trademark rights under Article 5-24 or such registered trademark is in violation of the treaty, after the registration of the trademark; |
| 5. |
Where a registered trademark falls under any subparagraph of Article 6 (1) after the registration of the trademark (excluding cases falling under Article 6 (2)); |
| 6. |
Where a geographical indication which constitutes a registered geographical collective mark is no more protected or used in the country of origin, after the registration of the geographical collective mark under Article 41. |
| (2) |
A trial for invalidation under paragraph (1) may be requested even after trademark rights are extinguished. |
| (3) |
When a trial decision that trademark registration be invalidated becomes final and conclusive, trademark rights shall be deemed not to have existed from the beginning: Provided, That when the trial decision that trademark registration be invalidated under paragraph (1) 4 through 6 becomes final and conclusive, trademark rights shall be deemed not to have existed from the time when the registered trademark falls under the same subparagraph. <Amended by Act No. 6414, Feb. 3, 2001; Act No. 7290, Dec. 31, 2004> |
| (4) |
In applying the proviso to paragraph (3), if it is unable to specify the time when a registered trademark falls under paragraph (1) 4 through 6, trademark rights shall be deemed not to have existed from the time when a trial for invalidation under paragraph (1) is requested and the contents of the request is announced on the original register. <Newly Inserted by Act No. 6414, Feb. 3, 2001; Act No. 7290, Dec. 31, 2004> |
| (5) |
When a trial under paragraph (1) is requested, the presiding administrative trademark judge shall notify its purport to the exclusive licensee of trademark rights as well as other persons with registered rights related to the trademark. |
law view
| Article 72 (Trial for Invalidation of Registration for Renewal of Duration of Trademark Rights) |
|
| (1) |
An interested party or an examiner may request a trial for invalidation, if a registration for renewal of the duration of trademark rights falls under any of the following subparagraphs. In such cases, where there exist two or more designated goods for a registered trademark of which the registration is renewed, a trial for invalidation may be requested for each designated good: <Amended by Act No. 9987, Jan. 27, 2010> |
| 1. |
Deleted; <by Act No. 5355, Aug. 22, 1997> |
| 2. |
Where a registration for renewal of the duration of trademark rights is in violation of Article 43 (2); |
| 3. |
Where an application for the registration for renewal of the duration of trademark rights has been filed by a person other than the relevant trademark rights holder. |
| (2) |
A trial for invalidation under paragraph (1) may be requested even after trademark rights are extinguished. |
| (3) |
Where a trial decision that a registration for renewal of the duration of trademark rights be invalidated becomes final and conclusive, such registration shall be deemed not to have existed from the beginning. |
| (4) |
Article 71 (5) shall apply mutatis mutandis to requests for trial referred to in paragraph (1). <Amended by Act No. 6765, Dec. 11, 2002> |
law view
| Article 72-2 (Trial for Invalidation of Registration for Conversion of Goods Classification) |
|
| (1) |
An interested party or an examiner may request a trial for invalidation, if a registration of the conversion of the goods classification falls under any of the following subparagraphs. In such cases, if there exist two or more designated goods relating to the registration for the conversion of the goods classification, a trial for invalidation may be requested for each of the designated goods: |
| 1. |
Where the registration of the conversion of the goods classification has been granted for designated goods not covered by the present registered trademark or where the scope of the designated goods has been expanded in effect; |
| 2. |
Where an application for the registration for the conversion of the goods classification has been filed by a person other than the relevant trademark rights holder; |
| 3. |
Where the registration for the conversion of the goods classification is in violation of Article 46-2 (3). |
| (2) |
Article 71 (2) and (5) shall apply mutatis mutandis to trials for invalidation of a registration of the conversion of the goods classification. |
| (3) |
Where a trial decision invalidating a registration of the conversion of the goods classification has become final and conclusive, the registration of the conversion of the goods classification shall be deemed to have not existed from the beginning. |
[This Article Newly Inserted by Act No. 6414, Feb. 3, 2001]
law view
| Article 73 (Trial for Revocation of Trademark Registration) |
|
| (1) |
Where a registered trademark falls under any of the following subparagraphs, a trial for revocation of trademark registration may be requested: <Amended by Act No. 5355, Aug. 22, 1997; Act No. 7290, Dec. 31, 2004; Act No. 11113, Dec. 2, 2011> |
| 1. |
Deleted; <by Act No. 5355, Aug. 22, 1997> |
| 2. |
Where a trademark rights holder leads to any misconception among consumers about the quality of goods or any confusion between his/her goods with other goods relating to another person’s business by intentionally using a trademark similar to the registered trademark on the designated goods, or using the registered trademark or a similar trademark on goods similar to the designated goods; |
| 3. |
Where a trademark rights holder or an exclusive or non-exclusive licensee fails to use the registered trademark on the designated goods in the Republic of Korea without justifiable grounds, for three or more years consecutively before a trial for revocation is requested; |
| 4. |
Where it is in violation of the latter part of Article 54 (1), (5), or (7) through (10); |
| 5. |
Where, for a collective mark, a member of the organization concerned allows another person to use the collective mark in contrary to the articles of association of the organization, or a member of the organization concerned misleads consumers as to the quality or geographical origin of the goods or makes them confused with goods relating to another person’s business by using the collective mark in violation of the articles of association of the organization: Provided, That the foregoing shall not apply where an owner of the collective mark right has paid a considerable attention to the supervision of the member; |
| 6. |
Where it is feared that consumers might be misled about the quality of goods or confused with goods relating to another person’s business by modifying the articles of association under Article 9 (4) after the establishment of the collective mark is registered; |
| 7. |
Where a trademark falling under the main sentence of Article 23 (1) 3 is registered, and an owner of the right to the trademark requests a trial for revocation within five years from the date of trademark registration; |
| 8. |
Where an exclusive or non-exclusive licensee misleads consumers as to the quality of goods or makes them confused with goods relating to another person’s business by using the registered trademark or a similar trademark on the designated goods or similar goods: Provided, That the foregoing shall not apply where a trademark rights holder has paid a considerable attention; |
| 9. |
Where similar trademarks belong to different owners of trademark rights because of transfer of trademark rights, and one of them misleads consumers as to the quality of goods or makes them confused with goods relating to another person’s business by using his/her own registered trademark on goods identical or similar to goods designated by his/her own registered trademark to perform practices of unfair competition; |
| 10. |
Where, for a collective mark, a third person misleads consumers as to the quality or geographical origin of goods, or makes them confused with goods relating to another person’s business by using the collective mark, and despite such fact, an owner of the collective mark right does not take any proper measure therefor intentionally; |
| 11. |
Where, after the registration of a geographical collective mark, an owner of the geographical collective mark right prohibits any person who carries on the business of producing, manufacturing, or processing designated goods entitled for the geographical indication from joining the organization through the articles of association of the organization concerned, or includes very strict conditions of entry into the organization in the articles of association concerned, which do not substantially allow any other person to join the organization, or allows any person disqualified for using the geographical indication to enter the organization; |
| 12. |
Where, for a geographical collective mark, an owner of the geographical collective mark right or a member of the organization concerned misleads consumers as to the quality of the goods or makes them confused with the geographical origin of the goods by using the collective mark in violation of Article 90-2; |
| 13. |
Where, for a certification mark, a case falls under any of the following: |
| (a) |
Where an owner of the certification mark right permits the use of the certification mark in violation of the articles of incorporation or agreement submitted pursuant to Article 9 (5); |
| (b) |
Where an owner of the certification mark right uses the certification mark for his/her goods or services, in violation of the proviso to Article 3-3 (1); |
| (c) |
Where a person permitted to use the certification mark right allows another person to use it in violation of the articles of incorporation or agreement, or where a person permitted to use it in violation of the articles of incorporation or agreement, which misleads consumers as to the origin, mode of production or other characteristics of goods or services: Provided, That the foregoing shall not apply where an owner of the certification mark right has paid due attention to supervise any person permitted to use the certification mark; |
| (d) |
Where a third person who is not permitted to use the certification mark by the owner of the certification mark right uses such certification mark, resulting in misconception among consumers as to the origin, mode of production or other characteristics of goods or services, and the owner of the certification mark right fails to take necessary measures intentionally; |
| (e) |
Where an owner of the certification mark right does not allow a person who carries on the business of producing, manufacturing, processing or selling goods that may use such certification mark or who carries on a service business, to use such certification mark by stating so in the articles of association or agreement without justifiable grounds, or does not in effect allow the use by prescribing conditions for use that are impossible to be met in the articles of association or agreement. |
| (2) |
Deleted. <by Act No. 5355, Aug. 22, 1997> |
| (3) |
Where a trial for revocation is requested by a ground that falls under paragraph (1) 3, and there exist two or more designated goods for the registered trademark, a trial for revocation may be requested on some of the designated goods. |
| (4) |
Where a trial for revocation is requested by a ground that falls under paragraph (1) 3, no trademark rights holder may be exempted from the revocation of trademark registration for the designated goods relevant to the request for a trial for revocation, unless the respondent proves that he/she has used duly in the Republic of Korea the registered trademark on one or more designated goods relevant to the request for a trial during three years before the date of trial request: Provided, That the foregoing shall not apply where the respondent has proved a justifiable ground for not using it. <Amended by Act No. 5355, Aug. 22, 1997> |
| (5) |
After a trial for revocation is requested by grounds that fall under paragraph (1) 2, 3, 5, 6, and 8 through 13, the grounds for revocation shall remain effective even in cases where the fact corresponding to the grounds for the trial request cease to exist. <Amended by Act No. 5355, Aug. 22, 1997; Act No. 7290, Dec. 31, 2004; Act No. 11113, Dec. 2, 2011> |
| (6) |
A trial for revocation under paragraph (1) may be requested by an interested party only: Provided, That a trial on any ground falling under paragraph (1) 2, 5, 6, or 8 through 13 may be requested by any person. <Amended by Act No. 9987, Jan. 27, 2010; Act No. 11113, Dec. 2, 2011> |
| (7) |
When a trial decision that trademark registration be revoked becomes final and conclusive, trademark rights shall be extinguished from that time onward. |
| (8) |
Article 71 (5) shall apply mutatis mutandis to a request for a trial referred to in paragraph (1). <Amended by Act No. 5355, Aug. 22, 1997; Act No. 6765, Dec. 11, 2002> |
law view
| Article 74 (Trial for Revocation of Registration of Exclusive or Non-Exclusive License) |
|
| (1) |
Where an exclusive or non-exclusive licensee commits an act falling under Article 73 (1) 8, a trial for revocation of the registration of an exclusive or non-exclusive license may be requested. |
| (2) |
After a trial for revocation of the registration of an exclusive or non-exclusive license is requested under paragraph (1), the ground for revocation shall remain effective even in cases where the fact corresponding to the ground for the trial request ceases to exist. |
| (3) |
Any person may request a trial for revocation of exclusive or non-exclusive license under paragraph (1). |
| (4) |
When a trial decision that the registration of exclusive or non-exclusive license be revoked becomes final and conclusive, the exclusive or non-exclusive license shall be extinguished from that time onward. |
| (5) |
The presiding administrative trademark judge shall, upon a request under paragraph (1), notify the effect of such request to a non-exclusive licensee on the relevant exclusive license and other persons with registered rights relating to the relevant exclusive license, or to persons with registered rights relating to the relevant non-exclusive license. |
law view
| Article 75 (Trial for Confirmation of Scope of Right) |
|
A trademark rights holder, exclusive licensee, or an interested party may request a trial for confirmation of the scope of trademark rights for the purpose of confirming the scope of a right to the registered trademark. <Amended by Act No. 8190, Jan. 3, 2007>
law view
| Article 76 (Period of Exclusion) |
|
| (1) |
No trial for invalidation of trademark registration, a registration for renewal of the duration of trademark rights, and a registration of the conversion of the goods classification under Article 7 (1) 6 through 9-2 and 14, Articles 8, 72 (1) 2, and 72-2 (1) 3 shall be requested five years after the registration date of the trademark, the registration date of renewal of the duration of trademark rights, or the registration date of the conversion of the goods classification. <Amended by Act No. 4597, Dec. 10, 1993; Act No. 5355, Aug. 22, 1997; Act No. 6414, Feb. 3, 2001; Act No. 7290, Dec. 31, 2004> |
| (2) |
No trial for revocation of trademark registration or a registration of an exclusive or non-exclusive license under Articles 73 (1) 2, 5, 6, and 8 through 13 and 74 (1) shall be requested three years after the date on which the alleged facts cease to exist. <Amended by Act No. 5355, Aug. 22, 1997; Act No. 7290, Dec. 31, 2004; Act No. 11113, Dec. 2, 2011> |
law view
| Article 77 (Request, etc. for Joint Trial) |
|
| (1) |
If two or more persons request a trial for invalidation under Article 71 (1), 72 (1), or 72-2 (1), trial for revocation under Article 73 (1), trial for revocation of the registration of an exclusive license or a non-exclusive license under Article 74 (1), or trial for confirmation of the scope of a right under Article 75, they may severally or jointly request for a trial. |
| (2) |
When a trial is requested against the joint owners of trademark rights, all of the joint owners shall be made respondents. |
| (3) |
When the joint owners of trademark rights or a right to obtain trademark registration request a trial for such right under joint ownership, the request for a trial shall be jointly made by all of the joint owners, notwithstanding paragraph (1). |
| (4) |
When any event occurs that leads to the suspension of trial procedures that applies to one of the requesters under paragraph (1) or (3) or one of the respondents under paragraph (2), the suspension shall be effective against all of the requesters or defendants. |
[This Article Wholly Amended by Act No. 11113, Dec. 2, 2011]
law view
| Article 77-2 (Method of Trial Request) |
|
| (1) |
A person intending to request a trial shall submit to the President of the Korean Intellectual Property Tribunal a written request for a trial, stating the following matters: <Amended by Act No. 11962, Jul. 30, 2013> |
| 1. |
The name and address of the parties (in cases of a corporation, referring to its title and location of its place of business); |
| 2. |
The name, address, or place of business, if any, of an agent (if the agent is a patent corporation/patent corporation (with limited liability), its title and place of office and the name of its designated patent attorney); |
| 3. |
The indication of the trial case; |
| 4. |
The purpose of the request and the grounds therefor. |
| (2) |
No amendment to a written request for a trial submitted pursuant to paragraph (1) shall alter its purport: Provided, That the foregoing shall not apply in any of the following cases: |
| 1. |
Where an amendment (including an addition) is made by one of the parties referred to in paragraph (1) 1 in order to correct a statement entered by a trademark rights holder; |
| 2. |
Where a ground for request under paragraph (1) 4 is amended; |
| 3. |
Where, at a trial for confirmation of the scope of a right requested by a trademark rights holder or an exclusive licensee, the trademark or the relevant goods subject to confirmation on the written request for a trial is amended by the requester in order to make it identical to the trademark or goods of the respondent, in cases where the respondent claims that the trademark or goods subject to confirmation on the written request (referring to the respondent's trademark and the relevant goods claimed by the requester) differ from the trademark or goods actually used by him/her. |
| (3) |
When a trial for confirmation of the scope of a right is requested under Article 75, the sample of the relevant trademark that can be compared to the registered trademark shall be attached to a written request as well as the list of goods the trademark is being used. |
[This Article Newly Inserted by Act No. 11113, Dec. 2, 2011]
law view
| Article 77-3 (Dismissal of Request for Trial) |
|
| (1) |
The presiding administrative trademark judge shall order an amendment in any of the following cases, setting a period: |
| 1. |
Where a written request for a trial violates Article 77-2 (1) or (3) or 79 (1); |
| 2. |
Where the procedure for a trial falls under any of the following cases: |
| (b) |
Where fees payable pursuant to Article 37 are not paid; |
| (c) |
Where the procedure does not conform to the formalities prescribed by this Act or an order under this Act. |
| (2) |
If a person ordered to make an amendment under paragraph (1) fails to do so within a specified period, the presiding administrative trademark judge shall dismiss the written request for a trial by decision. |
| (3) |
The decision under paragraph (2) shall be made in written form and state the grounds therefor. |
[This Article Newly Inserted by Act No. 11113, Dec. 2, 2011]
law view
| Article 77-4 (Dismissal of Request for Trial with Unamendable Defects by Trial Decision) |
|
When a request for a trial contains unlawful defects that cannot be amended, such request may be dismissed by a trial decision without providing the respondent with an opportunity to submit a written response.
