In recent years, there has been a significant decline in trademark imitation filings in Korea. This change can be attributed to relaxed criteria for rejecting such applications and better-established guidelines allowing examiners to actively check for widely-used but unregistered prior trademarks.
Additionally, increased awareness of intellectual property and government initiatives encouraging registration have made trademark and patent filings as routine as obtaining a business license for many companies.
However, situations don’t always go smoothly. Early in business operations, companies may overlook trademark filings due to busy schedules. In larger corporations, poor communication between departments may also lead to missed opportunities.
In foreign markets, businesses may participate in trade fairs and exhibitions before fully establishing operations in those countries. Often, they fail to complete trademark registration before these events, only to discover that someone has already registered an identical or similar trademark—sometimes even with the same logo.
So, what can you do in such cases?
1. Opposition and Invalidation Actions
The first step is to determine whether you can file an opposition or a registration invalidation claim against the copycat trademark.
All countries with established trademark laws allow for the rejection or invalidation of imitation trademarks, even after registration. Since trademarks protect not creative works but rather the principle of first-to-file registration, conflicts arise when a party imitates another’s mark to assert rights.
The core purpose of trademark law is to protect business goodwill and prevent confusion among consumers. Allowing imitations to go unchecked would harm both consumers and industries.
However, it’s impractical for trademark examiners to search for every prior-used but unregistered mark or make complex judgments about protecting such marks against first-filed registrations.
Therefore, trademarks undergo a public notice period before registration. During this period, third parties can file oppositions. Even after the registration is finalized, it’s still possible to challenge it through an invalidation claim.
2. Cancellation Due to Non-Use
If your business had not established widespread recognition or failed to maintain clear evidence of commercial use before the copycat filing, opposing or invalidating the trademark based on imitation may be difficult.
In such cases, you can consider filing a cancellation claim for non-use. Many countries allow trademarks to be canceled if they have not been used for a specified period (usually 3 to 5 years). The idea is to prevent trademark “squatters” from holding onto unused registrations, thereby blocking legitimate use by others.
If a copycat trademark has remained unused since registration, a non-use cancellation could be an effective option. In most cases, copycat registrations are not intended for actual use, making non-use cancellations easier than invalidation proceedings.
3. Acquiring the Trademark
Another option is to negotiate and acquire the trademark rights from the registrant. Opposition and invalidation proceedings can take at least one year—and sometimes over two years—to conclude, which may not be practical if you have urgent business needs.
If time is of the essence, negotiating a trademark transfer might be the best approach. However, it’s advisable to initiate an opposition, invalidation, or cancellation proceeding beforehand to strengthen your bargaining position during negotiations.
Trademark transfer prices vary widely depending on the situation but are often surprisingly high. Registrants—especially those aware that the rightful owner wants the trademark—are likely to demand a steep price. While this can be frustrating, securing essential rights through transfer may sometimes be the quickest and most pragmatic solution.