It is rare for a startup to plan for export from the beginning. However, since Korea’s domestic market is small and its industrial structure is centered around export manufacturing, overseas expansion becomes essential for companies that have established a foundation.
When entering foreign markets, trademark registration is the most powerful tool to protect a company. With a registered trademark, you can prevent counterfeit products, control distribution channels, and block unauthorized products from entering through customs. Registering your trademark with customs helps prevent the importation of counterfeit or unidentified goods at the border. It also strengthens your position in negotiations with agents and distributors.
While contracts with buyers, participation in trade fairs, and entry into department stores are important, the key legal shield that can protect your business abroad is trademark registration. Therefore, when you have an opportunity to enter a foreign market, securing your trademark should be a top priority.
Territorial Principle (Lex Loci Protectionis)
Trademark registration must be done individually in each country you plan to expand into. Even if you have registered your trademark in Korea, that does not protect its use in foreign countries.
Unlike patents and designs, which require novelty based on global disclosures, trademarks do not require novelty. For example, if a patent has been filed in Korea and a company seeks to expand to the U.S. three years later, the invention would likely no longer meet the criteria for novelty and would be ineligible for U.S. patent protection. Once disclosed globally, the invention becomes public knowledge.
However, trademarks follow a different principle. Trademarks are protected based on the principle of “first to register.” Therefore, even if a trademark is registered in Korea, another entity can register the same or a similar trademark in a foreign country, potentially preventing you from using it in that market.
Before expanding internationally, it is crucial to check for pre-existing trademark registrations in the target country and file your application accordingly.
Consider International Trademark Registration at the Naming Stage
It’s advisable to consider both domestic and international trademark registration when deciding on a brand name. You may think it’s excessive to focus on international registration early in the business planning phase when the success of your brand in the domestic market is still uncertain. However, failing to account for this early can lead to difficulties later when attempting to register your brand abroad.
Pre-existing registrations or imitation filings might hinder your ability to secure your trademark in foreign markets. Therefore, conducting a preliminary check on the availability of your trademark in key overseas markets can help mitigate risks. You don’t need to file trademark applications in all countries immediately. During the naming stage, focusing on domestic registration and conducting preliminary checks in major overseas markets is usually sufficient. For other countries, you can address potential issues if and when they arise.