[This Article Newly Inserted by Act No. 11113, Dec. 2, 2011]
law view
| Article 77-5 (Administrative Trademark Judges) |
|
| (1) |
When a trial is requested, the President of the Korean Intellectual Property Tribunal shall require an administrative trademark judge to hear the case. |
| (2) |
The qualifications for administrative trademark judges shall be prescribed by Presidential Decree. |
| (3) |
Administrative trademark judges shall conduct their official trial duties in an independent manner. |
[This Article Newly Inserted by Act No. 11113, Dec. 2, 2011]
law view
| Article 77-6 (Designation of Administrative Trademark Judges) |
|
| (1) |
For each trial, the President of the Korean Intellectual Property Tribunal shall designate administrative trademark judges constituting a board for trials under Article 77-8. |
| (2) |
If any administrative trademark judge designated under paragraph (1) is unable to intervene in the trial, the President of the Korean Intellectual Property Tribunal may allow another administrative trademark judge to do so. |
[This Article Newly Inserted by Act No. 11113, Dec. 2, 2011]
law view
| Article 77-7 (Presiding Administrative Trademark Judge) |
|
| (1) |
The President of the Korean Intellectual Property Tribunal shall designate one presiding administrative trademark judge from among the administrative trademark judges designated pursuant to Article 77-6 (1). |
| (2) |
The presiding administrative trademark judge shall preside over all affairs relating to the trial. |
[This Article Newly Inserted by Act No. 11113, Dec. 2, 2011]
law view
| Article 77-8 (Board for Trial) |
|
| (1) |
A trial shall be conducted by a board of three or five administrative trademark judges. |
| (2) |
The board under paragraph (1) shall reach an agreement by a majority vote. |
| (3) |
The agreement of a trial shall not be open to the public. |
[This Article Newly Inserted by Act No. 11113, Dec. 2, 2011]
law view
| Article 77-9 (Submission, etc. of Written Responses) |
|
| (1) |
When a trial is requested, the presiding administrative trademark judge shall serve a copy of a written request on the respondent and provide him/her with an opportunity to submit a written response within a prescribed period. |
| (2) |
In receipt of a written response under paragraph (1), the presiding administrative trademark judge shall serve its copy on the requester. |
| (3) |
The presiding administrative trademark judge may examine the parties in relation to the trial. |
[This Article Newly Inserted by Act No. 11113, Dec. 2, 2011]
law view
| Article 77-10 (Exclusion of Administrative Trademark Judges) |
|
An administrative trademark judge who falls under any of the following subparagraphs shall be excluded from participating in a trial:
| 1. |
Where the administrative trademark judge or his/her spouse or ex-spouse is a party of the case, intervenor or person raising an objection to trademark registration; |
| 2. |
Where the administrative trademark judge is or was a relative of a party of the case, intervenor or person raising an objection to trademark registration; |
| 3. |
Where the administrative trademark judge is or was a legal representative of a principal of the case, intervenor or person raising an objection to trademark registration; |
| 4. |
Where the administrative trademark judge is a witness or appraiser for the relevant case or was an appraiser for the relevant case; |
| 5. |
Where the administrative trademark judge is a representative of a party of the case, intervenor or person raising an objection to trademark registration or was in similar relationship; |
| 6. |
Where the administrative trademark judge has participated as an examiner or administrative trademark judge in a decision on whether to grant or reject trademark registration, or in a decision or a trial decision on a request for objection to trademark registration; |
| 7. |
Where the administrative trademark judge has a direct interest in the case. |
[This Article Newly Inserted by Act No. 11113, Dec. 2, 2011]
law view
| Article 77-11 (Request for Exclusion) |
|
If there exists a ground for exclusion under in Article 77-10, a party involved or an intervenor may request exclusion of the relevant administrative trademark judge.
[This Article Newly Inserted by Act No. 11113, Dec. 2, 2011]
law view
| Article 77-12 (Challenge of Administrative Trademark Judges) |
|
| (1) |
If it is difficult to expect fairness in trial from an administrative trademark judge, a party involved or an intervenor may make a request for the challenge to the administrative trademark judge. |
| (2) |
No party involved or an intervenor shall make a request for the challenge to an administrative trademark judge after he/she makes a written or oral statement regarding the case to the administrative trademark judge: Provided, That the foregoing shall not apply where he/she was not aware that there exists a ground for the challenge or where the ground for the challenge arises thereafter. |
[This Article Newly Inserted by Act No. 11113, Dec. 2, 2011]
law view
| Article 77-13 (Vindication of Grounds for Exclusion or Challenge) |
|
| (1) |
A person intending to make a request for exclusion or challenge pursuant to Article 77-11 or 77-12 shall submit a document stating the ground therefor to the President of the Korean Intellectual Property Tribunal: Provided, That an oral request is allowed in oral proceedings. |
| (2) |
The ground for exclusion or challenge shall be vindicated within three days from the date such request is made. |
[This Article Newly Inserted by Act No. 11113, Dec. 2, 2011]
law view
| Article 77-14 (Decision on Request for Exclusion or Challenge) |
|
| (1) |
A decision on a request for exclusion or challenge shall be made by a trial. |
| (2) |
No administrative trademark judge subject to exclusion or challenge shall participate in the trial for such exclusion or challenge: Provided, That he/she may state his/her opinion. |
| (3) |
A decision under paragraph (1) shall be made in a written document stating the grounds therefor. |
| (4) |
No appeal shall be made against a decision under paragraph (1). |
[This Article Newly Inserted by Act No. 11113, Dec. 2, 2011]
law view
| Article 77-15 (Suspension of Trial Procedures) |
|
If a request for exclusion or challenge is made, the relevant trial procedure shall be suspended until a decision is made on such request: Provided, That the foregoing shall not apply where urgency is required.
[This Article Newly Inserted by Act No. 11113, Dec. 2, 2011]
law view
| Article 77-16 (Avoidance of Administrative Trademark Judges) |
|
Where an administrative trademark judge falls under Article 77-10 or 77-12, he/she may avoid a trial for the relevant case after obtaining permission from the President of the Korean Intellectual Property Tribunal.
[This Article Newly Inserted by Act No. 11113, Dec. 2, 2011]
law view
| Article 77-17 (Trial Proceedings, etc.) |
|
| (1) |
A trial is conducted in oral proceedings or documentary proceedings: Provided, That where one of the parties requests oral proceedings, oral proceedings shall be conducted, except where it is recognized that a decision may be made only by documentary proceedings. |
| (2) |
Oral proceedings shall be open to the public: Provided, That the foregoing shall not apply where public order or morality is likely to be injured thereby. |
| (3) |
In conducting a trial in oral proceedings pursuant to paragraph (1), the presiding administrative trademark judge shall determine the date and venue and serve the document stating the purport thereof on the parties and intervenors: Provided, That the foregoing shall not apply where the parties and intervenors are notified by attending the relevant case. |
| (4) |
In conducting a trial in oral proceedings pursuant to paragraph (1), the presiding administrative trademark judge shall require an employee designated by the President of the Korean Intellectual Property Tribunal to prepare a report that includes the gist of the proceeding and other necessary matters for each date of trial. |
| (5) |
The presiding administrative trademark judge and the employee who prepared a report under paragraph (4) shall sign and affix their seals thereto. |
[This Article Newly Inserted by Act No. 11113, Dec. 2, 2011]
law view
| Article 77-18 (Intervention) |
|
| (1) |
A person eligible to request a trial pursuant to Article 77 (1) may intervene in the trial until the trial proceedings are concluded. |
| (2) |
An intervenor under paragraph (1) may continue the trial procedure even after the party for whose honor he/she intervened withdraws the request for trial. |
| (3) |
A person who has an interest concerning a trial decision may intervene in the trial until the trial proceedings are concluded in order to assist one side of the parties. |
| (4) |
An intervenor under paragraph (3) may conduct all trial procedures. |
| (5) |
If a ground for suspension of a trial procedure exists in relation to an intervenor under paragraph (1) or (3), such suspension shall also be effective against the party for whose honor he/she intervened. |
[This Article Newly Inserted by Act No. 11113, Dec. 2, 2011]
law view
| Article 77-19 (Request for Intervention and Decision thereon) |
|
| (1) |
A person intending to intervene in a trial shall submit a written application to the presiding administrative trademark judge. |
| (2) |
Where a request for intervention is made, the presiding administrative trademark judge shall serve a copy of the written application on the parties and other intervenors and provide them with an opportunity to submit a written opinion within a prescribed period. |
| (3) |
Where a request for intervention is made, the decision thereon shall be decided by a trial. |
| (4) |
A decision under paragraph (3) shall be made in written documents stating the grounds therefor. |
| (5) |
No appeal shall be made against a decision under paragraph (3). |
[This Article Newly Inserted by Act No. 11113, Dec. 2, 2011]
law view
| Article 77-20 (Investigation and Preservation of Evidence) |
|
| (1) |
The evidence may be investigated or preserved in a trial upon request of the party, intervenor or interested party, or ex officio. |
| (2) |
The provisions of the Civil Procedure Act relating to the investigation and preservation of evidence shall apply mutatis mutandis to the investigation and preservation of evidence under paragraph (1): Provided, That no administrative trademark judge shall decide to impose an administrative fine, order compulsory appearance, or require the deposit of money as security. |
| (3) |
A request for preservation of evidence shall be made to the President of the Korean Intellectual Property Tribunal before a request for a trial is made, or to the presiding administrative trademark judge of the case while the trial is pending. |
| (4) |
If a request for preservation of evidence under paragraph (1) is made before a request for a trial is made, the President of the Korean Intellectual Property Tribunal shall designate an administrative trademark judge to allow him/her to participate in the request for preservation of evidence. |
| (5) |
When evidence is investigated or preserved ex officio pursuant to paragraph (1), the presiding administrative trademark judge shall serve the result on the parties, intervenors or interested parties and provide them with an opportunity to submit a written opinion within a prescribed period. |
[This Article Newly Inserted by Act No. 11113, Dec. 2, 2011]
law view
| Article 77-21 (Continuation of Trials) |
|
The presiding administrative trademark judge may continue a trial even if the party or an intervenor fails to undergo the procedures within a statutory or designated period, or to appear on the date prescribed in Article 77-17 (3).
[This Article Newly Inserted by Act No. 11113, Dec. 2, 2011]
law view
| Article 77-22 (Ex Officio Trial Proceedings) |
|
| (1) |
Trial proceedings may be held in a trial with regard to grounds that have not been pleaded by any of the parties or intervenors. In such cases, the party or intervenor shall be provided with an opportunity to state his/her opinion about such grounds within a prescribed period. |
| (2) |
The purport of a request that is not filed by the requester shall not be examined in a trial. |
[This Article Newly Inserted by Act No. 11113, Dec. 2, 2011]
law view
| Article 77-23 (Joint or Separate Conduct of Trial Proceedings or Trial Decisions) |
|
An administrative trademark judge may conduct trial proceedings or make trial decisions, jointly or separately, with regard to two or more trial proceedings where one or both parties thereto are the same.
[This Article Newly Inserted by Act No. 11113, Dec. 2, 2011]
law view
| Article 77-24 (Withdrawal of Request for Trials) |
|
| (1) |
A request for a trial may be withdrawn before the trial decision becomes final and conclusive: Provided, That the consent of the other party shall be obtained where a written response has been submitted. |
| (2) |
When a request for a trial for invalidation under Article 71 (1), 72 (1) or 72-2 (1) is made against two or more designated goods, the request may be separately withdrawn for each of them. |
| (3) |
If a request for a trial is withdrawn pursuant to paragraph (1) or (2), such request for a trial or a request for a trial on the relevant designated goods shall be deemed never made. |
[This Article Newly Inserted by Act No. 11113, Dec. 2, 2011]
law view
| Article 77-25 (Trial Decisions) |
|
| (1) |
Except as otherwise provided, a trial shall be concluded by a trial decision. |
| (2) |
A trial decision under paragraph (1) shall be made in written documents stating the following matters, and the administrative trademark judges who have rendered the decision shall sign and affix their seals thereto: <Amended by Act No. 11962, Jul. 30, 2013> |
| 1. |
The number of the trial; |
| 2. |
The names and addresses of the parties and intervenors (in cases of a corporation, its title and place of business); |
| 3. |
The name, address, or place of business, if any, of an agent (if the agent is a patent corporation/patent corporation (with limited liability), its title and place of office and the name of its designated patent attorney); |
| 4. |
The indication of the trial case; |
| 5. |
The text of the trial decision; |
| 6. |
The grounds for the trial decision (including the purpose of the request and the gist of the grounds therefor); |
| 7. |
The date of the trial decision. |
| (3) |
When a case has been thoroughly examined and is ready for a trial decision, the presiding administrative trademark judge shall notify the parties and intervenors of the conclusion of the trial proceedings. |
| (4) |
If deemed necessary, the presiding administrative trademark judge may reopen trial proceedings upon request of one of the parties or intervenors, or ex officio, even after he/she has notified the conclusion of the trial proceedings pursuant to paragraph (3). |
| (5) |
A trial decision shall be made within 20 days from the date on which the conclusion of the trial proceedings is notified pursuant to paragraph (3). |
| (6) |
When a trial decision or a decision is made, the presiding administrative trademark judge shall serve the certified copy thereof on the parties, intervenors and persons who have requested intervention in the trial but such request for intervention has been rejected. |
[This Article Newly Inserted by Act No. 11113, Dec. 2, 2011]
law view
| Article 77-26 (Prohibition against Double Jeopardy) |
|
When a trial decision under this Act has become final and conclusive, no person shall request a trial for the case on the basis of the same facts and evidence: Provided, That the foregoing shall not apply where a trial decision that has become final and conclusive is a decision of dismissal.
