{"id":3406,"date":"2025-11-27T00:09:08","date_gmt":"2025-11-26T15:09:08","guid":{"rendered":"https:\/\/sarangip.com\/en\/?p=3406"},"modified":"2026-07-22T16:11:56","modified_gmt":"2026-07-22T07:11:56","slug":"trademark-non-use-cancellation-identity-test-korea","status":"publish","type":"post","link":"https:\/\/sarangip.com\/en\/trademark-non-use-cancellation-identity-test-korea\/","title":{"rendered":"[Expert Column] Did You Update Your Logo? Your Trademark Might Be at Risk of Cancellation"},"content":{"rendered":"\n

(Key Issues in Non-Use Cancellation Trials: The “Identity” Test)<\/p>\n\n\n\n

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Brand renewal and logo modernization are essential for any business. However, as a patent attorney, I often witness a tragic scenario: a marketing success becoming a legal disaster.<\/strong> Simply changing your logo design slightly can sometimes lead to the cancellation of your registered trademark for “Non-Use.”<\/p>\n\n\n\n

Under Article 119(1)(3) of the Korean Trademark Act<\/strong>, if a registered trademark is not used for 3 consecutive years<\/strong>, anyone can file for its cancellation. The critical defense here is proving that the trademark was used within the “Scope of Identity.”<\/strong><\/p>\n\n\n\n

Today, I will analyze the Supreme Court’s standards on this “Identity” test and provide practical advice for brand owners.<\/p>\n\n\n\n

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1. The Legal Battle: Burden of Proof<\/h2>\n\n\n\n

In a Non-Use Cancellation Trial, the rules are different from civil litigation. The burden of proof is reversed<\/strong>. The applicant does not<\/em> have to prove you didn’t use the mark. Instead, YOU (the trademark owner) must prove that you DID use it.<\/strong><\/p>\n\n\n\n

To win, you must prove:<\/strong><\/p>\n\n\n\n

  1. Use within 3 years<\/strong> prior to the trial filing date.<\/li>
  2. Use in Korea<\/strong>.<\/li>
  3. Use on the designated goods<\/strong>.<\/li>
  4. Use of the registered trademark or a trademark within the “Scope of Identity.”<\/strong><\/li><\/ol>\n\n\n\n

    Recently, I successfully defended a client in a grueling 2.5-year battle. The core issue? Whether their modified logo was “identical” enough to the registered one.<\/p>\n\n\n\n

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    2. What is “Identical” Use? (The Supreme Court’s View)<\/h2>\n\n\n\n

    The Korean Supreme Court is reasonable. It does not require the used mark to be a 100% pixel-perfect match with the registration. It accepts use that is “identical under ordinary notions of trade.”<\/strong><\/p>\n\n\n\n

    The Key Standard:<\/strong><\/p>\n\n\n\n

    “Use of a registered trademark includes not only the registered mark itself but also marks that are considered identical in social conception. This includes changing colors, fonts, or modifying auxiliary\/non-distinctive parts, as long as the identity of the mark remains intact<\/strong>.” (Patent Court of Korea, Nov. 30, 2018, Case Nos. 2018Heo6122 and 2018Heo6139)<\/p><\/blockquote>\n\n\n\n

    Case Study: “Cheong-Kwan-Jang” (Red Ginseng Brand)<\/strong> In this famous case, the registered mark was in Chinese characters (\u6b63\u5b98\u5e84<\/strong>), but the actual use was in Korean (\uc815\uad00\uc7a5<\/strong>) with a ribbon design added.<\/p>\n\n\n\n

    • Court’s Verdict:<\/strong> Identity Recognized.<\/strong><\/li>
    • Reasoning:<\/strong>
      • The frame and ribbon were merely decorative and non-distinctive.<\/li>
      • The Korean “\uc815\uad00\uc7a5” is merely the phonetic transliteration of the famous Chinese “\u6b63\u5b98\u5e84”. Consumers recognize them as the same brand.<\/li>
      • The color change (brown background) did not affect identity as color is often variable.<\/li><\/ul><\/li><\/ul>\n\n\n\n
        \"Cheong-Kwan-Jang
        Cheong-Kwan-Jang case comparing the registered Chinese-character mark and the used Korean ribbon design<\/figcaption><\/figure><\/div>\n\n\n\n
        <\/div>\n\n\n\n
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        3. Safe Variations (Identity Recognized)<\/h2>\n\n\n\n

