Trademark Act of South Korea

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Trademark Act

Enacted by Act No. 71, Nov. 28, 1949
Amended by Act No. 480, Mar. 11, 1958
Amended by Act No. 1295, Mar. 5, 1963
Wholly Amended by Act No. 2506, Feb. 8, 1973
Amended by Act No. 2659, Dec. 31, 1973
Amended by Act No. 2957, Dec. 31, 1976
Amended by Act No. 3326, Dec. 31, 1980
Amended by Act No. 3892, Dec. 31, 1986
Wholly Amended by Act No. 4210, Jan. 13, 1990
Amended by Act No. 4541, Mar. 6, 1993
Amended by Act No. 4597, Dec. 10, 1993
Amended by Act No. 4895, Jan. 5, 1995
Amended by Act No. 5083, Dec. 29, 1995
Amended by Act No. 5329, Apr. 10, 1997
Amended by Act No. 5355, Aug. 22, 1997
Amended by Act No. 5576, Sep. 23, 1998
Amended by Act No. 6414, Feb. 3, 2001
Amended by Act No. 6626, Jan. 26, 2002
Amended by Act No. 6765, Dec. 11, 2002
Amended by Act No. 7289, Dec. 31, 2004
Amended by Act No. 7290, Dec. 31, 2004
Amended by Act No. 8190, Mar. 1, 2007
Amended by Act No. 8458, May 17, 2007
Amended by Act No. 8852, Feb. 29, 2008
Amended by Act No. 9230, Dec. 26, 2008
Amended by Act No. 9678, May 29, 2009
Amended by Act No. 9987, Jan. 27, 2010
Amended by Act No. 10010, Feb. 4, 2010
Amended by Act No. 10358, Jun. 8, 2010

CHAPTER I GENERAL PROVISIONS[edit]

Article 1 (Purpose)

The purpose of this Act is to contribute to the development of industry and to protect the interests of consumers by maintaining the business credit of those persons using trademarks through the protection of trademarks. <Enacted by Act No. 2506, Feb. 8, 1973>

Article 2 (Definitions)
(1) The definitions of terms used in this Act shall be as follows: <Amended by Act No. 5083, Dec. 29, 1995; Act No. 5355, Aug. 22, 1997; Act No. 7290, Dec. 31, 2004>
1. The term "trademark" means any of the following items (hereinafter referred to as a "mark") which is used by a person who produces, processes, certifies, or sells goods as his business, in order to distinguish the goods related to his business from those of other persons:
(a) Any sign, character, figure, three-dimensional shape or any combination thereof; and
(b) Any combination of color with each of those as referred to in item (a);
2. The term "service mark" means a mark which is used by a person who carries on a service business for the purpose of distinguishing his service business from those of others;
3. The term "collective mark" means a mark which is intended to be used directly by a corporation jointly founded by the persons who produce, manufacture, process, certify, or sell goods as their business or the persons who carry on service business or which is intended to be used with respect to the goods or services of members of the corporation who are controlled by it;
3-2. The term "geographical indication" means an indication which identifies goods as being produced, manufactured, or processed in a region or locality where a given quality, reputation or other characteristic of the goods is essentially attributable to their geographical origin;
3-3. The term "homonymous geographical indication" means a geographical indication which has the same sound as another person's geographical indication for the same goods, but is different in region or locality;
3-4. The term "geographical collective mark" means a collective mark which is intended to be used directly by a corporation composed solely of the persons who produce, manufacture, or process goods eligible for geographical indication as their business or which is intended to be used with respect to the goods of members of the corporation who are controlled by it;
4. The term "business emblem" means a mark which is used by a person who carries on a nonprofit business for the purpose of indicating his business;
5. The term "registered trademark" means a trademark for which a trademark registration has been granted; and
6. The term "use of a trademark" means an act falling under any of the following items:
(a) An act of indicating a trademark on goods or packages of goods;
(b) An act of transferring or delivering goods or packages of goods on which a trademark is indicated, or act of displaying, exporting or importing them for such purpose; and
(c) An act of indicating a trademark on advertisements on goods, price lists, transaction documents, signboards or labels, or act of displaying or distributing it.
(2) An act of indicating a trademark on goods, packages of goods, advertisements, signboards, or labels under paragraph (1) 6 (a) through (c) shall include an act of using goods, packages of goods, advertisements, signboards, or labels as shapes of marks. <Newly Inserted by Act No. 5355, Aug. 22, 1997>
(3) Except as otherwise prescribed by this Act, the provisions of this Act concerning trademarks shall apply to service marks, collective marks, and business emblems.
Article 3 (Persons Entitled to Have Trademark Registered)

Any person who uses or intends to use a trademark in the Republic of Korea, may be entitled to have his trademark registered: Provided, That a staff member of the Korean Intellectual Property Office or the Intellectual Property Tribunal shall not have a trademark registered during his tenure of office, except in case of the inheritance or bequest. <Amended by Act No. 4895, Jan. 5, 1995>

Article 3-2 (Persons Entitled to Have Collective Mark Registered)

Any corporation jointly founded by the persons who produce, manufacture, process, certify, or sell goods as their business or by the persons who carry on service business (in the case of a geographical collective mark, it is limited to a corporation composed solely of the persons who produce, manufacture, or process goods eligible for the geographical indication as their business) may be entitled to have its collective mark registered. [This Article Newly Inserted by Act No. 7290, Dec. 31, 2004]

Article 4 (Persons Entitled to Have Business Emblem Registered)

Any person who carries on a nonprofit business in the Republic of Korea may be entitled to have his business emblem registered.

Article 5 (Mutatis Mutandis Application of Patent Act)

The provisions of Articles 3 through 26 and 28 through 28-5 of the Patent Act shall apply mutatis mutandis to trademarks. In this case, "Article 132-3" in Articles 6, 11 (1) 4, 15 (1) and 17 of the same Act shall read "Article 70-2 or 70-3", "patent right and patent" in the proviso of Article 28 (2) of the same Act shall read "trademark right and trademark" and "international application under Article 2 (vii) of the Patent Cooperation Treaty (hereinafter referred to as "international application")" shall read "international application (hereinafter referred to as "international application") under Article 2 (2) of the Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks (hereinafter referred to as the "Protocol")". <Amended by Act No. 5576, Sep. 23, 1998; Act No. 6414, Feb. 3, 2001>

CHAPTER II REQUIREMENT SAND APPLICATION FOR TRADEMARK REGISTRATION[edit]