[This Article Newly Inserted by Act No. 11113, Dec. 2, 2011]
law view
| Article 77-27 (Relations to Litigation) |
|
| (1) |
If necessary for a trial, the presiding administrative trademark judge may suspend the trial procedure until a trial decision for another trial related to the trial case becomes final and conclusive or until the litigation procedures are completed. |
| (2) |
If necessary for litigation procedures, the court may suspend the litigation procedures of the case until a trial decision on the trademark becomes final and conclusive. |
| (3) |
Where an action is brought as to the infringement on trademark rights or an exclusive license, the court shall notify the President of the Korean Intellectual Property Tribunal of the purport thereof. The foregoing shall also apply where the litigation procedures are terminated. |
| (4) |
Where a request for a trial for invalidation, etc. on trademark rights is made in response to an action brought as to the infringement on trademark rights or an exclusive license under paragraph (3), the President of the Korean Intellectual Property Tribunal shall notify the court under paragraph (3) of the purport thereof. The foregoing shall also apply to cases where a written request for the trial is dismissed, where a trial decision is made, or where a request is withdrawn. |
[This Article Newly Inserted by Act No. 11113, Dec. 2, 2011]
law view
| Article 77-28 (Costs of Trial) |
|
| (1) |
The bearing of trial costs under Articles 71 (1), 72 (1), 72-2 (1), 73 (1), 74 (1) and 75 shall be decided by a trial decision if the trial is concluded by a trial decision, or by a decision if the trial is concluded in a manner other than by a trial decision. |
| (3) |
The trial costs referred to in Articles 70-2 and 70-3 shall be borne by the requester. |
| (5) |
The amount of trial costs shall be determined by the President of the Korean Intellectual Property Tribunal after a trial decision or a decision becomes final and conclusive, upon request of the party concerned. |
| (6) |
The extent, amount and payment of trial costs and the payment of costs incurred in conducting procedural acts in a trial shall be governed by the corresponding provisions of the Costs of Civil Procedure Act, unless they are incompatible. |
| (7) |
The fees paid or to be paid by the party concerned to the patent attorney who has represented the party concerned in a trial shall be deemed to be trial costs within the extent of the costs prescribed by the Commissioner of the Korean Intellectual Property Office. In such cases, one patent attorney shall be deemed to have represented the party concerned even where two or more patent attorneys represented in the trial. |
[This Article Newly Inserted by Act No. 11113, Dec. 2, 2011]
law view
| Article 77-29 (Title of Enforcement on Trial Costs) |
|
A decision that has become final and conclusive in relation to the trial costs determined by the President of the Korean Intellectual Property Tribunal pursuant to this Act shall have the same force and effect as an enforceable title of enforcement. In such cases, the enforceable original copy shall be provided by a public official under the jurisdiction of the Korean Intellectual Property Tribunal.
[This Article Newly Inserted by Act No. 11113, Dec. 2, 2011]
law view
| Article 78 Deleted. <by Act No. 4895, Jan. 5, 1995> |
|
law view
| Article 79 (Formal Requirements of Request for Trial on Decision of Rejection or Decision to Dismiss Amendment) |
|
| (1) |
Any person who requests a trial on the decision of rejection under Article 70-2 or a trial on the decision to dismiss an amendment under Article 70-3 shall submit to the President of the Korean Intellectual Property Tribunal a written request for trial specifying the following matters: <Amended by Act No. 4895, Jan. 5, 1995; Act No. 6414, Feb. 3, 2001; Act No. 11962, Jul. 30, 2013> |
| 1. |
The name and address of the requester (in cases of a corporation, its title and place of business); |
| 1-2. |
The name, address, or place of business, if any, of an agent (if the agent is a patent corporation/patent corporation (with limited liability), its title, place of office, and the name of the designated patent attorney); |
| 2. |
The filing date and the application number; |
| 3. |
The designated goods and the classification thereof; |
| 4. |
The date of examiner's decision of rejection or ruling decision to dismiss an amendment; |
| 5. |
The indication of the trial case; |
| 6. |
The purpose and grounds for the request; |
| 7. |
Deleted. <by Act No. 6414, Feb. 3, 2001> |
| (2) |
No amendment to the request for a trial submitted pursuant to paragraph (1) shall be made to the gist thereof: Provided, That the foregoing shall not apply where it falls under any of the following cases: <Newly Inserted by Act No. 11113, Dec. 2, 2011> |
| 1. |
Where an amendment (including an addition) is made to correct records written by the requester under paragraph (1) 1; |
| 2. |
Where a ground for request under paragraph (1) 6 is amended. |
| (3) |
Where a trial on the decision of rejection under Article 70-2 is requested, and such decision of rejection is based on the acceptance of an objection to trademark registration, the President of the Korean Intellectual Property Tribunal shall notify the purpose thereof to the objector. <Amended by Act No. 4895, Jan, 5, 1995; Act No. 6414, Feb. 3, 2001; Act No. 11113, Dec. 2, 2011> |
law view
| Article 80 Deleted. <by Act No. 4895, Jan. 5, 1995> |
|
law view
| Article 81 (Mutatis Mutandis Application of Provisions concerning Examination to Trial on Decision of Rejection) |
|
| (1) |
Articles 15, 17, 18, 23 (2) through (4), 24, 24-2, 24-3, 25 through 30, 46-4 (2) and (3) and 48 (2) and (3) shall apply mutatis mutandis to trials on decision of rejection. In such cases, Article 24 shall not apply mutatis mutandis where an application for trademark registration or an application for the registration of additional designated goods has already been published. <Amended by Act No. 9987, Jan. 27, 2010; Act No. 11747, Apr. 5, 2013> |
| (2) |
Where Article 17 is applicable mutatis mutandis under paragraph (1), "When any applicant requests a trial on the decision to dismiss an amendment under Article 70-3" in Article 17 (3) shall be construed as "When an action is brought under Article 85-3 (1)", and "until the trial decision becomes final and conclusive" shall be construed as "until the judgement becomes final and conclusive". <Amended by Act No. 4895, Jan. 5, 1995; Act No. 8190, Jan. 3, 2007; Act No. 11113, Dec. 2, 2011> |
| (3) |
Articles 17 (4) through (6), 23 (2) through (4), 46-4 (2) and (3) and 48 (2) and (3) applicable mutatis mutandis under paragraph (1) shall also apply mutatis mutandis where the grounds for decision of rejection and other grounds for rejection are found. <Amended by Act No. 9987, Jan. 27, 2010; Act No. 11747, Apr. 5, 2013> |
law view
| Article 82 (Special Provisions for Trial on Decision of Rejection or Decision to Dismiss Amendment) |
|
[This Article Wholly Amended by Act No. 11113, Dec. 2, 2011]
law view
| Article 82-2 (Effect of Examination or Procedures to Raise Objection to Trademark Registration) |
|
The procedures performed on examination or on the request for an objection to trademark registration shall also be binding upon a decision to reject trademark registration, an application filed to register renewal of the duration of trademark rights, an application for the registration of additional designated goods, and a decision on rejection of an application for the registration of conversion of the goods classification.
[This Article Newly Inserted by Act No. 11113, Dec. 2, 2011]
law view
| Article 82-3 (Revocation of Decision to Reject Trademark Registration, etc.) |
|
| (1) |
Where a trial under Article 70-2 or 70-3 is requested, an administrative trademark judge shall revoke the decision of rejection or decision to dismiss the amendment by a trial decision, if he/she deems that the request has a reasonable ground. |
| (2) |
Where a decision of rejection or decision to dismiss an amendment is revoked in a trial, a trial decision may be rendered that the case will be subject to an examination. |
| (3) |
The grounds for revocation in a trial decision under paragraphs (1) and (2) shall bind an examiner in regard to the case. |
[This Article Newly Inserted by Act No. 11113, Dec. 2, 2011]
CHAPTER VIII RETRIAL AND LITIGATION
law view
| Article 83 (Request for Retrial) |
|
| (1) |
Any party may request a retrial on a trial decision which has become final and conclusive. |
law view
| Article 84 (Request for Retrial on Fraudulent Trial Decision) |
|
| (1) |
When the parties to a trial had a trial decision made for the purpose of fraudulently injuring the right or an interest of the third person in conspiracy with each other, the third person may request a retrial on the final and conclusive trial decision. <Amended by Act No. 4895, Jan. 5, 1995> |
| (2) |
In cases of a request for retrial under paragraph (1), the parties to a trial shall be joint respondents. <Amended by Act No. 4895, Jan. 5, 1995> |
law view
| Article 84-2 (Period of Request for Retrial) |
|
| (1) |
A party shall request a retrial within 30 days from the date on which he/she learns the grounds for a retrial after the trial decision becomes final and conclusive. |
| (2) |
Where a retrial is requested on grounds that the power of attorney is defective, the period referred to in paragraph (1) shall be calculated from the following day of the date on which the requester or his/her legal representative learns about the trial decision by service of a certified copy of the trial decision. |
| (3) |
No request for a retrial shall be made after three years have passed from the date on which the trial decision becomes final and conclusive. |
| (4) |
When grounds for a retrial arise after a trial decision becomes final and conclusive, the period referred to in paragraph (3) shall be calculated from the following day of the date on which such grounds arose. |
| (5) |
Paragraphs (1) and (3) shall not apply where a request for a retrial made on the ground that the trial decision is incompatible with an earlier trial decision that became final and conclusive. |
[This Article Newly Inserted by Act No. 11113, Dec. 2, 2011]
law view
| Article 85 (Restriction on Effect of Trademark Rights Restored by Retrial) |
|
In cases falling under any of the following subparagraphs, no effect of trademark rights shall extend to any act of using in good faith a trademark identical to the registered trademark on any goods identical to the designated goods after the trial decision becomes final and conclusive and before the request for a retrial is registered, and to any act falling under any subparagraph of Article 66 (1) or (2): <Amended by Act No. 7290, Dec. 31, 2004>
| 1. |
Where, after trademark registration or registration for renewal of the duration of trademark rights is invalidated, the effect is restored by a retrial; |
| 2. |
Where, after trademark registration is revoked, the effect is restored by a retrial; |
| 3. |
Where, after a trial decision that the case is not covered by the scope of trademark rights becomes final and conclusive, a trial decision contrary to it becomes final and conclusive by a retrial. |
law view
| Article 85-2 (Mutatis Mutandis Application of Trial Provisions in Retrial) |
|
In regard to the procedures for a retrial, the provisions concerning the procedures for a trial shall apply mutatis mutandis, unless they are incompatible.
[This Article Newly Inserted by Act No. 11113, Dec. 2, 2011]
law view
| Article 85-3 (Action against Trial Decision, etc.) |
|
| (1) |
The Patent Court shall have exclusive original jurisdiction over any action against a trial decision, a decision to dismiss an amendment under Article 17 (1) applied mutatis mutandis under Article 81 (1) (including cases as applicable mutatis mutandis in Article 85-2), and a decision to dismiss a written request for a trial or retrial. |
| (2) |
An action under paragraph (1) shall be brought only by the party concerned, intervenor, or person who has requested to intervene in the relevant trial or retrial but such request has been rejected. |
| (3) |
An action under paragraph (1) shall be brought within 30 days from the date on which a relevant person is served a certified copy of a trial decision or a decision. |
| (4) |
The period referred to in paragraph (3) shall be invariable. |
| (5) |
For persons whose address or place of residence is far away or who live in areas with poor transportation services, the presiding administrative trademark judge may, ex officio, determine an additional period for the invariable period referred to in paragraph (3). |
| (6) |
No action relating to matters for which a trial may be requested, shall be brought unless it is filed against a trial decision. |
| (7) |
No action under paragraph (1) against a trial decision or a decision on trial costs under Article 77-28 (1) shall be brought independently. |
| (8) |
Appeals may be filed with the Supreme Court in regard to rulings of the Patent Court under paragraph (1). |
[This Article Newly Inserted by Act No. 11113, Dec. 2, 2011]
law view
| Article 85-4 (Qualification for Defendants) |
|
In an action filed in accordance with Article 85-3 (1), the Commissioner of the Korean Intellectual Property Office shall be the defendant: Provided
, That in an action against a trial decision in a trial or a retrial under Articles 71 (1), 72 (1), 72-2 (1), 73 (1) and (3), 74 (1) and 75, the requester or respondent shall become the defendant.
[This Article Newly Inserted by Act No. 11113, Dec. 2, 2011]
law view
| Article 85-5 (Notification of Institution of Action and Service of Original Copy of Judgment) |
|
| (1) |
When an action is brought under Article 85-3 (1) or an appeal is filed under Article 85-3 (8), the court shall, without delay, notify the President of the Korean Intellectual Property Tribunal of the purport thereof. |
| (2) |
When the litigation procedures are completed in regard to an action brought under the proviso to Article 85-4, the court shall, without delay, serve the President of the Korean Intellectual Property Tribunal with the original copy of the judgment of each level of court concerning the case. |
[This Article Newly Inserted by Act No. 11113, Dec. 2, 2011]
law view
| Article 85-6 (Revocation of Trial Decision or Decision) |
|
| (1) |
When the court deems that an action brought under Article 85-3 (1) is well-grounded, the court shall revoke the relevant trial decision or relevant decision by judgement. |
| (2) |
When the revocation of a trial decision or a decision becomes final and conclusive, an administrative trademark judge shall conduct trial proceeding again to make a trial decision or a ruling. |
| (3) |
The reasons for a judgment on an action under paragraph (1) that constitute the basis for the revocation shall bind the Korean Intellectual Property Tribunal with respect to the case concerned. |
[This Article Newly Inserted by Act No. 11113, Dec. 2, 2011]
law view
| Article 85-7 (Remuneration for Patent Attorneys and Costs of Litigation) |
|
The provisions of Article 109 of the Civil Procedure Act shall apply mutatis mutandis
to the remuneration for patent attorneys who provide representation in litigations. In such cases, "attorney" shall be construed as "patent attorney."
