Trademark Registration: Key Considerations and Solutions
Unlike patents or designs, trademarks do not protect inventions. Instead, they “select and protect” marks that hold value for branding purposes. That said, not every mark is eligible for trademark protection.
Certain marks cannot be exclusively used. For example, registering product descriptions or well-known place names would confer an unfair advantage.
Trademark Registration Principles and Refusals
As a matter of principle, trademark law admits eligible marks into the registration system. However, the law also provides over 40 grounds for refusal, preventing the registration of certain types of marks.Examples of refusal grounds include:
- Marks that describe a product’s characteristics, effects, or uses
- Marks that are similar to existing registered trademarks
Trademark Review and Solutions
Before applying for trademark registration, it is crucial to:
- Assess whether the trademark is inherently registrableEnsure the trademark does not conflict with prior trademarks Despite these challenges, receiving a refusal notice is not the end of the road. There are various strategies to address trademarks with insufficient distinctiveness, such as: Combining the mark with logos or figurative elementsModifying or combining distinctive elements
If you are interested in acquiring a trademark similar to a registered one, you may also improve your chances by:
- Investigating whether the registered trademark is in use
- Filing a cancellation trial for unused trademarks
- Making adjustments to the trademark’s design or structure
Our Approach to Trademark Registration
At Sarang IP Law Firm, we thoroughly review the possibility of registration for each case before filing applications. Our services include:
- Providing detailed information about registrability
- Recommending measures to increase the likelihood of approval
- Addressing potential risks and developing strategies to overcome them
Working With Overseas Counsel Sarang IP Law Firm regularly assists overseas attorneys and their clients with Korean trademark filings, with an emphasis on assessing registrability early and reducing the risk of refusal under Korean practice. We welcome inquiries from foreign counsel considering trademark protection in Korea.
