Registration through Examination
Some people mistakenly believe that filing a trademark application is similar to registering a business, assuming that all applications automatically result in registration. This is not true.
Trademark applications undergo strict examination by the Korean Intellectual Property Office (KIPO) according to trademark law. On average, about 75% of applications are approved during the KIPO stage, and approximately 80% are ultimately registered when cases are included through the Supreme Court. This means that 20% of applications are rejected.
The requirements for trademark registration are stricter than expected. To be registered, a trademark must not fall under any of the refusal grounds specified in trademark law.
When a trademark application is submitted to KIPO, it is assigned to an examiner in the trademark examination department. The examiner checks for:
- The presence of distinctiveness,
- Any conflict with pre-registered trademarks, and
- Other potential refusal grounds under trademark law.
If no refusal grounds are found, the application proceeds to the publication stage. The application is publicly announced, and after a two-month period for opposition, a registration decision is issued. About three weeks later, upon payment of the registration fee, the trademark is officially registered, a certificate is issued, and a trademark register is created.
What If There Are Grounds for Refusal?
If the examiner finds refusal grounds, they will issue a document called a Notice of Grounds for Opinion Submission, detailing the reasons for refusal. The applicant is given an opportunity to respond and submit opinions or arguments.
If the examiner still finds that the refusal grounds have not been resolved, they will issue a final decision to reject the trademark application.
Applicants have the right to appeal this decision. They can challenge the refusal through three additional stages:
- The Korean Intellectual Property Trial and Appeal Board (KIPTAB)
- The Patent Court
- The Supreme Court
Thus, applicants have up to four opportunities to seek a favorable decision.
Common Grounds for Refusal
The main reasons for trademark registration refusal can be categorized into three areas:
- Lack of distinctiveness
- Similarity to pre-registered trademarks
- Similarity to well-known or famous trademarks owned by others
Most refusals involve the first two reasons. Since assessing distinctiveness and similarity is often subjective and intuitive, it can be difficult to predict the likelihood of successful registration. Therefore, thorough pre-application research and a proactive registration strategy are essential.
Timeframe for Registration
The period from trademark application to publication typically takes about 1.5 years. This can be too long for businesses that need to start operations quickly.
To address this, KIPO offers an expedited examination system for applicants who want faster processing, even if there is a risk of the trademark being invalidated later. By paying an additional fee and submitting documentation of usage, applicants can receive expedited examination results within a set timeframe.
In cases of expedited examination, results are usually provided within three months. In rare cases, applications have been published just one week after submission, with the expedited examination decision issued within three days.
Expedited examination is particularly beneficial for those planning to file international trademark applications under the Madrid Protocol, as having a domestic registration in place can streamline the process.
Trademark Renewal
Once registered, trademark rights can be maintained indefinitely through renewal. The trademark can be renewed every ten years from the date of registration. To renew, applicants simply need to submit a renewal application and pay the renewal fee, ensuring the continued protection of their trademark rights.