[This Article Newly Inserted by Act No. 11113, Dec. 2, 2011]
law view
| Article 86 Deleted. <by Act No. 11113, Dec. 2, 2011> |
|
CHAPTER VIII-2 INTERNATIONAL APPLICATION UNDER PROTOCOL
SECTION 1 International Application, etc.
law view
| Article 86-2 (International Application) |
|
A person who desires to obtain the international registration (hereinafter referred to as "international registration") referred to in Article 2 (1) of the Protocol shall file with the Commissioner of the Korean Intellectual Property Office the international application on the basis of trademark registration or an application for trademark registration that falls under any of the following subparagraphs:
| 1. |
The applicant's application for trademark registration; |
| 2. |
The applicant's trademark registration; |
| 3. |
The applicant's application for trademark registration and the applicant's trademark registration. |
[This Article Newly Inserted by Act No. 6414, Feb. 3, 2001]
law view
| Article 86-3 (Qualifications for Applicants) |
|
| (1) |
A person who may file the international application with the Commissioner of the Korean Intellectual Property Office shall be as follows: |
| 1. |
A national of the Republic of Korea; |
| 2. |
A person who has an address (in cases of a corporation, its place of business) in the Republic of Korea. |
| (2) |
Where two or more persons intend to file a joint international application, they shall meet the qualifications for applicants prescribed by Ordinance of the Ministry of Trade, Industry and Energy. <Amended by Act No. 8852, Feb. 29, 2008; Act No. 11690, Mar. 23, 2013> |
[This Article Newly Inserted by Act No. 6414, Feb. 3, 2001]
law view
| Article 86-4 (Procedure for International Application) |
|
| (1) |
A person desiring to file the international application shall submit to the Commissioner of the Korean Intellectual Property Office a written request for the international application (hereinafter referred to as "international application form") and the documents necessary for the international application, both of which are to be prepared in a language prescribed by Ordinance of the Ministry of Trade, Industry and Energy. <Amended by Act No. 8852, Feb. 29, 2008; Act No. 11690, Mar. 23, 2013> |
| (2) |
The following particulars shall be stated in the international application form: <Amended by Act No. 8852, Feb. 29, 2008; Act No. 11690, Mar. 23, 2013> |
| 1. |
The name and address of the applicant (in cases of a corporation, its title and the location of its place of business); |
| 2. |
Matters concerning the qualifications for applicants under Article 86-3; |
| 3. |
The names of the contracting states (including inter-governmental organizations; hereinafter referred to as "designated state") where protection of the trademark is desired; |
| 4. |
The filing date and the application number of the basic application under Article 2 (1) of the Protocol (hereinafter referred to as the "basic application"), or the registration date and the registration number of the basic registration under Article 2 (1) of the Protocol (hereinafter referred to as the "basic registration"); |
| 5. |
The trademark for which international registration is being sought; |
| 6. |
The goods and the classification of goods for which international registration is being sought; |
| 7. |
Other matters prescribed by Ordinance of the Ministry of Trade, Industry and Energy. |
| (3) |
Where a person desiring to file the international application falls under any of the following cases, he/she shall enter the matters prescribed in the corresponding subparagraph, together with each of the matters specified in the subparagraphs of paragraph (2), in the international application form: <Amended by Act No. 11113, Dec. 2, 2011> |
| 1. |
Where he/she intends to include colors as an identifiable element of the trademark: The purport thereof and colors or the combination of colors; |
| 2. |
Where the mark constituting the basis of the application is a three-dimensional shape as specified in Article 2 (1) 1 (a) or a mark falling under Article 2 (1) 1 (b): The purport and explanation under Article 9 (2) (excluding explanation in cases of three-dimensional shapes); |
| 3. |
Where the mark constituting the basis of the application is a mark falling under Article 2 (1) 1 (c): The purport and explanation under Article 9 (3) and visual expression; |
| 4. |
Where the mark constituting the basis of the application is a geographical collective mark: The purport thereof. |
[This Article Newly Inserted by Act No. 6414, Feb. 3, 2001]
law view
| Article 86-5 (Examination, etc. of Particulars in International Application Form) |
|
| (1) |
Where the particulars entered in the international application form agree with the particulars entered in the basic application or the basic registration, the Commissioner of the Korean Intellectual Property Office shall indicate an acknowledgement of such fact and the date of receipt of the international application form in the international application form. |
| (2) |
After indicating the date of receipt, etc. under paragraph (1), the Commissioner of the Korean Intellectual Property Office shall immediately send the international application form and the documents necessary for the international application to the International Bureau under Article 2 (1) of the Protocol (hereinafter referred to as the "International Bureau"), and a copy of the international application form to the applicant. |
[This Article Newly Inserted by Act No. 6414, Feb. 3, 2001]
law view
| Article 86-6 (Subsequent Designation) |
|
| (1) |
Where the person in whose name that the international registration stands desires to extend protection of his/her internationally registered trademark by subsequently designating additional states or inter-governmental organizations (hereinafter referred to as "subsequent designation"), he/she may file a request for a subsequent designation with the Commissioner of the Korean Intellectual Property Office, as prescribed by Ordinance of the Ministry of Trade, Industry and Energy. <Amended by Act No. 8852, Feb. 29, 2008; Act No. 11690, Mar. 23, 2013> |
| (2) |
In applying paragraph (1), the person in whose name that the international registration stands may subsequently designate all or some of the designated goods which have been internationally registered. |
[This Article Newly Inserted by Act No. 6414, Feb. 3, 2001]
law view
| Article 86-7 (Renewal of Duration) |
|
| (1) |
The person in whose name the international registration stands may renew the duration of the international registration for a period of ten years. |
| (2) |
A person who desires to renew the duration of the international registration under paragraph (1) may request the renewal of the duration of international registration to the Commissioner of the Korean Intellectual Property Office, as prescribed by Ordinance of the Ministry of Trade, Industry and Energy. <Amended by Act No. 8852, Feb. 29, 2008; Act No. 11690, Mar. 23, 2013> |
[This Article Newly Inserted by Act No. 6414, Feb. 3, 2001]
law view
| Article 86-8 (Change in Ownership of International Registration) |
|
| (1) |
The holder in whose name the international registration stands or his/her successor may change the name in which the international registration stands with regard to all or some of the designated goods or the designated states. |
| (2) |
A person who desires to change the name in which the international registration stands under paragraph (1) may file with the Commissioner of the Korean Intellectual Property Office a request for the change of the name in which the international registration stands, as prescribed by Ordinance of the Ministry of Trade, Industry and Energy. <Amended by Act No. 8852, Feb. 29, 2008: Act No. 11690, Mar. 23, 2013> |
[This Article Newly Inserted by Act No. 6414, Feb. 3, 2001]
law view
| Article 86-9 (Payment of Official Fees) |
|
| (1) |
A person who falls under any of the following subparagraphs shall pay an official fee to the Commissioner of the Korean Intellectual Property Office: |
| 1. |
A person who desires to file the international application; |
| 2. |
A person who desires to request a subsequent designation; |
| 3. |
A person who desires to request the renewal of the duration of the international registration under Article 86-7; |
| 4. |
A person who desires to request a change in the ownership of the international registration under Article 86-8. |
| (2) |
Matters necessary for official fees, the payment methods and period thereof under paragraph (1) shall be prescribed by Ordinance of the Ministry of Trade, Industry and Energy. <Amended by Act No. 8852, Feb. 29, 2008; Act No. 11690, Mar. 23, 2013> |
[This Article Newly Inserted by Act No. 6414, Feb. 3, 2001]
law view
| Article 86-10 (Correction for Unpaid Official Fees) |
|
Where a person who falls under any subparagraph of Article 86-9 (1) fails to pay an official fee required under Article 86-9 (2), the Commissioner of the Korean Intellectual Property Office may order him/her to correct it within a prescribed period.
[This Article Newly Inserted by Act No. 6414, Feb. 3, 2001]
law view
| Article 86-11 (Invalidation of Procedure) |
|
Where a person who has been ordered to make correction under Article 86-10 fails to pay an official fee within a prescribed period, the Commissioner of the Korean Intellectual Property Office may invalidate the relevant procedure.
[This Article Newly Inserted by Act No. 6414, Feb. 3, 2001]
law view
| Article 86-12 (Registration of Change in Particulars of International Registration, etc.) |
|
Matters necessary for a request for registering a change in the particulars of the international registration or for other international applications shall be prescribed by Ordinance of the Ministry of Trade, Industry and Energy. <Amended by Act No. 8852, Feb. 29, 2008; Act No. 11690, Mar. 23, 2013>
[This Article Newly Inserted by Act No. 6414, Feb. 3, 2001]
law view
| Article 86-13 (Exclusion for Business Emblem) |
|
[This Article Newly Inserted by Act No. 6414, Feb. 3, 2001]
SECTION 2 Special Cases for Application for International Registration of Trademarks
law view
| Article 86-14 (Application for International Registration of Trademarks) |
|
| (1) |
The international application that has been registered internationally under the Protocol and that designates the Republic of Korea as a designated state (including subsequent designation) shall be deemed an application for trademark registration under this Act. |
| (2) |
In applying paragraph (1), the date of the international registration under Article 3 (4) of the Protocol (hereinafter referred to as "date of international registration") shall be deemed the filing date of the application for trademark registration under this Act: Provided, That in cases of the international application that subsequently designates the Republic of Korea, the date on which the subsequent designation is recorded in the International Register (referring to the International Register under Article 2 (1) of the Protocol; hereinafter the same shall apply) (hereinafter referred to as "date of subsequent designation") shall be deemed the filing date of application for trademark registration under this Act. |
| (3) |
In regard to the international application that is deemed an application for trademark registration under this Act pursuant to paragraph (1) (hereinafter referred to as "application for the international registration of trademarks"), the name and address of the person in whose name the international registration stands (in cases of a corporation, its title and the location of its place of business), the trademark, the designated goods and the classifications thereof that are recorded in the International Register shall be deemed the name and address of the applicant (in cases of a corporation, its title and the location of its place of business), the trademark, the designated goods and the classifications thereof, respectively, under this Act. |
[This Article Newly Inserted by Act No. 6414, Feb. 3, 2001]
law view
| Article 86-15 (Special Cases for Business Emblem) |
|
The provisions for business emblems shall not apply to the application for the international registration of trademarks.
[This Article Newly Inserted by Act No. 6414, Feb. 3, 2001]
law view
| Article 86-16 (Special Cases for Application for International Registration of Trademarks) |
|
| (1) |
In applying this Act to the application for the international registration of trademarks, the purport of the priority claim, the name of the country in which the application was initially filed, and the filing date of the application recorded in the International Register shall be deemed the purport of the priority claim, the name of the country in which the application was initially filed, and the filing date of the application that are indicated in the application form for trademark registration. |
| (2) |
In applying this Act to the application for the international registration of trademarks, the purport of a trademark that is featured by the three-dimensional shape registered in the International Register or falls under Article 2 (1) 1 (b) or (c) shall be deemed the purport of the trademark that is featured by the three-dimensional shape entered in the application form for trademark registration or falls under Article 2 (1) 1 (b) or (c). <Amended by Act No. 8190, Jan. 3, 2007; Act No. 11113, Dec. 2, 2011> |
| (3) |
A person intending to obtain a registration of a collective mark shall submit the documents specified in Article 9 (4), and a person intending to obtain a registration of a certification mark, the documents specified in Article 9 (5), within a period prescribed by Ordinance of the Ministry of Trade, Industry and Energy. In such cases, a person intending to obtain a registration of a geographical collective mark shall also submit the document stating the purport thereof and the document prescribed by Presidential Decree, which proves such mark corresponds to the definition of geographical indication under Article 2 (1) 3-2. <Amended by Act No. 11113, Dec. 2, 2011; Act No. 11690, Mar. 23, 2013> |
[This Article Newly Inserted by Act No. 6414, Feb. 3, 2001]
law view
| Article 86-17 (Effect of Application for International Registration of Trademarks where Domestic Trademark has been Registered) |
|
| (1) |
Where a trademark rights holder whose trademark rights have been established and registered in the Republic of Korea (excluding trademarks registered under an application for the international registration of trademarks; hereinafter referred to as "domestically registered trademark" in this Article) files an application for the international registration of trademarks, the application for the international registration of trademarks shall be deemed to be filed on the filing date of the application for trademark registration under which the relevant trademark was domestically registered, within the overlapping scope of designated goods, if all of the following subparagraphs are fulfilled: |
| 1. |
The trademark registered under the application for the international registration of trademarks in the International Register (hereinafter referred to as "internationally registered trademark") shall be identical to the domestically registered trademark; |
| 2. |
The person in whose name the international registration stands with regard to the internationally registered trademark shall be identical to the owner of the domestically registered trademark; |
| 3. |
All designated goods of the domestically registered trademark shall be among the designated goods of the internationally registered trademark; |
| 4. |
Territorial extension under Article 3-3 of the Protocol shall be effective after the registration date of the domestically registered trademark. |
| (2) |
Where the priority is recognized under the treaty for the application for trademark registration relating to the domestically registered trademark under paragraph (1), the priority shall also be recognized with regard to the application for the international registration of trademarks under the same paragraph. |
| (3) |
Where the right of the domestically registered trademark is revoked or extinguished due to a reason falling under any of the following subparagraphs, the relevant application for the international registration of trademarks under paragraphs (1) and (2) shall be recognized ineffective within the same scope of the designated goods of trademark rights revoked or extinguished: <Amended by Act No. 7290, Dec. 31, 2004; Act No. 11113, Dec. 2, 2011> |
| 1. |
Where a trial decision that revokes trademark registration by a reason falling under Article 73 (1) 2, 3, and 5 through 13 has become final and conclusive; |
| 2. |
Where a trial for revocation of trademark registration is requested by a reason falling under Article 73 (1) 2, 3, and 5 through 13, and trademark rights have become extinguished due to the expiry of the duration, or trademark rights or designated goods have been abandoned, after the request date of the trial for revocation. |
| (4) |
A person intending to file an application pursuant to the provisions of Article 4-2 (2) of the Protocol shall file with the Commissioner of the Korean Intellectual Property Office the application form in which the following matters are entered: <Newly Inserted by Act No. 8190, Jan. 3, 2007; Act No. 8852, Feb. 29, 2008; Act No. 11690, Mar. 23, 2013> |
| 1. |
The name and address of the person in whose name the international registration stands (in cases of a corporation, its title and the location of its place of business); |
| 2. |
The number of his/her international registration; |
| 3. |
The number of his/her registered trademark in the Republic of Korea; |
| 4. |
The overlapping designated goods; |
| 5. |
Other matters prescribed by Ordinance of the Ministry of Trade, Industry and Energy. |
| (5) |
An examiner shall, upon receiving an application filed for registering the international trademark pursuant to paragraph (4), notify the applicant of whether or not its effects referred to in paragraphs (1) through (3) shall be deemed valid. <Newly Inserted by Act No. 8190, Jan. 3, 2007> |
[This Article Newly Inserted by Act No. 6414, Feb. 3, 2001]
law view
| Article 86-18 (Special Cases for Succession to and Divided Transfer, etc. of Application) |
|
| (1) |
In applying Article 12 (1) to the application for the international registration of trademarks, "a report on the change of applicant is filed, except in cases of inheritance and other general succession" shall be construed as "an applicant reports the change of the ownership to the International Bureau". |
| (2) |
Where all or some of the designated goods of the international registration have been divided and transferred due to the change in the ownership of the international registration, each application for the international registration of trademarks shall be deemed to have been filed by each changed person in whose name the international registration stands. |
| (3) |
Article 12 (4) shall not apply to the application for the international registration of trademarks. |
[This Article Newly Inserted by Act No. 6414, Feb. 3, 2001]
law view
| Article 86-19 (Special Cases for Amendment) |
|
| (1) |
In applying Article 14 (1) to the application for the international registration of trademarks, "the designated goods and trademark relevant to his/her application for trademark registration" shall be construed as "the designated goods relevant to his/her application for trademark registration only when the applicant has been notified of the grounds for rejection under Article 23 (2)". |
| (2) |
In applying Article 15 to the application for the international registration of trademarks, "the designated goods and trademark" shall be construed as "the designated goods". |
| (3) |
Article 16 (1) 4 shall not apply to the application for the international registration of trademarks. |
| (4) |
In applying Article 16 (2) or (3) to the application for the international registration of trademarks, "a trademark or designated goods" shall be construed as "designated goods", respectively. |
[This Article Newly Inserted by Act No. 6414, Feb. 3, 2001]
law view
| Article 86-20 (Special Cases for Division of Applications) |
|
The provisions of Article 18 shall not apply to the application for the international registration of trademarks.