Article 6 (Requirements for Trademark Registration)
(1) A trademark registration may be made, except a case falling under any of the following subparagraphs: <Amended by Act No. 5355, Aug. 22, 1997>
  1. A trademark consisting solely of a mark indicating, in a common way, the ordinary name of the goods;
  2. A trademark used customarily on the goods;
  3. A trademark consisting solely of a mark indicating in a common way the origin, quality, raw materials, efficacy, use, quantity, shape (including shapes of packages), price, producing method, processing method, using method or time of the goods;
  4. A trademark consisting solely of a conspicuous geographical name, the abbreviation thereof or a map;
  5. A trademark consisting solely of a mark indicating in a common way a common surname or name;
  6. A trademark consisting solely of a simple and ordinary mark; and
  7. A trademark other than those as referred to in subparagraphs 1 through 6, which does not enable consumers to recognize whose goods it indicates in connection with a person???s business.
(2) Even though it falls under any of paragraph (1) 3 through 6, a trademark which is recognized remarkably among consumers whose goods it indicates in connection with his business as a result of using the trademark before the application for trademark registration under Article 9, may be registered with any goods using the trademark as designated goods (referring to the goods designated and those designated additionally under Articles 10 (1) and 47 (2) 3; hereinafter the same shall apply). <Amended by Act No. 6414, Feb. 3, 2001>
(3) Even though it falls under paragraph (1) 3 (limited to the place of origin) or 4, a mark which is composed of a geographical indication for specific goods may be registered as a geographical collective mark with the goods using the geographical indication as designated goods. <Newly Inserted by Act No. 7290, Dec. 31, 2004>
Article 7 (Unregistrable Trademark)
(1) Notwithstanding Article 6, a trademark falling under any of the following subparagraphs shall be unregistrable: <Amended by Act No. 4597, Dec. 10, 1993; Act No. 5355, Aug. 22, 1997; Act No. 6414, Feb. 3, 2001; Act No. 7290, Dec. 31, 2004>
1. Trademarks which are identical with, or similar to, the national flag, the national emblem, colors, medals, decorations or badges of the Republic of Korea; the national flags or emblems of foreign nations; medals, decorations or badges of an allied nation of the Paris Convention for the Protection of Intellectual Property (hereinafter referred to as ???Paris Convention???), a member nation of the World Trade Organization, or a contracting party to the Trademark Act Treaty; the titles or marks of the Red Cross, the Olympic, or well-known international organizations; or those which are identical with, or similar to, seals or signs used for indicating supervision or certification by the Republic of Korea or an allied nation of the Paris Convention, a member nation of the World Trade Organization or a contracting party to the Trademark Act Treaty, or the public organizations of such nations;
2. Trademarks which falsely indicate a connection with a State, race, ethnic group, public organization, religion or famous deceased person, or which criticize, insult or are liable to defame them;
3. Trademarks which are identical with, or similar to famous marks indicating a nonprofit business of the State, a public organization or its agencies or public corporations, or indicating nonprofit public services: Provided, That this shall not apply where the State, public organization or its agencies or public corporations, or the body of nonprofit public services, applies for the registration of such marks as their business emblems;
4. Trademarks which are contrary to public order or morality;
5. Trademarks comprising of a mark which is identical with, or similar to, a medal, certificate of merit or decoration awarded at an exhibition held by or with the authorization of the Government of the Republic of Korea or at an exhibition held by or with the authorization of the government of a foreign country: Provided, That this shall not apply where a person who has been awarded a medal, certificate of merit or decoration has used it as a part of his trademark on the same goods for which such medal, certificate of merit or decoration was awarded at the exhibition;
6. Trademarks containing the name, title or trade name, portrait, signature or seal, famous pseudonym, professional name or pen name of well-known persons, or an abbreviation thereof: Provided, That this shall not apply where the consent of the person concerned has been obtained;
7. Trademarks identical with or similar to another person's registered trademark (excluding any registered geographical collective mark) whose registration was applied for prior to the filing date of the trademark applications concerned and which are to be used on goods identical with or similar to the designated goods;
7-2. Trademarks identical with or similar to another person's registered geographical collective mark whose registration was applied for prior to the filing date of the trademark applications concerned and which are to be used on goods identical with the designated goods;
8. Trademarks identical with or similar to another person's registered trademark (excluding any registered geographical collective mark), where one year has not elapsed since the date of extinguishment of the trademark right (in the case of a trial decision invalidating the trademark registration, the date when the trial decision became final and conclusive) and which are to be used on goods identical with or similar to the designated goods;
8-2. Trademarks identical with or similar to another person's registered geographical collective mark, where one year has not elapsed since the date of extinguishment of the geographical collective mark right (in the case of a trial decision invalidating the collective mark registration, the date when the trial decision became final and conclusive) and which are to be used on goods identical with the designated goods;
9. Trademarks which are identical with or similar to another person's trademark (excluding any geographical indication) which is well known among consumers as indicating the goods of that other person and which are to be used on goods identical with or similar to such goods;
9-2. Trademarks which are identical with or similar to another person's geographical indication which is well known among consumers as indicating the goods of a specific region or locality and which are to be used on goods identical with the goods using such geographical indication;
10. Trademarks which are liable to cause confusion with goods or services of another person because the trademark is recognized among consumers as designating the goods or services of the person;
11. Trademarks which are liable to mislead or deceive the consumers as to the quality of the goods;
12. Trademarks which are identical with or similar to a trademark (excluding any geographical indication) which is well recognized as indicating the goods of a particular person by customers in the inside or outside of the Republic of Korea, and which are used for unjust purposes such as obtaining unjust profits or inflicting harms on the particular person;
12-2. Trademarks which are identical with or similar to a geographical indication which is recognized as indicating the goods of a specific region or locality by customers in the inside or outside of the Republic of Korea, and which are used for unjust purposes such as obtaining unjust profits or inflicting harms on the person entitled to use such geographical indication;
13. Trademarks consisting solely of three-dimensional shapes essential to secure the functions of goods requiring trademark registration or their packagings; and
14. Trademarks consisting of geographical indications or including such indications with regard to the origin of wines or spirits in a member nation of the World Trade Organization, and which are used in connection with wines, spirits, or other similar goods: Provided, That where the persons entitled to use the geographical indications make an application for geographical collective mark registration of the goods concerned as designated goods under Article 9 (3), the same shall not apply.
(2) Even though a trademark falls under any of paragraph (1) 6, 9, 9-2, and 10, unless it falls thereunder at the time of the application for trademark registration, the related provisions shall not apply. <Amended by Act No. 7290, Dec. 31, 2004>
(3) The provisions of paragraph (1) 7, 7-2, 8, and 8-2 shall apply to a trademark which falls thereunder (it is deemed that the trademark falls thereunder even where other persons??? registered trademarks are nullified by Article 71 (3)) at the time of the application for trademark registration: Provided, That this shall not apply in case where a holder of trademark right and an applicant for trademark registration (hereinafter referred to as an ???applicant???) become one and the same person after the application for trademark registration. <Amended by Act No. 5355, Aug. 22, 1997; Act No. 7290, Dec. 31, 2004>
(4) The provisions of paragraph (1) 8 and 8-2 shall not apply to the following cases: <Amended by Act No. 4597, Dec. 10, 1993; Act No. 5355, Aug. 22, 1997; Act No. 7290, Dec. 31, 2004>
  1. Where a registered trademark has not been used for not less than one year retrospectively after the trademark right became invalid;
  2. Where an appropriate applicant makes an application for a trademark registration, after the decision on nullity or revocation becomes conclusive by reason that a registered trademark is inconsistent with the provisions of paragraph (1) 6, 9, 9-2, 10, 12, and 12-2 of this Article or Article 8 or 73 (1) 7; and
  3. Where an application for trademark registration is made after the expiry of the period of six months as prescribed by the proviso of Article 43 (2) without any application for registration of renewal of duration for the right to the registered trademark.
(5) Where an application for the trial on the cancellation of trademark registration is filed on the grounds that it falls under Article 73 (1) 2, 3, and 5 through 12, and where any of the following subparagraphs applies after the date of the filing of application, a person having the trademark right and any other person using the trademark may not have a trademark identical with or similar to an extinguished registered trademark registered for goods identical with or similar to the designated goods (in the case of a geographical collective mark, they are limited to goods identical with the designated goods) unless they make an application for trademark registration after the elapse of three years from the date on which any of the following subparagraphs applies: <Amended by Act No. 5355, Aug. 22, 1997; Act No. 7290, Dec. 31, 2004>
  1. Where a trademark right is expired because of the termination of duration period;
  2. Where a person having trademark right abandons some of trademark rights or designated goods; and
  3. Where the ruling on the cancellation of trademark registration is adjudged final.
(6) Paragraph (1) 7-2, 8-2, and 9-2 shall not apply between homonymous geographical collective marks. <Newly Inserted by Act No. 7290, Dec. 31, 2004>
Article 8 (First-to-File Rule)
(1) If two or more applications for a trademark registration are filed on different days with respect to the same or similar trademark to be used on the same or similar goods, only one person who files an application earlier than others, shall be entitled to have the trademark registered.
(2) If two or more applications for a trademark registration on the same day with respect to the same or similar trademark to be used on the same or similar goods, only one applicant designated by agreement among applicants shall be entitled to have the trademark registered. If they fail to reach any agreement, or they are unable to do so, only one applicant determined by lot drawn by the Commissioner of the Korean Intellectual Property Office shall be entitled to have the trademark registered.
(3) If an application for a trademark registration is waived, withdrawn or nullified, or a decision or trial decision to refuse trademark registration becomes conclusive, the application shall, in application of the provisions of paragraphs (1) and (2), be considered not to have existed from the beginning. <Amended by Act No. 6414, Feb. 3, 2001>
(4) In case of paragraph (2), the Commissioner of the Korean Intellectual Property Office shall order an applicant to report the result of agreement in a fixed period, and if no report is made in such period, the agreement under paragraph (2) shall be considered not to have been made.
(5) Where the trial on cancellation of trademark registration is requested on the grounds that it falls under Article 73 (1) 3, and where any of the following subparagraphs applies after the date of such request, only the person who requests the trial of cancellation may file an application for trademark registration for three months from the date on which any of the following subparagraphs applies, and may have a trademark identical with or similar to extinguished registered trademark registered for goods identical with or similar to such designated goods: <Amended by Act No. 5355, Aug. 22, 1997>
  1. Where the period under the proviso of Article 43 (2) expires;
  2. Where a person having trademark right abandons some of trademark rights or designated goods; and
  3. Where the ruling on the cancellation of registration of trademarks is adjudged final.
(6) The provisions of paragraphs (1) and (2) shall not apply to the following cases: <Newly Inserted by Act No. 7290, Dec. 31, 2004>
  1. Where two or more applications for geographical collective mark registration or for geographical collective mark registration and trademark registration are filed with respect to the same or similar marks to be used on the goods which are not identical; and
  2. Where two or more applications for registration of geographical collective marks which fall within homonymous geographical indications are filed.
(7) The provisions of paragraph (5) shall not apply to the following cases: <Newly Inserted by Act No. 7290, Dec. 31, 2004>
  1. Where an application for registration of a trademark is filed with respect to a mark identical with or similar to an extinguished registered geographical collective mark, which is to be used on the goods not identical with the designated goods; and
  2. Where an application for registration of a geographical collective mark which has homonymous relation to an extinguished registered geographical collective mark is filed.
Article 9 (Application for Trademark Registration)
(1) Any person intending to have a trademark registered shall submit, to the Commissioner of the Korean Intellectual Property Office, an application for trademark registration specifying the following matters: <Amended by Act No. 4541, Mar. 6, 1993; Act No. 5083, Dec. 29, 1995; Act No. 6414, Feb. 3, 2001>
  1. The name and address of an applicant for trademark registration (if the applicant is a corporation, its title and place of business);
  2. The name, address, or place of business, if any, of an agent (if the agent is a patent corporation, its title and place of office and the name of its appointed patent attorney);
  3. The trademark;
  4. The designated goods and the classified list thereof;
  5. Matters prescribed by Article 20 (3) (limited to a case where he intends to claim a priority right);
  6. Deleted; and <by Act No. 6414, Feb. 3, 2001>
  7. Matters prescribed by the Ordinance of the Ministry of Commerce, Industry and Energy.
(2) A person wishing to have a trademark registered shall state the grounds in an application of registration, where a trademark is made up of three-dimensional shapes (including symbols, characters, designs, colors or any combination thereof) (hereinafter referred to as "three-dimensional trademarks"). <Amended by Act No. 5355, Aug. 22, 1997>
(3) Any person who intends to have a collective mark registered, shall file an application for collective mark registration, together with the articles of association which determine the matters concerning the use of the collective mark as prescribed by the Presidential Decree, in addition to matters as referred to in subparagraphs of paragraph (1). In this case, a person who intends to have a geographical collective mark under Article 2 (1) 3-4 registered shall state the points of such application in an application for collective mark registration and submit it together with the documents, as prescribed by the Presidential Decree, attesting to the fact that it conforms to the definition of geographical indication under Article 2 (1) 3-2. <Amended by Act No. 7290, Dec. 31, 2004>
(4) Any person who intends to have a business emblem registered, shall file an application for business emblem registration together with documents proving the operation of the business in addition to matters as referred to in subparagraphs of paragraph (1).
Article 9-2 (Recognition, etc. of Date of Application)
(1) The Commissioner of the Korean Intellectual Property Office shall recognize the date on which an application for trademark registration is received by the Korean Intellectual Property Office as the date of application for trademark registration except a case falling under any of the following subparagraphs:
  1. Where the reason for seeking to obtain a trademark registration is not clearly stated;
  2. Where the name or the title of the applicant is not indicated, or where the indication of the applicant is not clearly specified;
  3. Where the trademark for which registration is being sought is not indicated in the application or where the indication is not clearly discernable;
  4. Where the designated goods are not indicated; and
  5. Where the application is not filed in the Korean language.
(2) Where an application for trademark registration falls under any of the subparagraphs of paragraph (1), the Commissioner of the Korean Intellectual Property Office shall designate a time limit, and order a person intending to obtain a trademark registration to supplement the application within such time limit.
(3) Where a person supplements an application for trademark registration pursuant to the order to supplement under paragraph (2), he shall submit a document concerning the supplement of procedure (hereinafter referred to as a "document of procedure supplement").
(4) Where a person who has received an order to supplement under paragraph (2) has done so within the designated time limit, the Commissioner of the Korean Intellectual Property Office shall recognize the date on which a document of procedure supplement was received by the Korean Intellectual Property Office as the date of application for trademark registration.
(5) Where a person who has received an order to supplement under paragraph (2) has not done so within the designated time limit, the Commissioner of the Korean Intellectual Property Office may return the application for trademark registration on the ground that the application is defective.

