Global Trademark Strategy for Export-Oriented Businesses
Due to Korea’s export manufacturing-oriented industrial structure, many products are designed with export as the primary goal, rather than domestic consumption. To successfully enter foreign markets and prevent imitation by third parties, it is essential to secure patents and trademarks internationally.
If you are planning to launch a new product brand for export, we recommend following these steps to establish an effective trademark registration strategy both at home and abroad:
Step 1: Investigating Prior Trademarks and Judging Registrability at the Brand Naming Stage
From the early stages of brand naming, we conduct a thorough search for prior trademarks and assess registrability in major target markets as well as in Korea.
We utilize free online resources such as Google, TMview, WIPO, and GBD to conduct these searches efficiently.
Step 2: Filing a Domestic Trademark with Accelerated Examination
Once the brand is finalized, the top priority is to file a trademark application in Korea. We recommend requesting accelerated examination to obtain examination results from KIPO (Korean Intellectual Property Office) within a maximum of three months.
Step 3: Filing Overseas Applications and Claiming Priority
Within six months of the domestic application filing date, we file overseas applications through a combination of international registration (under the Madrid Protocol) and individual applications in key countries.
A priority claim allows the overseas application date to be retroactively linked to the domestic application date, mitigating issues caused by time differences between filings.
Here are key considerations during this process:
- Individual Applications: Do not require waiting for domestic examination results and can proceed independently.
- International Registration: We recommend waiting for the domestic application to pass examination before filing an international registration, as rejection of the domestic application can invalidate the entire international registration.
Ultimately, securing domestic trademark registration should be a priority before moving forward with international filings. However, this decision may vary based on business strategy, and some companies choose to file both domestic and overseas applications simultaneously.
Considerations for International Registration (Madrid Protocol)
While international registration under the Madrid Protocol can reduce costs, it also has certain limitations:
- Slow Processing: The process can be delayed compared to individual applications.
- Inconsistent Implementation: Some member nations do not fully comply with the agreement, reducing its practical effectiveness.
- Differences in Product Classification: Review criteria and product categories may vary across countries, requiring careful consideration during the application process.
Our Expertise
At Sarang IP Law Firm, we have a team of skilled professionals with extensive experience in international trademark registration. We develop tailored strategies that account for:
- The registration systems and trademark laws of each country
- Cost and time efficiency
- Review precedents and registration success rates
We also conduct comprehensive domestic and international prior art searches to ensure a strong foundation for your applications.
Partner with Sarang IP Law Firm to secure your trademarks and develop an optimal application strategy for your global business success. Contact us today!