[This Article Newly Inserted by Act No. 6414, Feb. 3, 2001]
law view
| Article 86-21 (Special Cases for Conversion of Applications) |
|
The provisions of Article 19 (1) through (4) shall not apply to the application for the international registration of trademarks.
[This Article Newly Inserted by Act No. 6414, Feb. 3, 2001]
law view
| Article 86-22 (Special Cases for Priority Claim under Paris Convention) |
|
The provisions of Article 20 (4) and (5) shall not apply where an applicant for the international registration of trademarks claims priority under the Paris Convention.
[This Article Newly Inserted by Act No. 6414, Feb. 3, 2001]
law view
| Article 86-23 (Special Cases for Time of Application and Accelerated Examination) |
|
| (1) |
In applying Article 21 (2) to the application for the international registration of trademarks, "an application for trademark registration stating the purport, and also submit a document proving the relevant facts to the Commissioner of the Korean Intellectual Property Office within 30 days from the filing date of the application" shall be construed as "a written statement on the purport and a document proving the relevant facts within a period prescribed by Ordinance of the Ministry of Trade, Industry and Energy". <Amended by Act No. 8852, Feb. 29, 2008: Act No. 11690, Mar. 23, 2013> |
| (2) |
Article 22-4 (2) shall not apply to the application for the international registration of trademarks. <Newly Inserted by Act No. 9987, Jan. 27, 2010> |
[This Article Newly Inserted by Act No. 6414, Feb. 3, 2001]
law view
| Article 86-24 (Special Cases for Notification of Grounds for Rejection) |
|
| (1) |
In applying Article 23 (2) to the application for the international registration of trademarks, "an applicant" shall be construed as "an applicant through the International Bureau". <Amended by Act No. 11747, Apr. 5, 2013> |
| (2) |
Article 23 (4) shall not apply to the application for the international registration of trademarks. <Newly Inserted by Act No. 11747, Apr. 5, 2013> |
[This Article Newly Inserted by Act No. 8190, Jan. 3, 2007]
law view
| Article 86-25 (Special Cases for Publication of Application) |
|
In applying Article 24 (1) to the application for the international registration of trademarks, "fails to find any ground for rejection" shall be construed as "fails to find any ground for rejection within a period prescribed by Ordinance of the Ministry of Trade, Industry and Energy". <Amended by Act No. 8852, Feb. 29, 2008: Act No. 11690, Mar. 23, 2013>
[This Article Newly Inserted by Act No. 6414, Feb. 3, 2001]
law view
| Article 86-26 (Special Cases for Right to Demand Compensation for Loss) |
|
In applying the proviso to Article 24-2 (1) to the application for the international registration of trademarks, "a copy of the said application for trademark registration" shall be construed as "a copy of the relevant application for the international registration of trademarks".
[This Article Newly Inserted by Act No. 6414, Feb. 3, 2001]
law view
| Article 86-27 (Special Cases for Decision on Trademark Registration and Amendment Ex Officio) |
|
| (1) |
In applying Article 30 to the application for the international registration of trademarks, "cannot find any grounds for rejection" shall be construed as "cannot find any grounds for rejection within a period prescribed by Ordinance of the Ministry of Trade, Industry and Energy". <Amended by Act No. 8852, Feb. 29, 2008; Act No. 11690, Mar. 23, 2013> |
| (2) |
Article 24-3 shall not apply to the application for the international registration of trademarks. <Newly Inserted by Act No. 9987, Jan. 27, 2010> |
[This Article Newly Inserted by Act No. 6414, Feb. 3, 2001]
law view
| Article 86-28 (Special Cases for Trademark Registration Fees, etc.) |
|
| (1) |
A person desiring to file an application for the international registration of trademarks or to renew the duration of trademark rights which have been established and registered under Article 86-31 (hereinafter referred to as "trademark rights based on the international registration") shall pay an individual fee prescribed by Article 8 (7) (a) of the Protocol to the International Bureau. |
| (2) |
Matters necessary for the payment of individual fees under paragraph (1) shall be prescribed by Ordinance of the Ministry of Trade, Industry and Energy. <Amended by Act No. 8852, Feb. 29, 2008; Act No. 11690, Mar. 23, 2013> |
| (3) |
Articles 34, 34-2, 35, 36, 36-2 and 36-3 shall not apply to the application for the international registration of trademarks, nor to trademark rights based on the international registration. <Amended by Act No. 8190, Jan. 3, 2007> |
[This Article Newly Inserted by Act No. 6414, Feb. 3, 2001]
law view
| Article 86-29 (Special Cases for Refund of Trademark Registration Fees, etc.) |
|
In applying the main sentence of Article 38 (1) to the application for the international registration of trademarks, "trademark registration fees and official fees already paid" shall be construed as "official fees already paid", and in applying the proviso to Article 38 (1), and Article 38 (2) and (3), "trademark registration fees and official fees" shall be construed as "official fees", respectively.
[This Article Newly Inserted by Act No. 6414, Feb. 3, 2001]
law view
| Article 86-30 (Special Cases for Registration in Trademark Register) |
|
| (1) |
In applying Article 39 (1) 1 to trademark rights based on the international registration, "establishment, transfer, modification, extinguishment, restoration, renewal of the duration, conversion of the goods classification under Article 46-2, registration of additional designated goods, or restriction on disposition, of trademark rights" shall be construed as "establishment of trademark rights or restriction on disposition of trademark rights". |
| (2) |
The transfer, modification, extinguishment, or renewal of the duration of trademark rights based on the international registration shall be based on the details recorded in the International Register. |
[This Article Newly Inserted by Act No. 6414, Feb. 3, 2001]
law view
| Article 86-31 (Special Cases for Registration of Establishment of Trademark Rights) |
|
In applying Article 41 (2) to the application for the international registration of trademarks, "when trademark registration fees (referring to the first installment of trademark registration fees if payment is made in installments under the latter part of Article 34 (1); hereinafter the same shall apply in this paragraph) are paid in accordance with Article 34 (1) or 35, when the remainder of trademark registration fees are paid in accordance with Article 36-2 (2), or when trademark registration fees or the remainder is paid in accordance with Article 36-3 (1)" shall be construed as "when a decision to grant trademark registration has been made".
[This Article Wholly Amended by Act No. 9987, Jan. 27, 2010]
law view
| Article 86-32 (Special Cases for Term, etc. of Trademark Rights) |
|
| (1) |
The duration of trademark rights based on the international registration shall start from the date of registration of its establishment under Article 86-31 and continue for ten years from the date of the international registration. |
| (2) |
The duration of trademark rights based on the international registration may be renewed for a period of ten years upon request for renewal of the duration of the international registration. |
| (3) |
Where the duration of trademark rights based on the international registration has been renewed under paragraph (2), the duration of the relevant trademark rights based on the international registration shall be deemed renewed at the time of expiry of the said duration. |
| (4) |
Articles 42, 43, 46, 46-2, 46-4, 46-5, 49 (1) and (2) and 64-2 shall not apply to trademark rights based on the international registration. <Amended by Act No. 9987, Jan. 27, 2010> |
[This Article Newly Inserted by Act No. 6414, Feb. 3, 2001]
law view
| Article 86-33 (Special Cases for Application for Registration of Additional Designated Goods) |
|
The provisions of Articles 47, 48, and 49 (3) shall not apply to the application for the international registration of trademarks, nor to trademark rights based on the international registration.
[This Article Newly Inserted by Act No. 6414, Feb. 3, 2001]
law view
| Article 86-34 (Special Cases for Division of Trademark Rights) |
|
The provisions of Article 54-2 shall not apply to trademark rights based on the international registration.
[This Article Newly Inserted by Act No. 6414, Feb. 3, 2001]
law view
| Article 86-35 (Special Cases for Effects of Registration of Trademark Rights) |
|
| (1) |
The transfer, modification, extinguishment by abandonment, or renewal of the duration of trademark rights based on the international registration shall be ineffective unless it is registered in the International Register. |
| (2) |
Article 56 (1) 1 (excluding the part relating to the restriction on disposition) shall not apply to trademark rights based on the international registration. |
| (3) |
In applying Article 56 (2) to trademark rights based on the international registration, "trademark rights and exclusive license" shall be construed as "exclusive license". |
[This Article Newly Inserted by Act No. 6414, Feb. 3, 2001]
law view
| Article 86-36 (Effects of Extinguishment of International Registration) |
|
| (1) |
Where all or part of the international registration on which an international trademark application is based has been extinguished, the relevant application for the international registration of trademarks shall be deemed to have been withdrawn to the extent of which all or some of the designated goods have been extinguished. |
| (2) |
Where all or part of the international registration on which an international trademark application is based has been extinguished, the relevant trademark rights shall be deemed to have been extinguished to the extent of which all or some of the designated goods have been extinguished. |
| (3) |
Withdrawal or extinguishment under paragraph (1) or (2) shall take effect on the date on which the international registration in the International Register has been extinguished. |
[This Article Newly Inserted by Act No. 6414, Feb. 3, 2001]
law view
| Article 86-37 (Special Cases for Abandonment of Trademark Rights) |
|
| (1) |
Article 60 (1) shall not apply to trademark rights based on the international registration. |
| (2) |
In applying Article 61 to trademark rights based on the international registration, "trademark rights and an exclusive license" shall be construed as "an exclusive license", respectively. |
[This Article Newly Inserted by Act No. 6414, Feb. 3, 2001]
law view
| Article 86-38 (Special Cases for Trial for Invalidation on Registration for Renewal of Duration of Trademark Rights) |
|
The provisions of Articles 72 and 72-2 shall not apply to trademark rights based on the international registration.
[This Article Newly Inserted by Act No. 6414, Feb. 3, 2001]
SECTION 3 Special Cases for Application for Trademark Registration
law view
| Article 86-39 (Special Cases for Applications for Trademark Registration after Extinguishment of International Registration) |
|
| (1) |
Where the international registration of trademarks that designated (including subsequent designations) the Republic of Korea has expired with respect to all or some of the designated goods under Article 6 (4) of the Protocol, the person in whose name the relevant international registration stands may file an application for trademark registration with the Commissioner of the Korean Intellectual Property Office for all or some of the relevant designated goods. |
| (2) |
Where an application for trademark registration under paragraph (1) fulfills all the requirements of the following subparagraphs, the application shall be deemed filed on the date of the international registration (in cases of a subsequent designation, the date of subsequent designation): |
| 1. |
The application for trademark registration under paragraph (1) shall be filed within three months from the extinguishment date of international registration under the same paragraph; |
| 2. |
The designated goods of the application for trademark registration under paragraph (1) shall be among the designated goods contained in the international registration under the same paragraph; |
| 3. |
The trademark for which trademark registration is being sought shall be identical to the trademark of the extinguished international registration. |
| (3) |
Where the priority is recognized under the treaty for the application for the international registration of trademarks concerning the international registration under paragraph (1), the priority shall be recognized for the application for trademark registration under the same paragraph. |
[This Article Newly Inserted by Act No. 6414, Feb. 3, 2001]
law view
| Article 86-40 (Special Cases for Application for Trademark Registration after Denunciation of Protocol) |
|
| (1) |
Where a holder of the international registration designating (including subsequent designations) the Republic of Korea is no longer qualified to file the international application under Article 15 (5) (b) of the Protocol, the holder of the said international registration may file an application for trademark registration to the Commissioner of the Korean Intellectual Property Office with respect to all or some of the designated goods of the international registration. |
| (2) |
Article 86-39 (2) and (3) shall apply mutatis mutandis to the application for trademark registration under paragraph (1). In such cases, "within three months from the extinguishment date of international registration under the same paragraph" in Article 86-39 (2) 1 shall be construed as "within two years from the date on which the denunciation under Article 15 (3) of the Protocol became effective". |
[This Article Newly Inserted by Act No. 6414, Feb. 3, 2001]
law view
| Article 86-41 (Special Cases for Examination) |
|
The provisions of Articles 23, 24, and 25 through 29 shall not apply where an application for trademark registration that falls under any of the following subparagraphs (hereinafter referred to as "reapplication") is filed for a registered trademark of the principal, which has been established and registered under Article 86-31:
| 1. |
An application for trademark registration that fulfills all the requirements of the subparagraphs of Article 86-39 (2) and is filed under Article 86-39 (1); |
| 2. |
An application for trademark registration that fulfills all the requirements of the subparagraphs of Article 86-39 (2), which applies mutatis mutandis to Article 86-40 (2), and is filed under Article 86-40 (1). |
[This Article Newly Inserted by Act No. 6414, Feb. 3, 2001]
law view
| Article 86-42 (Special Cases for Period of Exclusion) |
|
Where the establishment of a trademark has been registered by re-application, and the period of exclusion under Article 76 (1) for the previous trademark rights based on the international registration has expired, no trial for invalidation shall be requested against the trademark which has been established and registered by re-application.
