Understanding Trademark Protection and Non-Use Cancellation Trials
Trademarks do not protect inventions; instead, they operate on a registration-based system. In other words, trademark law protects marks once they are registered, regardless of the reason they were created.
However, this registration-focused system has led to issues where trademarks are preemptively registered without being used, effectively blocking other registrations.
The Problem of Trademark Hoarding
In some cases, companies have registered as many as 20,000 trademarks in Korea alone. This raises concerns that certain enterprises are hoarding brands preemptively to keep competitors out of the market.
To address this issue, many countries, including Korea, have implemented a system that allows for the cancellation of unused trademarks. Under this system, trademarks that have not been used for three to five years may be canceled through a non-use cancellation trial.
When to Consider a Cancellation Trial
If your trademark application is rejected because it is deemed too similar to an already registered trademark, the most effective solution is to investigate whether the registered trademark is genuinely in use.
If it turns out that the trademark is not being used, you can file a cancellation trial to cancel the registration.
Trademark holders must then provide evidence of legitimate trademark use. Since unused trademarks often lack any credible proof of use, these cases typically have a high chance of success.
Misconceptions About Cancellation Trials
Many people hesitate to pursue a cancellation trial due to the negative perception of the word “trial.” This is particularly true when large corporations initiate such actions, leading smaller businesses to express concerns such as, “We don’t want to get involved in a costly legal fight.”
However, these concerns are often misplaced. In countries that follow a registration-based trademark system, cancellation trials are a necessary and legitimate tool to address non-use issues.
The Reality of Proving Trademark Use
While some believe that trademark holders can easily fabricate evidence of use through advertisements or modified data, this is not the case. Proving legitimate and continuous use of a trademark is more challenging than expected.
Korean tribunals apply strict standards and will not accept evidence that appears to have been created solely to avoid cancellation. Even large conglomerates may struggle to provide adequate evidence if their trademarks are not genuinely in use.
Low-Risk Litigation
Unlike other legal disputes, filing a cancellation trial for non-use typically does not result in financial loss or damages. These cases focus solely on the status of the trademark and whether it should remain registered.
While it is wise to avoid unnecessary litigation, you should not hesitate to file a trial when necessary to protect your rights.
How Sarang IP Law Firm Can Help
Sarang IP Law Firm advises overseas counsel and their clients on non-use cancellation actions in Korea, from assessing the evidence of use to weighing the strategic options in each case.
We are glad to discuss non-use cancellation strategy with foreign counsel handling Korean trademark matters.
