Once trademark registration is completed, the holder gains a broad range of rights. Since trademarks are relatively intuitive and easy to understand, enforcing trademark rights tends to be simpler and more effective compared to other intellectual property rights. So, what specific rights does a trademark holder have?
1. Exclusive Monopoly Rights
The fundamental purpose of trademark registration is to grant exclusive rights. A trademark holder can prohibit others from using trademarks that are identical or similar to their registered mark. This protection applies to both identical and similar goods/services.
The enforcement of these exclusive rights can be done through various methods such as phone calls, fax, email, or by sending a formal warning letter via certified mail. If the unauthorized use continues, the trademark holder can escalate the matter through criminal charges or civil lawsuits for damages.
2. Filing Criminal Complaints
Filing a criminal complaint is one of the easiest procedures. Simply visit your local police station with your registration certificate and other evidence of infringement, such as proof of use.
Once the complaint is submitted, the police will contact both the complainant and the alleged infringer within a few months. After investigation, the police may either forward the case to the prosecution with a recommendation to indict or dismiss it with a non-indictment opinion.
If the prosecutor decides to proceed with an indictment, the case will move forward in a manner similar to other criminal cases, involving investigations and court hearings.
While criminal complaints are relatively easy to file and cost-effective, you should note that even when trademark infringement appears evident, cases may be dismissed if the authorities believe that there was no intent to infringe.
Nevertheless, the mere act of filing a complaint can pressure infringers since most people fear legal disputes, court summons, and police investigations. Even if the infringer disputes the claim, they often prefer to reach a settlement rather than endure the hassle of litigation.
In cases where infringement is proven, criminal penalties can include up to 7 years of imprisonment or fines of up to 100 million KRW. However, in practice, habitual counterfeiters may face these maximum penalties, while others usually receive fines of a few million KRW.
3. Civil Litigation: Injunctions and Damages
If the infringement causes significant harm to the trademark holder’s business, they can file for a preliminary injunction to stop the unauthorized use immediately.
In cases of trademark or patent infringement, courts handle injunctions with the same level of scrutiny as full lawsuits. If the court later rules that there was no infringement, the plaintiff may be held liable for damages incurred by the defendant due to the injunction.
After obtaining an injunction, the plaintiff must file a full lawsuit within six months, seeking prohibition of use and compensation for damages.
Under the Trademark Act, compensation can be determined by:
- The trademark holder’s actual losses,
- The infringer’s profits,
- Reasonable licensing fees,
- Court discretion, or
- Statutory damages (up to 50 million KRW).
In most cases, calculating actual damages or profits is difficult, so compensation is often based on reasonable licensing fees or court discretion. Typical damages awarded in trademark infringement cases range between 10 million and 100 million KRW.
4. Administrative Measures: Dispute Mediation and Reports to IP Police
Trademark holders can apply for mediation through the Intellectual Property Dispute Mediation Committee or report the infringement to the IP enforcement division of the Korean Intellectual Property Office (KIPO).
5. R Mark Usage
Once a trademark is registered, the holder can use the R symbol (®) to indicate that the trademark is registered. However, displaying the R symbol on an unregistered trademark is illegal and may result in criminal penalties.
In contrast, the TM symbol (for “trademark”) can be freely used as it has no legal significance.
6. Customs Registration
Trademark holders can register their trademarks with customs authorities. This allows customs officers to automatically verify goods at the border, preventing counterfeit goods from entering the country. If counterfeits are detected, customs notifies the trademark holder and may request further verification or block the shipment.
While customs officials are obligated to verify the authenticity of all imported goods, in practice, priority is given to registered trademarks, particularly for well-known brands. Therefore, registering your trademark with customs is highly recommended.
Customs trademark registration is available not only in Korea but also in most countries worldwide. In regions known for counterfeit production, such as China and Southeast Asia, registering your trademark with local customs can prevent counterfeits from being imported or transshipped through these countries.
For example, registering your trademark with Chinese customs can block counterfeit goods produced in Vietnam from entering China and help prevent their further distribution to other markets.
7. Asset Management and Transfer
Registered trademarks are classified as movable property under civil law. They can be treated as assets, sold, or used as collateral to secure loans (pledge rights). Even unused trademarks can be sold for significant amounts solely based on their registered status. Therefore, trademark holders can leverage their trademarks in various ways to create business opportunities.