        Courts generally allow the following variations as “Valid Use”:<\/p>\n\n\n\n

        • Color Change:<\/strong> Using a B&W registration in color (or vice versa).<\/li>
        • Font Change:<\/strong> Changing from Serif to Sans-Serif (as long as the impression is similar).<\/li>
        • Adding\/Removing Generic Terms:<\/strong> Adding “Co., Ltd.” or “Inc.”<\/li>
        • Phonetic Transliteration (Since 2013):<\/strong>
          • Example:<\/em> Registered “TIFFANY \ud2f0\ud30c\ub2c8”<\/strong> (English + Korean) \u2192 Used only “TIFFANY”<\/strong>.<\/li>
          • Verdict:<\/em> Valid Use.<\/strong> (Supreme Court 2012Hu2463 En Banc Judgment).<\/li>
          • Condition:<\/em> The Korean and English parts must have the same pronunciation\/meaning, and omitting one must not create a new concept.<\/li><\/ul><\/li><\/ul>\n\n\n\n
            \"TIFFANY
            TIFFANY example: registered English-and-Korean mark versus use of the English-only TIFFANY mark<\/figcaption><\/figure><\/div>\n\n\n\n

            My Recent Success Story:<\/strong> My client registered “OO Snack” (OO\uacfc\uc790)<\/strong> but had been using “OO Cookie” (OO\ucfe0\ud0a4)<\/strong> since 2019.<\/p>\n\n\n\n

            • Argument:<\/strong> “Snack” and “Cookie” are descriptive terms for the goods. The distinctive part “OO” remained identical.<\/li>
            • Result:<\/strong> Defense Successful.<\/strong> The trial was dismissed.<\/li><\/ul>\n\n\n\n
              \"Non-use
              Non-use defense win comparing the registered ‘OO Snack’ mark with the used ‘OO Cookie’ mark sharing the distinctive part<\/figcaption><\/figure><\/div>\n\n\n\n
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              4. Dangerous Variations (Identity Denied)<\/h2>\n\n\n\n

              However, changing the “Distinctive Part” (Dominant Part) is fatal.<\/p>\n\n\n\n

              • Removing the Logo:<\/strong>
                • Registered: [Logo + Brand Name]<\/strong><\/li>
                • Used: [Brand Name Only]<\/strong><\/li>
                • Risk:<\/em> If the logo was a key identifier, this might be considered non-use of the registered “combination” mark.<\/li><\/ul><\/li>
                • Changing the Logo:<\/strong>
                  • Registered: [Old Logo + Name]<\/strong><\/li>
                  • Used: [New Logo + Name]<\/strong><\/li>
                  • Risk:<\/em> High. The new logo creates a different visual impression.<\/li><\/ul><\/li>
                  • Separating Elements:<\/strong> Using only the logo when the text was also distinctive.<\/li><\/ul>\n\n\n\n
                    \"Examples
                    Examples of risky trademark changes where altering the distinctive logo breaks identity and risks cancellation<\/figcaption><\/figure><\/div>\n\n\n\n
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                    5. Strategic Advice: Don’t Gamble with Your Brand<\/h2>\n\n\n\n

                    While Korean courts are becoming more flexible (focusing on consumer perception rather than strict formalities), relying on this flexibility is risky.<\/p>\n\n\n\n

                    Three Golden Rules for Brand Management:<\/strong><\/p>\n\n\n\n

                    1. Use It As Registered:<\/strong> The safest route is always to use the mark exactly as it appears on your registration certificate.<\/li>
                    2. Re-File When Re-Branding:<\/strong> If you update your logo or change your brand font significantly, file a new trademark application immediately.<\/strong> Do not rely on the old registration to protect the new design.<\/li>
                    3. Periodic Audit:<\/strong> Check your portfolio. If your current usage has drifted away from your registration, you are vulnerable to a non-use cancellation attack by a competitor.<\/li><\/ol>\n\n\n\n
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                      Sarang IP <\/strong> We provide expert legal counsel on Korean Trademark Law, including defense against Non-Use Cancellation Trials and portfolio management.<\/em><\/p>\n\n\n\n

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                      (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.)<\/em><\/p>\n","protected":false},"excerpt":{"rendered":"

                      Did you update your logo? Your trademark could be cancelled in Korea. Learn the “Identity Test” for non-use cancellation trials and how to protect your brand.<\/p>\n","protected":false},"author":1,"featured_media":3900,"comment_status":"closed","ping_status":"closed","sticky":false,"template":"","format":"standard","meta":{"footnotes":""},"categories":[60],"tags":[121,122,54,72,67,120],"class_list":["post-3406","post","type-post","status-publish","format-standard","has-post-thumbnail","hentry","category-insights","tag-brand-renewal","tag-cheong-kwan-jang-case","tag-korean-trademark-law","tag-non-use-cancellation","tag-supreme-court-ruling","tag-trademark-identity","category-60","description-off"],"aioseo_notices":[],"aioseo_head":"\n\t\t\n\t\n\t\n\t\n\t\n\t\n\t\t\n\t\t\n\t\t\n\t\t\n\t\t\n\t\t\n\t\t\n\t\t\n\t\t\n\t\t\n\t\t\n\t\t\n\t\t\n\t\t\n\t\t