[This Article Newly Inserted by Act No. 6414, Feb. 3, 2001]
CHAPTER IX SUPPLEMENTARY PROVISIONS
law view
| Article 87 (Inspection, etc. of Documents) |
|
A person who needs a certificate concerning an application for and trial on trademark registration, delivery of a certified copy or abstract of a document, inspection or copying of the trademark register and documents, may request it to the Commissioner of the Korean Intellectual Property Office or the President of the Korean Intellectual Property Tribunal. <Amended by Act No. 4895, Jan. 5, 1995>
law view
| Article 88 (Prohibition of Carrying Out and Publication of Documents concerning Application for Trademark Registration, Examination, Trial, or Retrial, or of Trademark Register, etc.) |
|
| (1) |
No documents concerning applications for trademark registration, examinations, objections raised to trademark registration, trials or retrials, or the trademark register shall be carried out except any case falling under any of the following subparagraphs: <Amended by Act No. 8190, Jan. 3, 2007; Act No. 10012, Feb. 4, 2010; Act No. 11113, Dec. 2, 2011> |
| 1. |
Where the documents concerning applications for trademark registration, application for geographical collective mark registration, examinations or objections raised to trademark registration are carried out in order to search the trademarks, etc. pursuant to Article 22-2 (1) through (3); |
| 2. |
Where the documents concerning applications for trademark registration, examinations, objections raised to trademark registration, trials and retrials or the trademark register are carried out in order to commission the work of digitizing the trademark documents pursuant to Article 92 (1); |
| 3. |
Where the documents concerning applications for trademark registration, examinations, objections raised to trademark registration, trials and retrials or the trademark register are carried out in order to perform the online remote work provided in Article 32 (2) of the Electronic Government Act. |
| (2) |
No expert opinion, testimony, or answer to an inquiry shall be given as to the contents of a case that is in the process of the application for trademark registration, examination, the objection raised to trademark registration, trial or retrial, or as to a decision on whether to grant or reject trademark registration or a trial decision, or the contents of a decision. <Amended by Act No. 5355, Aug. 22, 1997; Act No. 6414, Feb. 3, 2001; Act No. 8190, Jan. 3, 2007> |
law view
| Article 89 (Trademark Gazette) |
|
| (1) |
The Korean Intellectual Property Office shall publish the Trademark Gazette. |
| (2) |
The Trademark Gazette may be published by electronic media, as prescribed by Ordinance of the Ministry of Trade, Industry and Energy. <Newly Inserted by Act No. 5329, Apr. 10, 1997; Act No. 6414, Feb. 3, 2001; Act No. 8852, Feb. 29, 2008: Act No. 11690, Mar. 23, 2013> |
| (3) |
In publishing the Trademark Gazette by electronic media, the Commissioner of the Korean Intellectual Property Office shall make public matters relating to the publication of the Trademark Gazette, its main contents, and service by publication through information and communications networks. <Newly Inserted by Act No. 5329, Apr. 10, 1997; Act No. 6414, Feb. 3, 2001> |
| (4) |
Matters to be inserted in the Trademark Gazette shall be prescribed by Presidential Decree. |
law view
| Article 90 (Indication of Registered Trademark) |
|
Where a trademark rights holder, or an exclusive or non-exclusive licensee uses a registered trademark, he/she may indicate that the trademark is a registered trademark.
law view
| Article 90-2 (Indication of Registered Homonymous Geographical Collective Mark) |
|
Where two or more registered geographical collective marks have a homonymous relation to each other, the owners of such collective mark rights and the members of the organizations concerned shall, in using the registered geographical collective marks, make necessary indications on the goods concerned in order to prevent consumers from being misled about their geographical origins.
[This Article Newly Inserted by Act No. 7290, Dec. 31, 2004]
law view
| Article 91 (Prohibition of False Indication) |
|
| (1) |
No person shall be allowed to perform any of the following acts: <Amended by Act No. 5355, Aug. 22, 1997> |
| 1. |
Indicating a trademark which is not registered or applied for trademark registration, on any goods, as if it were a registered trademark or its registration were applied for; |
| 2. |
Indicating a trademark which is not registered or applied for trademark registration, on advertisements, signboards, tags or packaging of goods or other business transaction documents, etc. as if it were a registered trademark or its registration were applied for; |
| 3. |
Marking on a registered trademark with an indication that the trademark is registered or with any sign likely to be confused with such indication, in cases where the registered trademark is used on goods, other than the designated goods. |
| (2) |
Acts of indicating a trademark under paragraph (1) 1 and 2 shall include goods and packaging, advertisement, signboards, or tags that have become shapes of marks. <Newly Inserted by Act No. 5355, Aug. 22, 1997> |
law view
| Article 91-2 (Special Provisions on Trademarks, etc. Similar to Registered Trademarks) |
|
| (1) |
"Registered trademark" in Articles 50, 53, 55 (3), 57 (2), 62, 67 (3), 73 (1) 3 and 4, 85, 90 and 91 shall be deemed to include trademarks, similar to the registered trademark, which will be deemed identical to the registered trademark if their colors are the same as those of the registered trademark. <Amended by Act No. 5355, Aug. 22, 1997; Act No. 6765, Dec. 11, 2002> |
| (2) |
"Trademark similar to the registered trademark" in Articles 66 (1) 1 and 73 (1) 2 shall be deemed not to include trademarks, as similar to the registered trademark, which will be deemed identical to the registered trademark if their colors are the same as those of the registered trademark. <Amended by Act No. 7290, Dec. 31, 2004> |
| (3) |
"Trademark similar to a registered geographical collective mark of another person" in Article 66 (2) 1 shall be deemed not to include trademarks, as similar to the registered collective mark, which will be deemed identical to the registered collective mark if their colors are the same as those of the registered collective mark. <Newly Inserted by Act No. 7290, Dec. 31, 2004> |
| (4) |
The provisions of paragraphs (1) through (3) shall not apply to cases of any registered trademark that is featured simply by any color or the combination of colors. <Newly Inserted by Act No. 8190, Jan. 3, 2007> |
[This Article Newly Inserted by Act No. 5083, Dec. 29, 1995]
law view
| Article 92 (Performance of Digitizing Trademark Documents as Agent) |
|
| (1) |
If deemed necessary to efficiently conduct trademark-related procedures, the Commissioner of the Korean Intellectual Property Office may entrust a corporation that has facilities and human resources as prescribed by Ordinance of the Ministry of Trade, Industry and Energy with the affairs of digitizing documents related to applications, examinations, trials or retrials for trademark registration or the trademark register through an electronic information processing system and the technology for utilizing the electronic information processing system, or any business similar thereto (hereinafter referred to as "affairs of digitizing trademark documents"). <Amended by Act No. 11690, Mar. 23, 2013> |
| (2) |
The Commissioner of the Korean Intellectual Property Office may, pursuant to paragraph (1), digitize applications for trademark registration that have not been submitted as electronic documents under Article 5-27 (1) and other documents prescribed by Ordinance of the Ministry of Trade, Industry and Energy, and may record them in a file of an electronic information processing system used by the Korean Intellectual Property Office or the Korean Intellectual Property Tribunal. <Amended by Act No. 11690, Mar. 23, 2013> |
| (3) |
The details recorded in a file pursuant to paragraph (2) shall be deemed the same as the details in the documents concerned. |
| (4) |
The method of conducting digitalization of trademark documents under paragraph (1) and other matters necessary to conduct digitalization of trademark documents shall be prescribed by Ordinance of the Ministry of Trade, Industry and Energy. <Amended by Act No. 11690, Mar. 23, 2013> |
| (5) |
Where a person entrusted with the digitization of trademark documents pursuant to paragraph (1) (hereinafter referred to as "agency of trademark document digitization") fails to satisfy the criteria for facilities and human resources as prescribed by Ordinance of the Ministry of Trade, Industry and Energy pursuant to paragraph (1) and to comply with corrective measures therefor taken by the Commissioner of the Korean Intellectual Property Office, the Commissioner of the Korean Intellectual Property Office may revoke the entrustment of the affairs of digitizing trademark documents. <Amended by Act No. 11690, Mar. 23, 2013> |
[This Article Wholly Amended by Act No. 11113, Dec. 2, 2011]
law view
| Article 92-2 (Service by Publication) |
|
| (1) |
When service cannot be made because the address or place of business of a person required to be served relevant documents is unclear, service shall be made by publication. |
| (2) |
Service by publication shall be made by publishing in the Trademark Gazette the purport that relevant documents will be issued to a person required to be served at any time. |
| (3) |
A notification first served by publication shall be effective two weeks after the date on which it is published in the Trademark Gazette: Provided, That subsequent service on the same party by publication shall be effective on the following day of publication in the Trademark Gazette. |
[This Article Newly Inserted by Act No. 11113, Dec. 2, 2011]
law view
| Article 92-3 (Service of Documents on Nonresidents) |
|
| (1) |
If a nonresident has a trademark administrator, the document to be served on the nonresident shall be served on the trademark administrator: Provided, That the foregoing shall not apply where an examiner notifies the applicant for the international registration of trademarks of the grounds for rejection through the International Bureau under Article 86-24. |
| (2) |
If a nonresident does not have a trademark administrator, the document to be served on the nonresident may be sent by registered air mail. |
| (3) |
When a document is sent by registered air mail pursuant to paragraph (2), it shall be deemed served on the date it is sent. |
[This Article Newly Inserted by Act No. 11113, Dec. 2, 2011]
law view
| Article 92-4 (Service of Documents) |
|
Matters necessary for the procedures, etc. for service of documents prescribed in this Act shall be prescribed by Presidential Decree.
[This Article Newly Inserted by Act No. 11113, Dec. 2, 2011]
law view
| Article 92-5 (Submission, etc. of Documents) |
|
The Commissioner of the Korean Intellectual Property Office or an examiner may order a party involved to submit documents or other articles necessary to take the procedures other than the procedures for a trial or a retrial.
[This Article Newly Inserted by Act No. 11113, Dec. 2, 2011]
law view
| Article 92-6 (Restriction on Objection) |
|
| (1) |
No objection pursuant to other Acts shall be raised to a decision to dismiss an amendment, decision on trademark registration, trial decision, or a decision to dismiss a request for a trial or a retrial; no objection pursuant to other Acts may be raised to a disposition against which no objection is allowed pursuant to this Act. |
[This Article Newly Inserted by Act No. 11113, Dec. 2, 2011]
law view
| Article 92-7 (Confidentiality Order) |
|
| (1) |
Where both of the grounds specified in the following subparagraphs are clearly explained with regard to the business secrets held by a party concerned (referring to business secrets under subparagraph 2 of Article 2 of the Unfair Competition Prevention and Trade Secret Protection Act; hereinafter the same shall apply) in a trial on the infringement of trademark rights or an exclusive license, the court may order, by decision, the other party concerned (referring to the representative in cases of a corporation), a person who represents the said party in the litigation, and other persons who has learned the business secrets due to the relevant litigation, not to use the business secrets for purposes other than the purpose of continuing the litigation or not to disclose the business secrets to persons other than those related to the business secrets who receive the order pursuant to this paragraph, upon request by the said party: Provided, That the foregoing shall not apply where, by the time of such request, the other party concerned (referring to the representative in cases of a corporation), a person who represents the said party in the litigation, and other persons who have learned the business secrets due to the relevant litigation have already obtained the business secrets by such means other than the perusal of a legal brief or investigation of evidence prescribed in paragraph (1): |
| 1. |
That the business secrets are included in the legal brief already submitted or to be submitted or in the evidence already investigated or to be investigated; |
| 2. |
That the business secrets under paragraph (1) are likely to harm the said party's business if used or disclosed for purposes other than the purpose of the relevant litigation, and therefore the use or disclose of such business secrets is required to be restricted. |
| (2) |
A request for an order to be issued under paragraph (1) (hereinafter referred to as "confidentiality order") shall be made in a written document stating the following matters: |
| 1. |
A person to whom the confidentiality order is issued; |
| 2. |
Facts that are enough to specify the business secrets subject to the confidentiality order; |
| 3. |
Facts falling under the a ground specified in either subparagraph of paragraph (1). |
| (3) |
Where the confidentiality order is determined, the court shall serve a written decision on the person to whom the confidentiality order is issued. |
| (4) |
The confidentiality order shall take effect from the time the written decision under paragraph (3) is served on the person to whom the confidentiality order is issued. |
| (5) |
An immediate appeal may be made against the trial that has rejected or dismissed a request for the confidentiality order. |
[This Article Newly Inserted by Act No. 11113, Dec. 2, 2011]
law view
| Article 92-8 (Revocation of Confidentiality Order) |
|
| (1) |
Where a person who has requested a confidentiality order or to whom a confidentiality order has been issued fails to meet the eligibility requirements specified in Article 92-7 (1), he/she may request the court that keeps the litigation records (referring to the court that has issued the confidentiality order where there is no court that keeps the litigation records) to revoke the confidentiality order. |
| (2) |
Where a trial is conducted in regard to a request for revocation of a confidentiality order, the court shall serve a written decision on the person who has requested such revocation and the other party. |
| (3) |
An immediate appeal may be made against the trial on a request of revocation of a confidentiality order. |
| (4) |
The trial to revoke a confidentiality order shall take effect only when it becomes final and conclusive. |
| (5) |
The court that has conducted a trial to revoke a confidentiality order, where there is another person who has been issued the confidentiality order regarding relevant business secrets, other than the person who has requested revocation of the confidentiality order or the other party, shall immediately notify such person of the fact that it has conducted the trial to revoke the confidentiality order. |
[This Article Newly Inserted by Act No. 11113, Dec. 2, 2011]
law view
| Article 92-9 (Notification, etc. of Request for Perusal, etc. of Litigation Records) |
|
| (1) |
Where a decision of restriction on perusal, etc. under Article 163 (1) of the Civil Procedure Act is rendered in regard to the litigation records concerning a litigation in which a confidentiality order is issued (excluding all litigations in which confidentiality orders are revoked), and when a person who was not subject to the confidentiality order in the relevant litigation has undergone the procedures to request perusal, etc. of the portions containing secrets for the sake of the party eligible to peruse the records, the court administrative officer, junior court administrative officer, chief court clerk or senior court clerk (hereinafter referred to as "junior court administrative officer, etc." in this Article) shall notify the party who has requested the restriction of perusal, etc. pursuant to Article 163 (1) of the Civil Procedure Act (excluding a person who has requested such perusal, etc.; hereinafter the same shall apply in paragraph (3)) of the fact that the request for the perusal, etc. has been made immediately after the party's request. |
| (2) |
In the case of paragraph (1), the junior court administrative officer, etc. shall not allow the person who has undergone the procedures for such request to peruse, etc. the portions containing secrets under paragraph (1) until two weeks pass from the date on which the request under paragraph (1) is made. In this case where the request for the confidentiality order against the person who has undergone the procedures for such request is made within the said period, the person who has undergone the procedures for such request shall not be allowed to peruse, etc. the portions containing secrets under paragraph (1) until the time the trial on such request becomes final and conclusive. |
| (3) |
With regard to allowing the person who has requested for perusal, etc. under paragraph (1) to peruse, etc. the portions containing secrets under paragraph (1), paragraph (2) shall not apply where all the parties who have requested for restriction on perusal, etc. pursuant to Article 163 (1) of the Civil Procedure Act give consent thereto. |
[This Article Newly Inserted by Act No. 11113, Dec. 2, 2011]
CHAPTER X PENALTY PROVISIONS
law view
| Article 93 (Offense of Infringement) |
|
Any person who has infringed on trademark rights or an exclusive license shall be punished by imprisonment with labor for not more than seven years or by a fine not exceeding 100 million won. <Amended by Act No. 5355, Aug. 22, 1997; Act No. 6414, Feb. 3, 2001>
law view
| Article 94 (Offense of Perjury) |
|
| (1) |
Where a witness, expert witness, or interpreter, having taken an oath under this Act, makes a false statement, provides a false expert opinion, or gives a false interpretation before the Korean Intellectual Property Tribunal, such person shall be punished by imprisonment with labor for not more than five years or by a fine not exceeding ten million won. <Amended by Act No. 4895, Jan. 5, 1995; Act No. 6414, Feb. 3, 2001> |
| (2) |
If a person who committed an offense as referred to in paragraph (1), surrenders himself to justice before a decision to grant or reject trademark registration or a trial decision on the case becomes final and conclusive, the punishment may be reduced or exempted. <Amended by Act No. 6414, Feb. 3, 2001> |
law view
| Article 95 (Offense of False Indication) |
|
Any person who has violated Article 91 shall be punished by imprisonment with labor for not more than three years or by a fine not exceeding 20 million won.
