Step 1: Apply Exactly as You Intend to Use
If your trademark is distinctive and no similar pre-registered trademarks exist, it’s time to submit your trademark application. The application process is referred to as “출원” (pronounced “chul-won”), meaning “submission of a formal request.”
The act of filling out and submitting the application itself is straightforward. You can visit the KIPO (Korean Intellectual Property Office) portal at patent.go.kr, download the required software, and file your application online or via mobile. However, the real challenge is determining how to apply effectively.
How to Structure the Trademark Application
You need to decide on the structure of the trademark based on the results of your preliminary trademark search. The goal is to maximize the chances of registration while ensuring that the trademark can be used without issues afterward.
For example, if you plan to use both Korean and English versions of the brand name, you must decide whether to:
- Submit two separate applications (one for each version), or
- Combine both into a single application.
If the Korean version is just a transliteration (e.g., “프라다” for “Prada”), it is typically acceptable to combine them into one application, such as “Prada 프라다”.
However, if the Korean and English names are unrelated (e.g., “freestyle” and “후리지아”), and you plan to use them independently, it is better to file separate applications for each version. This minimizes disputes related to the registered trademark’s usage.
For international trademark applications, it’s generally advisable to file the domestic application in English only, especially if you intend to use the trademark in foreign markets. This is because international registrations must match the domestic registration exactly.
If combining Korean and English versions affects the chances of registration, you might consider applying for each version separately. Conversely, if having multiple possible pronunciations of the English name presents a problem, adding a Korean transliteration could clarify pronunciation and improve registration chances.
Should You Include a Logo Design?
You are not required to include a logo when filing your trademark application. Filing with a standard word mark offers broader protection, allowing you to claim rights regardless of font or design variations. This is also advantageous for international applications.
However, if you already have a logo designed, you need to decide whether to file separate applications for the logo and word mark or combine them. The best approach is to apply exactly as you intend to use the trademark.
If the logo is likely to change in the future or will not always be used together with the word mark, separate applications may be preferable. On the other hand, if your trademark lacks distinctiveness, you should combine it with a design element to strengthen its registrability.
Step 2: Specify Products and Services Clearly
You must specify the goods or services associated with the trademark in the application. Since trademarks function as a territorial claim, you must clearly define which goods or services you want to protect under the trademark.
You can reference KIPO’s published list of goods and services for guidance. However, if your product or service is new and not listed, you have two options:
- Choose a similar item from KIPO’s list and use it in your application.
- Describe the product or service clearly by specifying its function and materials (e.g., “dietary supplements with aloe as the main ingredient” or “RFID-based logistics management devices”).
Choosing an item from the official list can reduce fees and expedite registration, as KIPO offers a fee discount for clearly specified goods.
Step 3: Apply Before Public Disclosure
The sooner you apply for trademark registration, the better. The trademark system operates on a first-to-file principle, meaning priority is given to whoever files first. Once your brand name is finalized, you should file immediately.
Delaying your application increases the risk of third-party filings. In some cases, companies have issued press releases before applying for a trademark, only to have competitors quickly file for the same or a similar trademark.
For example, a company launching a co-working space service released a press statement before filing their trademark application. In the meantime, a third party filed a copycat application, resulting in legal complications. Although the company managed to negotiate with the third party and have the application withdrawn, they had to pay compensation. If the third party had refused to withdraw, the company would have had no recourse due to the first-to-file rule. Therefore, always apply before disclosing your brand to the public.