[This Article Newly Inserted by Act No. 6414, Feb. 3, 2001]

Article 10 (One Application for One Trademark)
(1) Any person who intends to make an application for a trademark registration, shall designate one category or more of goods in the classification of goods as prescribed by the Ordinance of the Ministry of Commerce, Industry and Energy, and apply for each trademark. In this case, he may designate both goods and services in one application. <Amended by Act No. 4541, Mar. 6, 1993; Act No. 5083, Dec. 29, 1995; Act No. 5355, Aug. 22, 1997; Act No. 6414, Feb. 3, 2001>
(2) The classification of goods as referred to in paragraph (1) shall not be construed to limit the extent of similarity of the goods.
Article 11 Deleted.

<by Act No. 5355, Aug. 22, 1997>

Article 12 (Succession to and Divided Transfer, etc. of Application)
(1) Except in cases of inheritance and other general succession, no succession to an application for trademark registration shall take effect unless an applicant makes a report on change. <Amended by Act No. 6414, Feb. 3, 2001>
(2) Any application for trademark registration may be transferred with each kind of designated goods divided. In this case, the similar designated goods shall be transferred en bloc.
(3) Deleted. <by Act No. 5355, Aug. 22, 1997>
(4) If any application for trademark registration is inherited or succeeded in general, the successor shall report it without delay to the Commissioner of the Korean Intellectual Property Office.
(5) If an application for trademark registration is owned jointly, each co-owner may not transfer his portion without the consent of all of other co-owners. <Amended by Act No. 5355, Aug. 22, 1997>
(6) Any application for trademark registration transferred as divided one under paragraph (2), shall be considered to have been filed at the time the original application for trademark registration was filed: Provided, That this shall not apply to a case where the provisions of Article 20 (3) and (4) or 21 (2) are applied.
(7) Any application for business emblem registration shall be inalienable: Provided, That this shall not apply to a case where it is transferred together with the business.
(8) Any application for trademark registration under the proviso of Article 7 (1) 3 shall be inalienable: Provided, That this shall not apply to a case where it is transferred together with the business related to the marks under the main sentence of Article 7 (1) 3.
(9) Any application for collective mark registration shall not be transferred: Provided, That in case of a merger of corporations, it may be transferred with the permission of the Commissioner of the Korean Intellectual Property Office.
Article 13 (Correction of Procedure)

Where any application, request, or other procedure for a trademark falls under any of the following subparagraphs, the Commissioner of the Korean Intellectual Property Office or the President of the Intellectual Property Tribunal shall order an applicant to correct it within a fixed period: <Amended by Act No. 6414, Feb. 3, 2001; Act No. 6765, Dec. 11, 2002>

