Global Trademark Strategy for Export-Oriented Businesses
Because Korea’s industrial structure is geared toward export manufacturing, many products are designed primarily for export rather than for 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 the following steps to build 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 use 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 filing date to relate back to the domestic filing date, mitigating problems caused by the timing gap between filings.
Here are key considerations during this process:
- Individual Applications: These do not require waiting for the 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 take priority before proceeding 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 countries 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 handle international trademark registration across a range of jurisdictions. 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.
Sarang IP handles cross-border trademark filings involving Korea and coordinates with overseas counsel on multi-jurisdictional registration strategy.
