After a brief hiatus we have returned to the Korea Herald to explain trademark law for those of you who may be operating small businesses.
Trademark, brand protection
What is a trademark? Simply put, it’s a mark used in trade. Something that helps the consumer identify what they are buying. Underlying the legal regime is the economic idea that easing consumer identification of suppliers and goods benefits society.
Technically, there are other marks ― marks of geographic origin (Champagne, Daegu apples) and service marks for services other than goods (accountants, airlines and other things), but all are protected under very similar legal regimes, so we will just refer to trademarks in this column.
The first issue with trademarks is what can and cannot be protected. Generic descriptions of products are not protected. So “the good old kimbap” is not a protectable name for a restaurant. But names that are less a product description (“fanciful”) are protectable, hence the apple on iPhones and stylized H on Hyundai vehicles are protectable trademarks.
The next issue is when and how to protect a trademark. Many nations have “protection upon use” doctrines, where just by using a trademark one acquires the rights to it. Korea basically does not have this. If you used a trademark before someone else registers it, you can defend yourself in court based on its use, but you cannot lodge a complaint against anyone until your trademark is registered. So registration is necessary.
Registration is done through the Korean Intellectual Property Office. For a small fee one can file an application, but you must describe the class of goods or services as well as the mark. There may be multiple marks to protect.
As in the case of Apple or Hyundai, the name and the visual logo are two separate trademarks requiring two applications. The approval process can take up to one year.
Why the delay? So that others, who may be using similar marks, have an opportunity to object. The examining officer may also notice similarities between the mark and other registered marks, or problems with the paperwork, and request revisions. Either an attorney or an intellectual property agent ― byeollisa ― can help with the paperwork for a modest fee.
After registration, your mark is protected for 10 years, and can be renewed thereafter. Transfers, licenses or changes to the trademark should be registered with the KIPO. You have the exclusive right to use your mark on goods and services. Famous marks (such as Samsung or Nike) have additional rights under the Unfair Competition Protection Act.
There is a common misperception that Korean intellectual property law is weak. It is not. After the free trade agreements with EU and the U.S. came into force, Korean IP laws were strengthened. Numerous small businesses became bankrupt for illegally using copyrighted software.
Trademarks are also strongly protected. Misuse is a crime punishable by incarceration and up to a 100 million won fine. Also the trademark holder can receive statutory damages (damages fixed by law when no damage can be proven) of up to 50 million won. That is total leverage of 150 million won, and police assistance, before proving any damages. So the small fee for registration and a search before use is worth it.
By Darren Bean and Yuna Lee
Yuna Lee is a Korean attorney at Seowoo & Minyul Law Firm in Seoul. You can read her blog at askakoreanlawyer.blogspot.com or if there is a legal issue you would like to be addressed, email askalawyer@naver.com. ― Ed.
Disclaimer:
This column is not intended as legal advice. No action should be taken or avoided based on this column, no attorney-client relationship is formed by reading this column or contacting the authors, and the authors expressly disclaim any liability for the content of this column. Those with legal problems in Korea should seek advice from an attorney.