  1. Where it is in contravention of the provisions of Article 3 (1) or 6 of the Patent Act which is applicable mutatis mutandis under Article 5 of this Act;
  2. Where it is contrary to the form as determined by this Act or an order issued under this Act; and
  3. Where any fee to be paid under Article 37 is not paid.
Article 14 (Correction before Decision on Public Notice of Application)
(1) Except as provided in Article 15, any applicant may correct the designated goods and the trademark as to an application for trademark registration to the extent that the essentials of the first application for trademark registration are not modified.
(2) No correction as referred to in paragraph (1) may be made after the notification of decision to grant or refuse a trademark registration (hereinafter referred to as "decision to grant or refuse a trademark registration") is transmitted: Provided, That if a trial is requested against a decision of refusal as prescribed by Article 70-2, the correction may be made within thirty days from such request was made, or within the period when a written opinion is to be submitted under Article 23 (2), 45 (2), 46-4 (2) or 48 (2) which is applicable mutatis mutandis under Article 81. <Amended by Act No. 4597, Dec. 10, 1993; Act No. 5329, Jan. 5, 1995; Act No. 6414, Feb. 3, 2001>
Article 15 (Correction after Decision on Public Notice of Application)

Where an applicant, after the delivery of a certified copy of decision on public notice of application under Article 24, receives a notification of the reason for refusal under Articles 23 (2) and 48 (2), or raises an objection against the trademark registration under Article 25, or where an applicant, after the decision to refuse a trademark registration under Articles 23 (1) and decision to refuse an additional registration of designated goods under Article 48 (1), requests a trial on the decision of refusal under Article 70-2, he may correct the designated goods and the trademark to the extent that the essentials of the first application for trademark registration are not modified as to matters specified in the reason for the refusal, objection, or decision to refuse a trademark registration and decision to refuse an additional registration of designated goods, within the period falling under any of the following subparagraphs: <Amended by Act No. 4895, Jan. 5, 1995; Act No. 6414, Feb. 3, 2001>

  1. The period in which a written opinion is presented under Article 23 (2) or 48 (2);
  2. The period in which a written reply is submitted under Article 27 (1); and
  3. Thirty days from the day on which a trial on the decision of refusal is requested under Article 70-2.
Article 16 (Change in Essentials of Application)
(1) If any correction as prescribed by Articles 14 and 15 falls under any of the following subparagraphs, the essentials of application for trademark registration shall be considered not to be changed:
  1. Reduction of the scope of designated goods;
  2. Rectification of any clerical error;
  3. Explanation of any obscure entry; and
  4. Deletion of part of any supplementary note in the trademark.
(2) If any correction of a trademark or designated goods concerning an application for trademark registration made before the delivery of a certified copy of decision on public notice of application, modifies the essentials and is recognized after the establishment of a trademark right, an application for trademark registration shall be deemed to have been made at the time the written correction thereof is submitted. <Amended by Act No. 5329, Apr. 10, 1997>
(3) If any correction of a trademark or designated goods concerning an application for trademark registration made after the delivery of a certified copy of decision on public notice of application, is recognized to have violated Article 15 after the establishment of a trademark right, the application for trademark registration shall be considered a trademark right to have been established and registered with relation to the application for trademark registration which has not been corrected.

<Newly Inserted by Act No. 5329, Apr. 10, 1997>

Article 17 (Rejection of Correction)
(1) If any correction as prescribed by Article 14 as to an application for trademark registration modifies the essentials of the application, an examiner shall reject the correction by decision.
(2) Upon a decision on rejection under paragraph (1), an examiner shall not make a decision to grant or refuse a trademark registration on the application for trademark registration until thirty days expire from a copy of the decision is served, and if any rejection is decided under paragraph (1) before the public notice on the application is decided, he shall not decide the public notice on the application. <Amended by Act No. 6414, Feb. 3, 2001>
(3) If any applicant requests a trial against a decision on the rejection of correction under Article 70-3 against a decision on rejection as referred to in paragraph (1), an examiner shall suspend the examination of application for trademark registration until the decision on the trial becomes final. <Amended by Act No. 4895, Jan. 5, 1995>
(4) If the correction as prescribed by Article 15 as to an application for trademark registration modifies the essentials of the application, an examiner shall reject such correction by decision.
(5) The decision on rejection as referred to in paragraphs (1) and (4) shall be made in writing with the reason thereof specified.
(6) No decision on rejection under paragraph (4) shall be disobeyed: Provided, That this shall not apply to a case of a request for the trial of decision on refusal under Article 70-2. <Amended by Act No. 4895, Jan. 5, 1995; Act No. 6414, Feb. 3, 2001>
Article 17-2 (Submission of Corrected Articles of Association)

When it is needed to correct the articles of association referred to in Article 9 (3), an applicant for a collective mark registration concerned may submit corrected articles of association to the Commissioner of the Korean Intellectual Property Office within the period set in Article 14 (2) or 15. [This Article Newly Inserted by Act No. 7290, Dec. 31, 2004]

Article 18 (Division of Application)
(1) Where an applicant makes an application for trademark registration of two goods or more as designated goods, the application for trademark registration may be divided into two or more within the period during which the correction under Articles 14 and 15 may be made. <Amended by Act No. 5355, Aug. 22, 1997>
(2) Any application for trademark registration divided under paragraph (1) shall be considered to have been filed at the time of the first application: Provided, That, this shall not apply to a case where the provisions of Article 20 (3) and (4) or 21 (2) are applied.
Article 19 (Conversion of Application)
(1) An applicant may convert an application for trademark registration into an application for service mark registration and vice versa. <Amended by Act No. 5355, Aug. 22, 1997>
(2) If there is an application for trademark registration converted under paragraph (1) (hereinafter referred to as a ???converted application???), the converted application shall be considered as an application for trademark registration or service trademark registration as filed at the time of the first application. <Amended by Act No. 5355, Aug. 22, 1997>
(3) A converted application as referred to in paragraph (2) may not be made after a decision to grant or refuse a trademark registration or a trial decision on the initial application for trademark registration, or after a decision to grant or refuse a service mark registration or a trial decision on the first application for service mark registration has become final and conclusive. <Amended by Act No. 5355, Aug. 22, 1997; Act No. 6414, Feb. 3, 2001>
(4) If a converted application as referred to in paragraph (2) is filed, the first application for trademark or service trademark registration shall be considered to have been withdrawn. <Amended by Act No. 5355, Aug. 22, 1997>
(5) No conversion may be made in an application for registration among the trademark, collective mark and business emblem, or among the service mark, collective mark and business emblem. <Amended by Act No. 5355, Aug. 22, 1997>
Article 20 (Claim for Priority by Treaty)
(1) Where a citizen of a member state which admits the priority to any application for trademark registration for any citizen of the Republic of Korea by virtue of the treaty and its equivalents (hereinafter referred to as the ???treaty???), filed an application for trademark registration with the member state or another member state, and thereafter files an application for the same trademark with the Republic of Korea and claims a priority thereto, the date on which the application was filed with the member state, shall, in application of the provisions of Article 8, be considered as the date on which the application for trademark registration is filed with the Republic of Korea. This provision shall also apply in case where a citizen of the Republic of Korea files an application for trademark registration to a member state which admits the priority to any application for trademark registration for a citizen of the Republic of Korea by virtue of the treaty, and thereafter files an application for registration of the same trademark with the Republic of Korea.
(2) No person who intends to claim a priority under paragraph (1), may claim it unless he files the application within six months from the first application day which is the basis of the claim for priority.
(3) Any person who intends to claim a priority under paragraph (1), shall specify the purpose, the name of the country with which he filed the first application, and the date of application in the application for trademark registration at the time of filing the application.
(4) Any person who claims a priority under paragraph (3), shall submit to the Commissioner of the Korean Intellectual Property Office, the copies of writings specified the date of the application for trademark registration recognized by the Government with which the first application was filed, trademark, and designated goods, within three months from the application for trademark registration was filed.
(5) If a person who claimed a priority under paragraph (3), fails to submit the documents as referred to in paragraph (4) within the period as referred to in paragraph (4), the claim for priority shall lose its effect.
Article 21 (Special Cases Upon Application)
(1) Where any person who is entitled to have a trademark registered, files an application for registration of a trademark used on the goods as sent to any of the following exhibition, with the goods designated as the designated goods within six months from the date of displaying them, the application for trademark registration shall be considered to have been filed at the time of display:
  1. An exhibition to be held by the Government or a local government;
  2. An exhibition to be held by a person who is authorized by the Government or a local government;
  3. An exhibition to be held abroad with the approval of the Government; and
  4. An international exhibition to be held by the Government of a member state of the treaty or any person who is authorized by the Government in the territory of the state.
(2) Any person who intends to have the provisions of paragraph (1) applied, shall submit the documents specified such purpose to the Commissioner of the Korean Intellectual Property Office, together with the application for trademark registration, and present the documents to attest it to the Commissioner of the Korean Intellectual Property Office within thirty days from the application for trademark registration is filed.


