(Supreme Court En Banc Judgment 2012Hu2463, Decided Sept. 26, 2013)
When filing a trademark application in Korea, one of the most common strategic questions is: “How should I compose the mark?”
Should you combine the English brand name with its Korean transliteration (Hangul)? If you have a logo, should you combine the logo, English text, and Korean text all into one application, or file them separately?
Unless there is a specific reason to separate them (e.g., the Korean part negatively impacts distinctiveness), it is generally safe to file the English trademark and its Korean transliteration together as one mark.
Why is this safe?
- Scope of Protection: Your exclusive right extends to the “similarity range” of the registered mark. Since trademark similarity considers appearance, pronunciation, and meaning, you can enforce your rights even if a third party imitates only the English or only the Korean part.
- Defense Against Non-Use: Even if you register the combined mark but actually use only the English part in the market, the Korean Supreme Court acknowledges this as valid use of the registered trademark. This protects you from cancellation actions based on non-use.
Here is the landmark ruling that established this principle.
The Legal Precedent: Supreme Court 2012Hu2463
Under the Korean Trademark Act, if a registered trademark is not used for three consecutive years, it is subject to cancellation. The core issue has always been: “Does using only a part of a combined trademark count as using the registered trademark?”
Historically, Korean courts were strict. If you registered “CONTINENTAL 콘티넨탈” (English + Korean) but used only “CONTINENTAL,” it was often considered non-use of the registered mark because the two marks were not “identical.”
However, the Supreme Court changed this strict interpretation in 2013 with an en banc decision (a decision by the full panel of judges).
Key Takeaway from the Judgment
“Given the widespread understanding of English in Korea, consumers can easily recognize that the Korean characters in a combined mark are merely the phonetic transliteration of the English word.
Therefore, even if the trademark owner omits the Korean part and uses only the English part (or vice versa), consumers still perceive it as the same trademark. Using only the English portion of a registered English-Korean combined mark constitutes valid use of the registered trademark, provided the Korean part creates no new meaning other than pronunciation.” (Supreme Court En Banc Judgment 2012Hu2463)
In simple terms: If you register [CONTINENTAL 콘티넨탈], you are legally safe to use:
- [CONTINENTAL 콘티넨탈] (Combined)
- [CONTINENTAL] (English only)
- [콘티넨탈] (Korean only)
Before this ruling, attorneys often recommended filing separate applications for English and Korean to be safe. Now, combining them into one application is a cost-effective and legally secure strategy.
⚠️ Important Caveat: “Transliteration Only”
It is crucial not to misinterpret this ruling. This flexibility applies only when the Korean part is a simple phonetic transliteration (sound) of the English part.
If the combined elements have different concepts or are unrelated, you MUST use the full combined mark.
Example of Risk:
- Registered Mark: [CONTINENTAL Crossborder] (Two different words combined)
- Actual Use: [CONTINENTAL]
- Result: This is NOT considered valid use. Since “Crossborder” is not the sound of “Continental,” omitting it changes the identity of the trademark. Your registration could be cancelled for non-use.
Similarly, if you combine a Graphic Logo + Text, but you only use the Text, this might be risky depending on how distinctive the logo is. In such cases, it is safer to file the logo and text separately.
Strategic Conclusion: “Register As You Use”
To summarize, here are two golden rules for your Korean trademark strategy:
1. Combination is OK for Transliterations You can register the English word and its Korean sound together. Using just the English part later is acceptable and protects your rights.
2. The “Register As You Use” Principle Despite the flexibility, the most efficient and safest strategy is to register the mark exactly as you intend to use it.
- If you will only use English → Register English only.
- If you will use English and Korean together → Register the combination.
- If you have a logo that might change in a few years → Register the Word Mark separately from the Logo.
Consider your future business plans (e.g., expanding via the Madrid Protocol, exporting to countries with strict use-proof requirements like the USA or Philippines). When in doubt, consult with a Korean patent attorney to design the most “efficient” portfolio for your brand.
Sarang Patent & Law Office / MarkWide We provide expert legal counsel on intellectual property disputes and trademark strategies.
(Disclaimer: This post is for informational purposes only and does not constitute specific legal advice. Please consult with a professional attorney regarding your specific case.)
