Receiving a certified cease-and-desist letter is not the same as a legal document or lawsuit, but it does carry more weight than an email or verbal warning. When sent through a legal representative, it can feel like an official prelude to legal action, often leaving the recipient feeling upset and unsure how to proceed.
However, upon careful review, in many cases (roughly six out of ten), you can find valid reasons to argue that no infringement has occurred and resolve the matter simply by responding.
1. Verify the Trademark’s Authenticity
The first step is to confirm whether the trademark is genuinely registered.
- Visit the Korean Intellectual Property Rights Information Service (KIPRIS) at www.kipris.or.kr to check the trademark’s status by entering the trademark name, registration number, or owner’s name.
- Ensure that the sender matches the registered owner. If not, you can request proof of authorization.
If the trademark is still under application, it has not been officially registered, and therefore the sender does not yet hold enforceable rights. It’s worth consulting an expert to determine how likely the application is to be rejected, considering that trademark registration can take more than a year and a half.
2. Assess Whether the Trademark is Non-Exclusive
Even if the trademark is registered, check whether it contains non-exclusive elements, such as weak or generic terms. If the trademark primarily consists of non-distinctive components (e.g., common words with a simple logo), these parts are not protected under exclusive rights. You may be able to argue that your use of a similar term is not an infringement.
3. Check for Dissimilarity Between the Marks and Products
Trademark infringement requires both the trademarks and the products/services to be similar enough to cause consumer confusion.
- In trademark infringement cases, the scope of similarity is narrower than during the trademark registration process.
- Consider whether the registered trademark and your product belong to entirely different categories, markets, or industries. If both the trademarks and goods are dissimilar, you can argue that no infringement has occurred.
4. Determine If You Qualify for an Exemption
➀ In the Case of Trade Name Usage
If one uses their own name (a personal indicator), such as a personal name or trade name, in a customary manner, trademark rights cannot be enforced against that use. A name (personal name) is not a trademark. It’s common sense that one should be allowed to use their own name. For example, if “Gukjin’s Bungeoppang” is a registered trademark, it would make no sense if a person named Gukjin Kim—sharing the same name—were not allowed to use his own name.
A trade name is the same as a personal name. Since a trade name is merely the name of a business entity, just like a personal name is not subject to trademark rights, trade names are also generally not subject to trademark rights. Therefore, one could argue that the sign in use is a trade name, not a trademark. (This is trade name usage!)
For example, imagine a business operator who imports and sells various foreign products under the trade name “Samsung Logistics Co., Ltd.” The business has a website but uses a separate trademark for its online store, merely acting as a distributor. All the products sold are from foreign brands, and “Samsung Logistics” is just the distribution name.
In this case, if Samsung C&T were to claim trademark infringement against this operator, the operator could argue that “Samsung Logistics” is only a trade name, that the website has a separate trademark, and that all the products sold bear different brand names—thus never having used “Samsung” as a trademark. Such an argument is valid.
However, the distinction between a trade name and a trademark can be ambiguous, and trademark rights do not apply when the name is used purely as a trade name. Nevertheless, trade names often become trademarks in practice.
If the trade name is used in a plain format, without any design, color, or logo, it may not be trademark infringement. But if it is stylized, combined with a logo, printed on brochures or business cards, or used on websites or blogs, it may potentially constitute infringement.
In the above example, if the online store had a separate, distinct trademark, the operator could argue that “Samsung Logistics” is merely a trade name. However, if the store’s name was the same as the trade name, and the name was stylized, combined with a logo, and used in various advertisements, then it could potentially be trademark infringement.
Of course, whether something is used as a trade name or as a trademark is determined individually by the courts based on the specific circumstances and how it is used. There is no universal standard. Paradoxically, this is why one could attempt to argue that it was used as a trade name.
② Asserting Prior Use Rights
If a mark was already in use and somewhat known in Korea before another party filed a trademark application, or if a trade name was being used according to commercial practices without the intent of unfair competition, the mark may continue to be used even after the other party’s application is registered. This is known as prior use rights.
Although requirements such as “some degree of recognition,” “in accordance with commercial practices,” and “without unfair competitive intent” are attached, these are matters of interpretation rather than fact. Therefore, if the mark was already in use before the other party’s trademark application, it is worth asserting prior use rights.
5. Explore Legal Challenges to the Trademark
If the trademark in question has legal defects (e.g., invalid registration or lack of use), you may be able to file for invalidation or cancellation of the trademark. Cancellation is particularly effective in cases of non-use, as it can prevent damage claims.
You may also challenge the trademark if it:
- Mimics a well-known international mark,
- Lacks distinctiveness, or
- Was incorrectly registered due to similarity to other trademarks.
6. Respond Appropriately
It is advisable to respond to the cease-and-desist letter rather than ignoring it. You can reply via phone, email, fax, or any other medium. While there is no required format, it’s better to respond formally if the sender used a formal letter.
Your response should convey that you have reviewed the claims thoroughly and are taking the matter seriously. This approach can sometimes lead to a resolution without further legal proceedings.
7. If No Defense Is Available
If you determine that the trademark is valid, your use constitutes infringement, and there are no applicable exemptions, your best course of action may be to negotiate with the trademark owner.
- Change the Trademark: Offer to stop using the trademark as soon as possible.
- Request Leniency: Politely request that the owner refrain from taking further action.
- Negotiate a Settlement: In some cases, the owner may ask for a reasonable settlement fee to cover damages. It may be practical to agree to this rather than face costly litigation.
Since most people prefer to avoid lawsuits, as long as there are no significant personal conflicts, most trademark owners are satisfied with the cessation of trademark use and do not pursue further claims.