CHAPTER III EXAMINATION[edit]

Article 22 (Examination by Examiner)
(1) The Commissioner of the Korean Intellectual Property Office shall have applications for trademark registration and objection to trademark registration examined by examiners.
(2) The qualifications for examiners shall be prescribed by the Presidential Decree.
(3) Where an application for trademark registration is deemed to fall under any of the subparagraphs of Article 23 (1), any person may submit the information to the Commissioner of the Korean Intellectual Property Office, together with the evidence supporting it. <Amended by Act No. 5355, Aug. 22, 1997>
Article 22-2 (Request, etc. for Inspection of Trademark by Specialized Investigation Agency)
(1) The Commissioner of the Korean Intellectual Property Office may request a specialized investigation agency to inspect trademarks where it is deemed necessary for the examination for an application of trademark registration. <Amended by Act No. 6414, Feb. 3, 2001>
(2) The Commissioner of the Korean Intellectual Property Office may request assistance or hear opinions from the competent administrative agency, a person with vast knowledge and experience in trademarks, or interested persons, where it is deemed necessary for the examination of an application for trademark registration.
(3) Where an application for registration of a geographical collective mark is filed with respect to items entitled for registration of geographical indication under the Agricultural Products Quality Control Act or the Quality Control of Fishery Products Act, the Commissioner of the Korean Intellectual Property Office shall hear opinions from the Minister of Agriculture and Forestry or the Minister of Maritime Affairs and Fisheries about whether or not it falls under geographical indication. <Newly Inserted by Act No. 7290, Dec. 31, 2004>
(4) Necessary matters for the criteria of the specialized investigation agency and the request for the search of trademarks pursuant to paragraph (1) shall be prescribed by the Presidential Decree.

[This Article Newly Inserted by Act No. 5355, Aug. 22, 1997]

Article 23 (Decision to Refuse Trademark Registration and Notification of Reasons for Refusal)
(1) Where an application for trademark registration falls under any of the following subparagraphs, an examiner shall make a decision to refuse trademark registration with respect to such application: <Amended by Act No. 5355, Aug. 22, 1997; Act No. 6414, Feb. 3, 2001; Act No. 7290, Dec. 31, 2004>
  1. Where a trademark is not registerable under Articles 3 (proviso), 6 through 8, 10 (1), the latter part of Article 12 (2), and Article 12 (5), (7) through (9) of this Act, or Article 25 of the Patent Act applied mutatis mutandis under Article 5 of this Act;
  2. Where a trademark is in violation of the provisions of a treaty;
  3. Where a trademark is identical, or similar to a trademark registered in the territory of a country which is a party to a treaty and has been filed by a person who is or was an agent or a representative of the owner of the trademark, within one year prior to the date of filing, without such owner's authorization, for designated goods which are identical, or similar to the designated goods covered by the owner's trademark: Provided, That this shall apply only where an objection to trademark registration has been filed or information has been furnished under Article 22 (3) by the owner;
  4. Where a trademark is not in agreement with the definition of the mark under Article 2 (1) 1 through 3 and 4 or where, in the case of a geographical collective mark, the geographical indication and mark are not in accord with the definitions of the geographical indication and mark under Article 2 (1) 3-2 and 3-4;
  5. Where, in the case of an application for registration of a geographical collective mark, the articles of association of the organization concerned prohibit any other person who produces, manufactures, or processes goods entitled for the geographical indication as his business, from joining the organization, or the articles of association include very strict conditions of entry into the organization, which do not substantially allow any other person to join the organization; and
  6. Where the articles of association under Article 9 (3) lack in whole or in part the matters relating to the use of a collective mark as prescribed by the Presidential Decree.
(2) If an examiner intends to make a decision to refuse trademark registration under paragraph (1), he shall notify an applicant of the reason thereof, and give him an opportunity to submit a written opinion in a fixed period. <Amended by Act No. 6414, Feb. 3, 2001>
Article 24 (Public Notice of Application)
(1) Where an examiner finds no grounds for rejecting an application for trademark registration, he shall render a decision to publish the application.
(2) Where a decision under paragraph (1) is made, the Commissioner of the Korean Intellectual Property Office shall transmit a copy of the decision to the applicant and publish the application in the Trademark Gazette.
(3) The Commissioner of the Korean Intellectual Property Office shall make the documents of the application for trademark registration and other documents attached thereto available for public inspection at the Korean Intellectual Property Office for a period of thirty days from the date of public notice of the application.
Article 24-2 (Right to Demand Compensation for Loss)
(1) After an application is publicly notified under Article 24 (2) (including a case applied mutatis mutandis under Articles 49 (3) and 81 (1)), an applicant may warn, in writing, a person who has used a trademark that is identical or similar to the trademark of said published application on goods that are identical or similar to the designated goods of said published application: Provided, That where the applicant shows a copy of said application for trademark registration, he may give a warning, in writing, even before the public notice of the application.
(2) An applicant who has sent a warning under paragraph (1) may demand payment of compensation in an amount equivalent to the loss of business caused by the use of said trademark from the date of warning to the date of establishment registration of the trademark right.
(3) The right to demand under paragraph (2) shall be exercised only after the establishment registration of a trademark right.
(4) The exercise of the right to demand under paragraph (2) shall not preclude the exercise of the trademark right.
(5) The provisions of Articles 52, 66, 69, and 70 of this Act, and Articles 760 and 766 of the Civil Act shall apply mutatis mutandis to a case of exercising the right to demand under paragraph (2). In such cases, "date on which the damaged party or his legal representative became aware of such damage and the identity of the person causing it" in Article 766 (1) of the Civil Act shall read "date of establishment registration of said trademark right"?.
(6) Where an application for trademark registration falls under any of the following subparagraphs, the right to demand under paragraph (2) shall be deemed never to have existed:
  1. Where an application for trademark registration has been abandoned, withdrawn, or invalidated;
  2. Where a decision to refuse trademark registration for an application for trademark registration has become final and conclusive; and
  3. Where a trial decision to invalidate a trademark registration under Article 71 (excluding a case of Article 71 (1) 4 and 5) has become final and conclusive.

[This Article Newly Inserted by Act No. 6414, Feb. 3, 2001]


Article 25 (Objection to Trademark Registration)
(1) Where an application is notified publicly, any person may raise an objection against the trademark registration to the Commissioner of the Korean Intellectual Property Office within thirty days from the day of the public notice on application on the grounds falling under any of the subparagraphs of Article 23 (1). <Amended by Act No. 5355, Aug. 22, 1997>
(2) Where any person intends to make an objection against a trademark registration, he shall submit to the Commissioner of the Korean Intellectual Property Office a written objection specifying matters falling under the following subparagraphs, together with necessary evidence: <Amended by Act No. 5355, Aug. 22, 1997; Act No. 6414, Feb. 3, 2001>
1. Name and address of the applicant of the objection to a trademark registration (if the applicant is a corporation, its title and place of business);
1-2. Name, address, or place of business, if any, of an agent (if the agent is a patent corporation, its title, place of business, and the name of the appointed patent attorney);
2. Serial number of the application for trademark registration;
3. Relevant classification of goods and designated goods;
4. Points of the application for the objection to a trademark registration; and
5. Reasons for the application for the objection to a trademark registration and indication of supporting evidences.
Article 26 (Supplement and Correction of Reason, etc. for Objection against Trademark Registration)

Any person who has raised an objection against trademark registration under Article 25 (1) (hereinafter referred to as an "objector") may supplement and correct the reasons and evidence mentioned in the written objection against a trademark registration within thirty days after the period of the objection against trademark registration expires.