law view
| Article 96 (Offense of Fraud) |
|
Any person who obtains trademark registration, registration of additional designated goods, registration for renewal of the duration of trademark rights, registration of the conversion of the goods classification, or trial decision by means of fraudulent or other unjustifiable acts, shall be punished by imprisonment with labor for not more than three years, or by a fine not exceeding 20 million won. <Amended by Act No. 6414, Feb. 3, 2001>
law view
| Article 96-2 (Offense of Violating Confidentiality Order) |
|
| (1) |
Any person who has violated a confidentiality order under Article 92-7 (1) in Korea or abroad without justifiable grounds shall be punished by imprisonment with labor for not more than five years or by a fine not exceeding 50 million won. |
| (2) |
No public action shall be instituted against an offense under paragraph (1) without accusation by a person who has requested for a confidentiality order. |
[This Article Newly Inserted by Act No. 11113, Dec. 2, 2011]
law view
| Article 97 (Joint Penalty Provisions) |
|
If the representative of a juristic person, or an agent, an employee or any other employed person of a juristic person or individual has committed an offense falling under any of Articles 93, 95 and 96 with respect to the duties of the juristic person or individual, not only shall the offender be punished, but also the juristic person shall be punished by a fine falling under any of the following subparagraphs and the individual shall be punished by a fine referred to in the relevant provisions: Provided
, That the foregoing shall not apply where the juristic person or individual has not neglected to exercise due attention and supervision for the relevant duties in order to prevent such offense:
| 1. |
In cases of Article 93: A fine not exceeding 300 million won; |
| 2. |
In cases of Article 95 or 96: A fine not exceeding 60 million won. |
[This Article Wholly Amended by Act No. 9230, Dec. 26, 2008]
law view
| Article 97-2 (Confiscation) |
|
| (1) |
A trademark, packaging, or goods that are offered for or obtained by an act of infringement of trademark rights or an exclusive license provide in Article 93 (hereinafter referred to as "infringed goods" in this paragraph), and machinery or material that are offered to be used mainly for the production of such infringed goods shall be confiscated. <Amended by Act No. 10811, Jun. 30, 2011> |
| (2) |
Notwithstanding paragraph (1), the goods which may be easily detached from their trademarks or packaging and which does not effect the function and feature of those goods may not be confiscated. |
[This Article Newly Inserted by Act No. 5355, Aug. 22, 1997]
law view
| Article 98 (Administrative Fines) |
|
| (1) |
Any person who falls under any of the following subparagraphs, shall be punished by an administrative fine not exceeding five hundred thousand won: <Amended by Act No. 4895, Jan. 5, 1995; Act No. 6626, Jan. 26, 2002; Act No. 8190, Jan. 3, 2007> |
| 2. |
A person who is ordered to produce or present documents or other things in relation to the taking or preserving of evidence by the Korean Intellectual Property Tribunal and fails to comply with the order without justifiable grounds; |
| 3. |
A person who is served with a subpoena from the Korean Intellectual Property Tribunal to appear as a witness, expert witness, or interpreter but fails to comply with the subpoena without justifiable grounds or refuses to take an oath or make a statement, testimony, expert opinion, or interpretation. |
| (2) |
Administrative fines under paragraph (1) shall be imposed and collected by the Commissioner of the Korean Intellectual Property, as prescribed by Presidential Decree. |
| (3) |
through (5) Deleted. <by Act No. 9678, May 21, 2009> |
ADDENDA
Article 1 (Enforcement Date)
This Act shall enter into force on September 1, 1990.
Article 2 (General Transitional Measures)
Except as provided otherwise for in Articles 3 through 8 of the Addenda, this Act shall be applicable even to matters taken place before this Act enters into force: Provided, That the effect taken under the previous provisions shall not be affected.
Article 3 (Transitional Measures concerning Dismissal of Amendment)
Any amendment made before this Act enters into force shall be governed by the previous provisions.
Article 4 (Transitional Measures concerning Application, etc. for Trademark Registration)
The examination as to applications for trademark registration, registration for renewal of the duration of trademark rights and the registration of additional designated goods, and the appellate trial on the rejection ruling, made before this Act enters into force shall be governed by the previous provisions.
Article 5 (Transitional Measures concerning Effect of Registration for Renewal of Duration of Trademark Rights)
Where a trademark is registered pursuant to the previous provisions before this Act enters into force, and the renewal of the duration of trademark rights is registered under this Act, the registered trademark shall be deemed registered under this Act.
Article 6 (Transitional Measures concerning Effect of Licenses)
The effect of licenses registered pursuant to the previous provisions before this Act enters into force shall be governed by the previous provisions.
Article 7 (Transitional Measures concerning Trial, etc. on Registered Trademark)
| (1) |
Any trial, appellate trial, retrial and lawsuit on an invalidation trial of a trademark registered by applications for trademark registration, renewal registration of the duration of trademark rights and the registration of additional designated goods and on a trial to confirm the scope of right, which is made before this Act enters into force, shall be governed by the previous provisions: Provided, That the foregoing shall not apply in cases of the request as prescribed in the latter part of main sentence of Article 71 (1) and the latter part of main sentence of Article 72 (1). |
| (2) |
Any trial, appellate trial, retrial and lawsuit on a trial for revocation of trademark registration requested before this Act enters into force shall be governed by the previous provisions. |
| (3) |
Any trial, appellate trial, retrial and lawsuit on a trial for revocation of the license registration filed pursuant to the previous provisions before this Act enters into force shall be governed by the previous provisions: Provided, That the foregoing shall not apply in cases of the request as prescribed in Article 74 (3). |
Article 8 (Transitional Measures concerning Procedures and Expenses of Trial, Compensation for Damages, etc.)
The procedures, expenses, compensation for damages, etc. as to any trial, appellate trial, retrial and lawsuit requested before this Act enters into force shall be governed by the previous provisions.
ADDENDA <Act No. 4541, Mar. 6, 1993>
Article 1 (Enforcement Date)
This Act shall enter into force on the date of its promulgation. (Proviso Omitted.)
Articles 2 through 5 Omitted.
ADDENDA <Act No. 4597, Dec. 10, 1993>
| (1) |
(Enforcement Date) This Act shall enter into force on January 1, 1994. |
| (2) |
(Transitional Measures concerning Application for Trademark Registration, etc.) Any appellate trial on the examination and rejection ruling on an application for trademark registration, renewal registration of the duration of trademark rights, or the registration of additional designated goods, made before this Act enters into force, shall be governed by the previous provisions. |
| (3) |
(Transitional Measures concerning Return Period of Trademark Registration Fees, etc.) The return of any trademark registration fee or official fee erroneously paid before this Act enters into force, shall be governed by the previous provisions. |
| (4) |
(Transitional Measures concerning Trial, etc. on Registered Trademark) Any trial, appellate trial, retrial or litigation on any trademark registered by application for trademark registration, renewal registration of the duration of trademark rights, or the registration of additional designated goods, made before this Act enters into force, shall be governed by the previous provisions. |
ADDENDA <Act No. 4895, Jan. 5, 1995>
Article 1 (Enforcement Date)
This Act shall enter into force on March 1, 1998.
Article 2 (Transitional Measures concerning Cases Pending)
| (1) |
Any case for which a request for a trial has been made or a case pending for which a request for appellate trial against a ruling of rejection or a decision to dismiss an amendment has been made before this Act enters into force shall be deemed to have made a request against a trial with the Korean Intellectual Property Tribunal and to have been pending therein. |
| (2) |
Any case for which a request for appellate trial against trial decision has been made or a case pending for which a request for immediate appeal against a decision to dismiss a written request for trial has been made before this Act enters into force shall be deemed to have been brought before the Patent Court under this Act and to have been pending therein. |
Article 3 (Transitional Measures concerning Cases, etc. against which Dissatisfaction may be Brought)
| (1) |
Any litigation Action may be brought against a case on which a trial decision of a trial, a decision to dismiss a request for a trial, a ruling of rejection, or a decision to dismiss an amendment by an examiner as at the time this Act enters into force, and against which a dissatisfaction has not brought with the Korean Intellectual Property Tribunal under the previous provisions, within 30 days from date this Act enters into force, a litigation an action as referred to in Article 186 (1) of the Patent Act which is applied mutatis mutandis under Article 86 (2) may be brought against a trial and a decision of the trial and a decision to dismiss a request for a trial, and a trial as referred to in Article 70-2 or 70-3 may be requested against a ruling of rejection, or a decision to dismiss an amendment by an examiner unless any period for dissatisfaction has expired under the previous provisions as at the time this Act enters into force: Provided, That the foregoing shall not apply when any period for dissatisfaction has expired under the previous provisions as at the time this Act enters into force. |
| (2) |
Any dissatisfaction may be brought, within 30 days from the date this Act enters into force, against a case on which a trial decision of an appellate trial, a decision to dismiss a request for an appellate trial, a decision to dismiss an amendment by an appellate administrative trademark judge as at the time this Act enters into force has been served, with the Supreme Court: Provided, That the foregoing shall not apply where any period for dissatisfaction has expired under the previous provisions as at the time this Act enters into force. |
| (3) |
Any case against which a dissatisfaction has been brought with the Supreme Court and which is pending therein before this Act enters into force and any case against which a dissatisfaction has been brought pursuant to paragraph (2) shall be deemed to have been pending or to have been brought with the Supreme Court by this Act. |
Article 4 (Transitional Measures concerning Cases of Retrial)
The provisions of Articles 2 and 3 of the Addenda shall apply mutatis mutandis to any case of retrial pending.
Article 5 (Transfer, etc. of Documents)
| (1) |
The Commissioner of the Korean Intellectual Property Office shall transfer documents on any case which is pending as referred to in Article 2 (1) of the Addenda (including those applied mutatis mutandis under Article 4 of the Addenda) without delay to the President of the Korean Intellectual Patent Tribunal. |
| (2) |
The Commissioner of the Korean Intellectual Property Office shall transfer documents on any case which is pending as referred to in Article 2 (2) of the Addenda (including those applied mutatis mutandis under Article 4 of the Addenda) without delay to the President of the Intellectual Patent Court. In such cases, matters necessary for the transfer etc. of documents shall be determined by the Supreme Court Regulations. |
ADDENDUM <Act No. 5083, Dec. 29, 1995>
This Act shall enter into force on January 1, 1996.
ADDENDA <Act No. 5329, Apr. 10, 1997>
Article 1 (Enforcement Date)
This Act shall enter into force on July 1, 1997. (Proviso Omitted.)
Articles 2 through 5 Omitted.
ADDENDA <Act No. 5355, Aug. 22, 1997>
Article 1 (Enforcement Date)
This Act shall enter into force on March 1, 1998.
Article 2 (Transitional Measures concerning Application for Trademark Registration, etc.)
The previous provisions shall apply to the application for trademark registration, application for the registration for renewal of the duration of trademark rights, and examination of and trial on rejection decisions on the application for the registration of additional designated goods before this Act enters into force.
Article 3 (Transitional Measures concerning Trial on Registered Trademark, etc.)
The previous provisions (excluding Article 73 (1) 1) shall apply to trials, appeals, and litigations in respect of registered trademarks by the application for trademark registration, application for the registration for renewal of the duration of trademark rights, and application for the registration of additional designated goods before this Act enters into force.
Article 4 (Transitional Measures concerning Unified Trademark)
| (1) |
An application for unified trademark registration or trademark rights in respect of unified trademarks before this Act enters into force shall be deemed an application for trademark registration or trademark rights under this Act. |
| (2) |
Any trial for invalidation or revocation on grounds of contravention of the previous provisions of Article 11 (1) or (3), or 54 (2) pending as at the time this Act enters into force shall be governed by the previous provisions. |
Article 5 (Transitional Measures concerning Trial for Revocation of Trademark Registration)
Notwithstanding the amended provisions of Article 73 (4), the previous provisions shall apply to trial for revocation initiated by Article 73 (1) 3 by three years from the date this Act enters into force.
Article 6 (Transitional Measures concerning Three-Dimensional Trademark)
| (1) |
Where a person had submitted goods with three-dimensional trademark for an exhibition under Article 21 (1) before this Act enters into force, the enforcement date of this Act shall be deemed the submission date of such goods for an exhibition when he/she makes an application for registration of the three-dimensional trademark concerned under the amended provisions of Article 2. |
| (2) |
Where a person had made an application for registration of three dimensional trademark in one of the party countries to the treaties under Article 20 before this Act enters into force, the enforcement date of this Act shall be deemed the application date of trademark registration in one of the party countries to the treaty when he/she makes an application for registration of the three dimensional trademark concerned under the amended provisions of Article 2. |
ADDENDA <Act No. 5576, Sep. 23, 1998>
Article 1 (Enforcement Date)
This Act shall enter into force on January 1, 1999. (Proviso Omitted.)
Articles 2 through 5 Omitted.