Article 27 (Decision on Objection against Trademark Registration)
(1) An examiner shall, upon receiving an objection against a trademark registration, serve to the applicant a duplicate of the written objection against trademark registration, and give him an opportunity to submit a written reply in a fixed period.
(2) An examiner shall make a decision on the objection against trademark registration after the expiration of the period as provided in Article 26 and the period as referred to in paragraph (1).
(3) Notwithstanding the provisions of paragraph (1), if any objector fails to present the reasons and evidence, the objection against trademark registration shall be rejected by decision after the expiration of the period as provided in Article 26.
(4) The decision on an objection against trademark registration shall be made in writing with the reason thereof specified.
(5) The Commissioner of the Korean Intellectual Property Office shall, upon a decision as referred to in paragraph (2), serve a copy of the decision to the applicant and the objector.
(6) No decision on an objection against trademark registration shall be disobeyed.
(7) Where there are different reasons for two designated goods or more when they are given in accordance with paragraph (4), they shall be given for each of such goods. <Newly Inserted by Act No. 5355, Aug. 22, 1997>
Article 28 (Decision to Refuse Trademark Registration Ex Officio after Public Notice on Application for Trademark Registration)
(1) Where an examiner finds out any reason of refusal after the public notice on application, he may make ex officio a decision to refuse a trademark registration under Article 23. <Amended by Act No. 6414, Feb. 3, 2001>
(2) Where an examiner makes a decision to refuse a trademark registration under paragraph (1), he shall not render a decision on an objection to trademark registration even if the objection has been filed in accordance with Article 25. <Amended by Act No. 6414, Feb. 3, 2001>
(3) Where a decision to refuse a trademark registration has been rendered under paragraph (1), the Commissioner of the Korean Intellectual Property Office shall transmit a certified copy of the decision of refusal to the objector. <Amended by Act No. 6414, Feb. 3, 2001>
Article 29 (Concurrence of Objections against Trademark Registration)
(1) An examiner may merge or separate the examinations or decisions on two or more objections against trademark registration.
(2) Where two or more objections against trademark registration are raised, if an examiner deems that one of them is well-grounded, as a result of the examination of the objection, he may not make a decision on other objections against trademark registration.
(3) The Commissioner of the Korean Intellectual Property Office shall serve the copies of decision to refuse trademark registration even to objectors for whom no decision on objection against trademark registration is made under paragraph (2). <Amended by Act No. 6414, Feb. 3, 2001>
Article 30 (Decision to Grant Trademark Registration)

Where an examiner cannot find any reasons for refusing an application for a trademark registration, he shall render a decision to grant a trademark registration. <Amended by Act No. 6414, Feb. 3, 2001>

Article 31 (Method of Decision to Grant or Refuse Trademark Registration)
(1) The decision to grant or refuse a trademark registration shall be made in writing and state the reasons therefor. <Amended by Act No. 6414, Feb. 3, 2001>
(2) Where an examiner has made a decision to grant or refuse a trademark registration, the Commissioner of the Korean Intellectual Property Office shall transmit a certified copy of the decision to the applicant. <Amended by Act No. 6414, Feb. 3, 2001>
Article 32 (Suspension of Examination or Litigation Proceedings)
(1) The examination procedure of an application for a trademark registration may, if necessary, be suspended until a trial decision has become final and conclusive or litigation proceedings have been concluded.
(2) The court may, if necessary for the litigation, suspend the litigation proceedings until a decision to grant or refuse a trademark registration has become final and conclusive. <Amended by Act No. 6414, Feb. 3, 2001>
Article 33 (Application Mutatis Mutandis of Patent Act, etc.)

The provisions of Article 142, subparagraphs 1 through 5 and 7 of Article 148, and Article 157 of the Patent Act, and Articles 143, 299 and 367 of the Civil Procedure Act shall apply mutatis mutandis to the examination of the application for trademark registration. <Amended by Act No. 6626, Jan. 26, 2002; Act No. 7290, Dec. 31, 2004>


CHAPTER IV TRADEMARK REGISTRATION FEE AND TRADEMARK REGISTRATION, ETC.[edit]

Article 34 (Trademark Registration Fee)
(1) Any person who intends to obtain any establishment registration of trademark right, additional registration of designated goods or renewal registration of duration of trademark right, shall pay a trademark registration fee.
(2) Any interested person may pay a trademark registration fee as referred to in paragraph (1) regardless of the intention of the person liable to pay it.
(3) Matters necessary for the trademark registration fee and method, period, etc. of payment thereof as referred to in paragraph (1) shall be prescribed by the Ordinance of the Ministry of Commerce, Industry and Energy. <Amended by Act No. 4541, Mar. 6, 1993; Act No. 5083, Dec. 29, 1995; Act No. 6414, Feb. 3, 2001>
Article 34-2 (Abandonment of Some Designated Goods at Time of Payment of Trademark Registration Fee)
(1) A person who has obtained a decision granting a trademark registration in an application for trademark registration that includes more than two designated goods, has obtained a decision granting additional registration of designated goods in an application for additional registration of the designated goods, or has obtained a decision granting registration for renewal of duration of a trademark right in an application for such renewal registration may abandon the said designated goods in part or in whole when he pays a trademark registration fee.
(2) Matters necessary for the abandonment of designated goods under paragraph (1) shall be prescribed by the Ordinance of the Ministry of Commerce, Industry and Energy.

[This Article Newly Inserted by Act No. 6414, Feb. 3, 2001]

Article 35 (Extension of Payment Period of Trademark Registration Fee)

The Commissioner of the Korean Intellectual Property Office may, upon a request, extend the payment period of trademark registration fee under Article 34 (3) within the limit of thirty days.

Article 36 (Abandonment of Application due to Nonpayment of Trademark Registration Fee)

If no trademark registration fee is paid within the period of time fixed under Articles 34 (3) and 35 (including where a supplement is not made within the period of supplement as described in Article 36-2 (2), if, in spite of the expiration of the period of payment, the period of supplement does not expire), an application for trademark registration, application for additional registration of designated goods or application for renewal registration of duration of trademark right shall be considered to have been abandoned. <Amended by Act No. 6765, Dec. 11, 2002>

Article 36-2 (Supplement of Trademark Registration Fee)
(1) Where a person who intends to obtain any establishment registration of trademark right, additional registration of designated goods, or renewal registration of duration of trademark right fails to pay part of the trademark registration fee within the period of time fixed under Article 34 (3) or 35, the Commissioner of the Korean Intellectual Property Office shall order him to supplement the trademark registration fee.
(2) A person who receives the order for supplement under paragraph (1) may supplement the trademark registration fee within one month after the order is received.
(3) A person who supplements the trademark registration fee under paragraph (2) shall pay twice the unpaid trademark registration fee if he supplements the trademark registration fee after the lapse of the period of payment under Article 34 (3) or 35.

[This Article Newly Inserted by Act No. 6765, Dec. 11, 2002]


Article 36-3 (Recovery, etc. of Application for Trademark Registration by Payment or Supplement of Trademark Registration Fee)
(1) Where an applicant who has submitted an application for trademark registration, an application for additional registration of designated goods, or an application for renewal registration of duration of a trademark right deemed to have been abandoned under Article 36 fails to pay the trademark registration fee within the period of payment under Article 34 (3) or 35 or to supplement the trademark registration fee within the period of supplement under Article 36-2 (2) due to any cause beyond his control, he may make payment or supplement of the trademark registration fee within 14 days from the date on which the said cause ceases to exist: Provided, That this shall not apply where six months have elapsed since the expiration date of the period of payment or supplement, whichever is later. <Amended by Act No. 6765, Dec. 11, 2002>
(2) Where the payment or supplement of the trademark registration fee is made in accordance with paragraph (1), the application for trademark registration, application for additional registration of designated goods, or application for renewal registration of duration of the trademark right shall be deemed not to have been abandoned, notwithstanding the provisions of Article 36. <Amended by Act No. 6765, Dec. 11, 2002>
(3) Where an application for a trademark registration, an application for additional registration of designated goods, or a trademark right has been recovered under paragraph (2), the effect of the application for a trademark registration, the application for additional registration of designated goods, or the trademark right shall not extend to use of a trademark that is identical or similar to a registered trademark on goods identical or similar to the designated goods if the said use occurred within a period extending from the expiration date of the payment period under Article 34 (3) or 35 to the recovery date of the application for trademark registration, the application for additional registration of designated goods, or the trademark right.

[This Article Newly Inserted by Act No. 6414, Feb. 3, 2001]


Article 37 (Fee)
(1) Any person who makes an application, request, or other procedures as to the trademark, shall pay a fee: Provided, That this shall not apply to a fee for the nullity trial requested by an examiner under Articles 71 (1) and 72 (1).
(2) Matters necessary for the fee, its payment method and period, etc. as referred to in paragraph (1) shall be determined by the Ordinance of the Ministry of Commerce, Industry and Energy. <Amended by Act No. 4541, Mar. 6, 1993; Act No. 5083, Dec. 29, 1995; Act No. 6414, Feb. 3, 2001>
(3) Any person who intends to make an application for renewal registration of duration of a trademark right within the period of time fixed under the proviso of Article 43 (2), shall pay a fee as referred to in paragraph (2) in addition to the amount as determined by the Ordinance of the Ministry of Commerce, Industry and Energy. <Newly Inserted by Act No. 4597, Dec. 10, 1993; Act No. 5083, Dec. 29, 1995; Act No. 6414, Feb. 3, 2001>
Article 38 (Refund of Trademark Registration Fee, etc.)
(1) A trademark registration a fee and fee that have been paid shall not be refunded: Provided, That where a trademark registration fee and a fee are paid incorrectly, the incorrectly paid portion of the fees shall be refunded upon the request of a payer. <Amended by Act No. 4597, Dec. 10, 1993; Act No. 6414, Feb. 3, 2001>
(2) Where a trademark registration fee and a fee are paid incorrectly, the Commissioner of the Korean Intellectual Property Office shall notify a payer of such fees of the fact. <Newly Inserted by Act No. 6414, Feb. 3, 2001>
(3) A refund of trademark registration fee and a fee under paragraph (2) shall not be requested where one year has elapsed from the date when the fact of incorrect payment was notified. <Newly Inserted by Act No. 6414, Feb. 3, 2001>
Article 39 (Trademark Register)
(1) The Commissioner of the Korean Intellectual Property Office shall keep a trademark register at the Korean Intellectual Property Office and shall register the following matters: <Amended by Act No. 6414, Feb. 3, 2001; Act No. 6765, Dec. 11, 2002>
  1. The establishment, transfer, modification, expiration, recovery, renewal of duration, conversion of the classification of goods under Article 46-2, additional registration of designated goods, or restriction on disposal, of a trademark right;
  2. The establishment, maintenance, transfer, modification, expiration, or restriction on disposal of an exclusive or non-exclusive license; and
  3. The establishment, transfer, modification, expiration, and restriction on disposal of a pledge of which the object is a trademark right, an exclusive license, or a non-exclusive license.
(2) A trademark register as referred to in paragraph (1) may be prepared wholly or partially by magnetic tape, etc.
(3) Matters necessary for the particulars and procedure of registration other than as referred to in paragraphs (1) and (2) shall be prescribed by the Presidential Decree.
Article 40 (Delivery of Trademark Registration Certificate)
(1) When the Commissioner of the Korean Intellectual Property Office registers an establishment of trademark right, he shall deliver a trademark registration certificate to an owner of the trademark right.
(2) If a trademark registration certificate is not coincident to a trademark register, the Commissioner of the Korean Intellectual Property Office shall, upon a request or ex officio, withdraw the trademark registration certificate and deliver a corrected one or a new one.


CHAPTER V TRADEMARK RIGHT[edit]

Article 41 (Registration of Establishment of Trademark Right)
(1) A trademark right shall come into effect upon registration of its establishment.
(2) Where a trademark registration fee is paid in accordance with Article 34 (1) or 35, the supplement of a trademark registration fee is made in accordance with Article 36-2 (2), or the payment or supplement of a trademark registration fee is made in accordance with Article 36-3 (1), the Commissioner of the Korean Intellectual Property Office shall register the establishment of the trademark right concerned. <Amended by Act No. 6765, Dec. 11, 2002>
Article 42 (Duration of Trademark Right)
(1) The duration of a trademark right shall be 10 years from the date of registration of its establishment.
(2) The duration of a trademark right may be renewed for an additional 10 years upon making an application for the registration for the renewal of its duration. <Amended by Act No. 4597, Dec. 10, 1993; Act No. 5355, Aug. 22, 1997>


Article 43 (Application for Duration Renewal Registration of Trademark Right)
(1) Any person desiring registration for the renewal of duration of a trademark right under Article 42 (2) shall submit an application to the Commissioner of the Korean Intellectual Property Office, including the following: <Amended by Act No. 5355, Aug. 22, 1997; Act No. 6414, Feb. 3, 2001>
  1. Requirements under Article 9 (1) 1, 2, 4, and 7;
  2. Registration number of registered trademark; and
  3. Deleted. <by Act No. 4597, Dec. 10, 1993>
(2) The application for registration for the renewal of duration of a trademark right shall be filed within one year prior to the date of expiration of the duration of the trademark right: Provided, That a person who fails to apply for registration for the renewal of duration of a trademark right within this period, may do so within six months after the expiration date of the trademark right. <Amended by Act No. 4597, Dec. 10, 1993>
(3) Where a trademark right is owned jointly, all the co-owners shall jointly file an application for registration for the renewal of duration of a trademark right.
(4) Matters necessary for an application for registration for the renewal of duration of a trademark right other than those as referred to in paragraphs (1) through (3), shall be determined by the Ordinance of the Ministry of Commerce, Industry and Energy. <Amended by Act No. 4597, Dec. 10, 1993; Act No. 5083, Dec. 29, 1995; Act No. 6414, Feb. 3, 2001>
Article 44 (Division of Application for Registration for Renewal of Duration of Trademark Right)
(1) If any of designated goods of registered trademark is classified in two or more categories of goods, the application for registration for the renewal of duration of a trademark right may be filed by dividing it into each category of goods. <Amended by Act No. 5355, Aug. 22, 1997>
(2) If an application for registration for the renewal of duration of a trademark right under Article 43 (1) is filed for two designated goods or more, it may be divided into two or more applications for registration for the renewal of duration of a trademark right within the period of time during which corrections may be made by Article 14. <Amended by Act No. 5355, Aug. 22, 1997>
(3) Any application for registration for the renewal of duration of a trademark right divided under paragraph (2) shall be considered to have been filed at the time when the original application was filed.
Article 45 (Decision of Refusal of Registration for Renewal of Duration of Trademark Registration and Notification of Reasons for Refusal)
(1) An examiner shall make a decision of refusal of registration for renewal of duration of a trademark right where it falls under any one of the following subparagraphs: <Amended by Act No. 4597, Dec. 10, 1993; Act No. 5083, Dec. 29, 1995; Act No. 6414, Feb. 3, 2001>
1. Deleted; <by Act No. 5355, Aug. 22, 1997>
2. An applicant for registration for the renewal of duration of a trademark right is not an owner of the trademark right concerned;
3. An application is in violation of Article 43 (2);
4. and 5. Deleted; and <by Act No. 5355, Aug. 22, 1997>
6. Where the designated goods for which an application for registration for the renewal of duration of a trademark right is not the designated goods of such registered trademark, or where such application expands the classification of the designated goods essentially.
(2) Where an examiner intends to make a decision of refusal of registration for the renewal of duration of a trademark right under paragraph (1), he shall notify the applicant of the reasons for refusal and give the applicant an opportunity to submit his arguments in writing within the designated time limit. <Amended by Act No. 6414, Feb. 3, 2001>
Article 46 (Effects of Application for Registration for Renewal of Duration of Trademark Right, etc.)
(1) Where an application for registration for renewal of term of a trademark right has been filed within the period provided in Article 43 (2), the duration of the trademark right shall be deemed to have been renewed: Provided, That this shall not apply where a decision of refusal of registration for the renewal of duration of a trademark right thereof has become final and conclusive. <Amended by Act No. 6414, Feb. 3, 2001>
(2) The registration for renewal of duration of a trademark right shall commence on the day following the date of expiration of the original registration.
Article 46-2 (Application to Register Conversion of Classification of Goods)
(1) An owner of a trademark right who has obtained any establishment registration of trademark right, additional registration of designated goods, or renewal registration of duration of trademark right by designating the goods in accordance with the classification of goods prescribed by the Ordinance of the Ministry of Commerce, Industry and Energy under the previous Article 10 (1) of the Trademark Act, before the enforcement of the amended Trademark Act, No. 5355, shall obtain registration to convert the classification of designated goods (hereinafter referred to as the ???conversion of the classification of goods???), as prescribed by the Ordinance of the Ministry of Commerce, Industry and Energy: Provided, That this shall not apply where a person has obtained registration for renewal of duration of a trademark right for designated goods in accordance with the classification of goods as prescribed by the Ordinance of the Ministry of Commerce, Industry and Energy under Article 10 (1) of the amended Trademark Act, No. 5355.
(2) If any person intends to obtain the registration for the conversion of the classification of goods under paragraph (1) (hereinafter referred to as ???registration for the conversion of the classification of goods???), he shall submit to the Commissioner of the Korean Intellectual Property Office an application of registration for the conversion of the classification of goods, specifying the particulars of the following subparagraphs. In this case, where a person intends to file an application to register the conversion of the classification of goods and, at the same time, an application to register a renewal of duration of a trademark right under Article 43 (1) he may instead file a single application for registration of renewal of term of a trademark right by specifying therein its said intention and the particulars under subparagraph 4:
  1. Name and address of applicant for the objection to a trademark registration (if the applicant is a corporation, its title and place of business);
  2. Name, address, or place of business, if any, of an agent (if the agent is a patent corporation, its title, place of business, and the name of the appointed patent attorney);
  3. Registration number of the registered trademark; and
  4. Designated goods and the corresponding classification that the applicant wishes to convert.
(3) An application for registration of the conversion of the classification of goods shall be filed within the period of from one year before the expiration date of the duration of the trademark right to six months after the expiration date of said duration.
(4) Where a trademark right is owned jointly, all joint owners shall jointly file an application of registration for the conversion of the classification of goods.