ADDENDA <Act No. 6414, Feb. 3, 2001>
| (1) |
(Enforcement Date) This Act shall enter into force on July 1, 2001: Provided, That the amended provisions of Article 38 shall enter into force on the date of its promulgation, and the part pertaining to international applications among the amended provisions of Article 5 and the amended provisions of Article 86-2 through 86-42 shall enter into the force on the date on which the Protocol becomes effective in the Republic of Korea. |
| (2) |
(Applicability to Right to Demand Compensation for Loss) The amended provisions of Article 24-2 shall apply to an application for trademark registration or to an application for the registration of additional designated goods, which is filed first after July 1, 2001. |
| (3) |
(Transitional Measures concerning Examination, etc. on Application, etc. for Trademark Registration) The previous provisions shall apply to an examination of an application for trademark registration, an application for the registration for renewal of the duration of trademark rights, an application for the registration of additional designated goods, a trial against a ruling of rejection, and retrial and/or litigation initiated before this Act enters into force. |
| (4) |
(Transitional Measures concerning Trial, etc. on Registered Trademark) The previous provisions shall apply to a trial, retrial, and litigation pertaining to an application for trademark registration, an application for the registration for renewal of the duration of trademark rights, or an application for the registration of additional designated goods filed before this Act enters into force: Provided, That the amended provisions of Article 3 of the Addenda of the Trademark Act, amended by Act No. 5355, shall apply to a request for a trial, trial, retrial and litigation for revocation of trademark registration under Article 73 (1) 1 after July 1, 2001. |
ADDENDA <Act No. 6626, Jan. 26, 2002>
Article 1 (Enforcement Date)
This Act shall enter into force on July 1, 2002.
Articles 2 through 7 Omitted.
ADDENDUM <Act No. 6765, Dec. 11, 2002>
This Act shall enter into force five months after the date of its promulgation.
ADDENDA <Act No. 7289, Dec. 31, 2004>
Article 1 (Enforcement Date)
This Act shall enter into force six months after the date of its promulgation.
Articles 2 through 5 Omitted.
ADDENDUM <Act No. 7290, Dec. 31, 2004>
This Act shall enter into force six months after the date of its promulgation.
ADDENDA <Act No. 8190, Jan. 3, 2007>
Article 1 (Enforcement Date)
This Act shall enter into force on the date of its promulgation: Provided
, That the amended provisions of Articles 2 (1) 1, 5, 7 (1) through (4), 8 (5) and (6), 9 (2), 19, 22-2, 22-3, 24 (3) and 25, and the latter part of Article 33, Articles 38, 46-4 (1) 5, 56 (1) 2 and 3, 57-3, and 64 (2), the proviso of Articles 64-2 (2), Articles 77, 86-16 (2), 86-17 (4) and (5), 86-24 through 86-26, and 91-2 (4) and the proviso of Article 92 shall enter into force on July 1, 2007.
Article 2 (Applicability concerning Applications for Trademark Registration and Requirements for Trademark Registration)
| (1) |
The amended provisions of Articles 2 (1) 1, 7 (1) 13, 9 (2), 86-16 (2) and 91-2 (4) shall apply, starting with the registration of the trademark for which an application is first filed and the registration of additional designated goods for which an application is first filed on or after July 1, 2007. |
| (2) |
The amended provisions of Article 7 (4) 2 shall apply, starting with the trademark registration for which an application is filed by the justifiable applicant or the additional designated goods for which an application is filed for their registration after an invalid trial decision becomes final and conclusive on the grounds of the violation of Article 7 (1) 11 after July 1, 2007. |
Article 3 (Applicability concerning Earlier Applications)
The amended provisions of Article 8 (5) and (6) shall apply, starting with cases where a trial to revoke trademark registration is requested on the grounds that the trademark registration falls under Article 73 (1) 3 on or after July 1, 2007.
Article 4 (Applicability concerning Application Publication and Objection Raised to Trademark Registration)
The amended provisions of Articles 24 (3)and 25 (1) and (2) shall apply, starting with the application filed for the trademark registration, which is published, on or after July 1, 2007.
Article 5 (Applicability concerning Refund of Trademark Registration Fees, etc.)
The amended provisions of Article 38 shall apply, starting with the application that is first filed for the trademark registration on or after July 1, 2007.
Article 6 (Applicability concerning Grounds for Rejecting Application Filed for Registering Conversion of Goods Classification)
The amended provisions of Article 46-4 (1) 5 shall apply, starting with the application that is first filed for registering the classification of goods on or after July 1, 2007.
Article 7 (Applicability concerning Right to Continuously Use Trademark On Grounds of Prior Use)
The amended provisions of Article 57-3 shall apply, starting to cases where any prior user meets the requirements provided for in such amended provisions for the trademark that is registered by any other person who first files an application for registering such trademark on or after July 1, 2007.
Article 8 (Applicability concerning Extinguishment of Trademark in Cases of Lack of Registration of Conversion of Goods Classification)
The amended provisions of the proviso to Article 64-2 (2) shall apply, starting with cases where the conversion of the goods classification is first registered on or after July 1, 2007.
Article 9 (Applicability concerning Remunerations of Patent Attorneys)
The amended provisions of Article 86 (2) shall apply, starting with any patent attorney who legally represents any lawsuit after this Act enters into force.
Article 10 (Special Cases concerning Priority Claim, etc. Filed according to Treaty when Application is Filed for Registering Trademark Featured by Color, Hologram or Motion)
In the application of the provisions of Articles 20 and 21, where the application filed for the trademark that is featured by any color or the combination of any colors, the trademark that is featured by hologram or the trademark that is featured by motion falls under any of the following subparagraphs, the application filed for such trademark shall be deemed filed on July 1, 2007, notwithstanding the provisions of Articles 20 and 21:
| 1. |
Where the application is filed for registering the trademark in the Republic of Korea pursuant to Article 20 (2) on or after July 1, 2007 after filing the application for registering the trademark in the country concerned under Article 20 before July 1, 2007; |
| 2. |
Where the application is filed for registering the trademark of the goods pursuant to Article 21 (1) on or after July 1, 2007 after displaying such goods in an exhibition falling under any subparagraph of Article 21 (1) before July 1, 2007. |
Article 11 (Transitional Measures concerning Applications for Trademark Registration and Requirements for Trademark Registration)
| (1) |
Examinations on applications for trademark registration or applications for the registration of additional designated goods, and trials, retrial, or litigation with regard to decisions to reject them, made before July 1, 2007, shall be governed by the previous provisions, notwithstanding the amended provisions of Article 7 (1) 12 and 12-2. |
| (2) |
Trials, retrial, or litigation on the trademarks registered or to be registered on the applications filed therefor before July 1, 2007 shall be governed by the previous provisions, notwithstanding the amended provisions of Article 7 (1) 12 and 12-2. |
ADDENDA <Act No. 8458, May 17, 2007>
| (1) |
(Enforcement Date) This Act shall enter into force six months after the date of its promulgation. |
| (2) |
(Applicability to Refund of Registration Fee, etc.) The amended provisions of Article 38 (3) shall also apply to the trademark registration fees and official fees of which the deadline for claiming the refund pursuant to the former provisions has not lapsed as at the time this Act enters into force. |
ADDENDA <Act No. 8852, Feb. 29, 2008>
Article 1 (Enforcement Date)
This Act shall enter into force on the date of its promulgation. (Proviso Omitted.)
Articles 2 through 7 Omitted.
ADDENDUM <Act No. 9230, Dec. 26, 2008>
This Act shall enter into force on the date of its promulgation.
ADDENDA <Act No. 9678, May 21, 2009>
| (1) |
(Enforcement Date) This Act shall enter into force on July 1, 2009. |
| (2) |
(Applicability to Payment of Remainder of Trademark Registration Fees) The amended provisions of Article 36-2 (3) shall apply to payment of the remainder of a trademark registration fee on or after the date this Act enters into force. |
ADDENDA <Act No. 9987, Jan. 27, 2010>
Article 1 (Enforcement Date)
This Act shall enter into force six months after the date of its promulgation.
Article 2 (Applicability to Requirements for Trademark Registration)
The amended provisions of Article 7 shall start applying to the first application for trademark registration or the first additional application for designated goods filed after this Act enters into force.
Article 3 (Applicability to Amendment Ex Officio, etc.)
The amended provisions of Article 24-3 shall start applying to the first decision on public announcement of an application after this Act enters into force.
Article 4 (Applicability to Trademark Registration Fees)
The amended provisions of Article 34 shall start applying to the first application for trademark registration or for renewal registration of the duration of trademark rights filed after this Act enters into force.
Article 5 (Applicability to Refund of Trademark Registration Fees, etc.)
The amended provisions of Article 38 shall also apply to an application for trademark registration under examination as at the time this Act enters into force.
Article 6 (General Transitional Measures)
An application for trademark registration, for additional application for designated goods and for renewal registration of the duration of trademark rights filed pursuant to the former provisions as at the time this Act enters into force shall be governed by the former provisions.
ADDENDA <Act No. 10012, Feb. 4, 2010>
Article 1 (Enforcement Date)
This Act shall enter into force three month after the date of its promulgation. (Proviso Omitted.)
Articles 2 through 6 Omitted.
ADDENDUM <Act No. 10358, Jun. 8, 2010>
This Act shall enter into force on the date of its promulgation.
ADDENDA <Act No. 10811, Jun. 30, 2011>
Article 1 (Enforcement Date)
This Act shall enter into force six months after the date of its promulgation: Provided
, That the amended provisions of Article 7 (1) 7-2, 8-2, 9-2, 16 and 17, Article 7 (5), Article 8 (7) 1 and (8) 1, Article 51 (2) 2 and 3, Article 66 (2) 1, 2 and 4, and Article 97-2 (1) shall enter into force on the date the Free Trade Agreement between the Republic of Korea, of the OnePart, and the European Union and its Member States, of the Other Parttakes effect.
Article 2 (Applicability to Requirements for Trademark Registration)
The amended provisions of Article 7 (1) 7-2, 8-2, 9-2, 16 and 17 and Article 7 (5) shall apply with regard to applications for trademark registration or applications for the registration of additional designated goods on or after the date such amended provisions enter into force.
Article 3 (Applicability to Earlier Applications)
The amended provisions of Article 8 (7) 1 and (8) 1 shall apply with regard to applications for trademark registration or applications for the registration of additional designated goods on or after the date such amended provisions enter into force.
Article 4 (Applicability to Confiscation)
The amended provisions of Article 97-2 (1) shall apply with regard to acts of infringement on or after the date such amended provisions enter into force.
Article 5 (General Transitional Measures)
Applications for trademark registration and registered trademarks filed pursuant to the former provisions as at the time this Act enters into force shall be governed by the former provisions.
ADDENDA <Act No. 10885, Jul. 21, 2011>
Article 1 (Enforcement Date)
This Act shall enter into one year after the date of its promulgation.
Articles 2 through 20 Omitted.
ADDENDA <Act No. 11113, Dec. 2, 2011>
Article 1 (Enforcement Date)
This Act shall enter into force on the date the Free Trade Agreement between the Republic of Korea and the United States of America (hereinafter referred to as the Agreement) and Exchange of Letters related to the Agreement take effect.
Article 2 (Applicability to Applications, Requirements, etc. for Trademark Registration)
The amended provisions of Articles 2, 3-2, 3-3, 7, 9, 9-2 (1), 12 (10), 17-2 and 19, 23 (1) 4 and 6 through 8, Articles 51, 52, 54, 55, 71 (1) 1 (limited to parts regarding the provisions of Article 23 (1) 4 through 8), 73, 76, 86-4, 86-16 and 86-17 shall apply to applications for trademark registration or applications for the registration of additional designated goods on or after the date this Act enters into force.
Article 3 (Applicability to Effect, etc. of Registration of Exclusive License)
The amended provisions of Articles 56 and 58 shall apply to exclusive licenses, the establishment, transfer, alteration, extinction or disposition of which is restricted on or after the date this Act enters into force.
Article 4 (Applicability to Right to Request Prohibition of Infringement on Rights, Claim for Statutory Damages, Confidentiality Order, etc.)
The amended provisions of Articles 65, 67-2, 92-7 through 92-9 shall apply to an action brought as to infringement on trademark rights or an exclusive license on or after the date this Act enters into force.
Article 5 (Applicability to Amendment to Written Requests for Trials, etc.)
The amended provisions of Articles 77-2 (2) and 79 shall apply to written requests for trials on or after the date this Act enters into force.
Article 6 (Special Cases concerning Argument on Priority, etc. based on Treaty at Time of Application for Trademark Registration for Trademarks Consisting of Sound, Odor, etc. and Application for Certification Mark Registration)
In applying Articles 20 and 21, if any application for trademark registration consisting of sound, odor, etc. under the amended provisions of Article 2 (1) 1 (c) or an application for certification mark registration under the amended provisions of Article 2 (1) 4 falls under any of the following cases, such application for trademark registration or application for certification mark registration shall be deemed to have been filed on the date this Act enters into force, notwithstanding Articles 20 and 21:
| 1. |
Where application for trademark registration or application for certification mark registration is made to the State party pursuant to Article 20 before this Act enters into force, and then application for trademark registration or application for certification mark registration is made to the Republic of Korea pursuant to Article 20 (2) after this Act enters into force; |
| 2. |
Where goods are submitted to an exhibition falling under any subparagraph of Article 21 (1) before this Act enters into force, and then application for trademark registration or application for certification mark registration for the trademark used for such submitted goods is made pursuant to the same Article after this Act enters into force. |
Article 7 (General Transitional Measures)
Applications for trademark registration made in accordance with the former provisions as at the time this Act enters into force shall be governed by the former provisions.
ADDENDA <Act No. 11458, Jun. 1, 2012>
Article 1 (Enforcement Date)
This Act shall enter into force one year after the date of its promulgation.
Articles 2 through 6 Omitted.
ADDENDA <Act No. 11690, Mar. 23, 2013>
Article 1 (Enforcement Date)
| (1) |
This Act shall enter into force on the date of its promulgation. |
Articles 2 through 7 Omitted.
ADDENDA <Act No. 11747, Apr. 5, 2013>
Article 1 (Enforcement Date)
This Act shall enter into force six months after the date of its promulgation: Provided
, That the amended provisions of Article 5 (1) and (2) shall enter into force on July 1, 2013.
Article 2 (Applicability to Revocation, etc. of Designation of Specialized Agencies)
The amended provisions of Article 22-3 (2) shall apply to a specialized agency to which a prior notice of the disposition of suspension of business is given after this Act enters into force.
Article 3 (General Transitional Measures)
The former provisions shall apply to the application for trademark registration filed before this Act enters into force.
Article 4 (Transitional Measures concerning Incompetents, etc.)
Persons under adult guardianship and persons under limited guardianship under the amended provisions of Article 5 (1) shall be deemed to include persons whose declaration of incompetence or quasi-incompetence remains effective pursuant to Article 2 of Addenda to the partly amended Civil Act, Act No. 10429.
Article 5 (Transitional Measures concerning Requests for Trial for Revocation of Unused Registered Trademarks)
Notwithstanding the amended provisions of Article 8, the former provisions shall apply to persons who request a trial for revocation of trademark registration on the ground of Article 73 (1) 3 before this Act enters into force.
ADDENDA <Act No. 11962, Jul. 30, 2013>
Article 1 (Enforcement Date)
This Act shall enter into force six months after the date of its promulgation. (Proviso Omitted.)
Articles 2 through 10 Omitted.