[This Article Newly Inserted by Act No. 6414, Feb. 3, 2001]

Article 46-3 (Division of Application for Registration of Conversion of Classification of Goods)
(1) Where an applicant files an application for registration of a renewal of term of a trademark right in which the designated goods are divided under Article 44 (1), he shall file an application to divide the registration of the conversion of the classification of goods.
(2) Where an application for registration of a renewal of duration of a trademark right is divided under Article 44(2), the applicant shall file an application to divide the registration of the conversion of the classification of goods, or divide the application for registration of the conversion of the classification of goods that has already been filed.
(3) Where an application for registration of the conversion of the classification of goods that has already been filed under paragraph (2) is divided, the concerned application for registration of the conversion of the classification of goods will be deemed to have been filed when the original application for registration of the conversion of the classification of goods was filed.

[This Article Newly Inserted by Act No. 6414, Feb. 3, 2001]

Article 46-4 (Decision of Refusal of Registration for Conversion of Classification of Goods and Notification of Reasons for Refusal)
(1) An examiner shall make a decision to refuse registration for the conversion of the classification of goods where an application of registration for the conversion of the classification of goods falls under any of the following subparagraphs:
  1. Where the designated goods for which an application to register the conversion of the classification of goods has been filed are not the goods designated under the registered trademark or where an applicant expands the actual scope of the designated goods;
  2. Where the designated goods of an application to register the conversion of the classification of goods don???t correspond with the classifications of goods prescribed by the Ordinance of the Ministry of Commerce, Industry and Energy;
  3. Where an applicant for registration for the conversion of the classification of goods is not an owner of the trademark right concerned; and
  4. Where an application is in violation of Article 46-2 (3).
(2) Where an examiner intends to make a decision to refuse registration of the conversion of the classification of goods under paragraph (1), he shall notify the applicant of the reasons for refusal and give the applicant an opportunity to submit a response in writing within the designated time limit.

[This Article Newly Inserted by Act No. 6414, Feb. 3, 2001]

Article 46-5 (Registration of Conversion of Classification of Goods)

Where an examiner makes a decision to register the conversion of the classification of goods under Article 30 applied mutatis mutandis under Article 49 (2), the Commissioner of the Korean Intellectual Property Office shall register the conversion of the classification of the designated goods. [This Article Newly Inserted by Act No. 6414, Feb. 3, 2001]

Article 47 (Application for Additional Registration of Designated Goods)
(1) Any owner of trademark right or applicant may obtain an additional registration with the effect of inclusion of designated goods of the registered trademark or application for trademark registration. <Amended by Act No. 5355, Aug. 22, 1997>
(2) Any person who intends to obtain an additional registration of designated goods under paragraph (1), shall submit to the Commissioner of the Korean Intellectual Property Office an application for additional registration of designated goods, specifying the following matters: <Amended by Act No. 6414, Feb. 3, 2001>
  1. Matters as prescribed by Article 9 (1) 1 through 3, 5, and 7;
  2. Registration number of registered trademark, or application number of trademark registration application; and
  3. Goods to be designated additionally and the classification thereof.
Article 48 (Decision of Refusal of Additional Registration of Designated Goods and Notification of Reasons for Refusal Thereof)
(1) If any application for additional registration of designated goods falls under any of the following subparagraphs, an examiner shall make a decision on the refusal of additional registration of designated goods with regard to such application: <Amended by Act No. 6414, Feb. 3, 2001>
  1. Where it falls under any of the subparagraphs of Article 23 (1);
  2. Where an applicant for additional registration of designated goods is not an owner of trademark right or applicant thereof;
  3. Where a trademark applied for additional registration of designated goods is not identical with the trademark of the registered trademark or trademark registration application; and
  4. Where a trademark right of registered trademark is extinguished, an application for trademark registration is waived, withdrawn or nullified, or a decision on the refusal of trademark registration in the application for the trademark registration becomes final and conclusive.
(2) If an examiner intends to make a decision on the refusal of additional registration under paragraph (1), he shall notify the applicant of the reasons for refusal, and give an opportunity to submit a written opinion with a period fixed. <Amended by Act No. 6414, Feb. 3, 2001>
Article 49 (Provisions Applied Mutatis Mutandis)
(1) The provisions of Articles 10 (1), 13, 14, 16, 17, 22, 30 through 32 of this Act, subparagraphs 1 through 5 and 7 of Article 148 of the Patent Act shall apply mutatis mutandis to an application for registration for the renewal of duration of a trademark right. <Amended by Act No. 5355, Aug. 22, 1997>
(2) The provisions of Articles 10 (1), 13, 14, 16, 17, 22 and 30 through 32 of this Act and subparagraphs 1 through 5 and 7 of Article 148 of the Patent Act shall apply mutatis mutandis to an application for registration of the conversion of the classification of goods. <Newly Inserted by Act No. 6414, Feb. 3, 2001>
(3) The provisions of Articles 9-2, 10 (1), 13 through 17-2, 20 through 22, and 24 through 32 of this Act, Article 142, subparagraphs 1 through 5 and 7 of Article 148, and Article 157 of the Patent Act, and Articles 143, 299 and 367 of the Civil Procedure Act shall apply mutatis mutandis to an application for additional registration of designated goods. <Amended by Act No. 5355, Aug. 22, 1997; Act No. 6626, Jan. 26, 2002; Act No. 6765, Dec. 11, 2002; Act No. 7290, Dec. 31, 2004>
Article 50 (Effects of Trademark Right)

Any person having a trademark right shall have an exclusive right to use the registered trademark as to the designated goods: Provided, That if an exclusive license is established with respect to the trademark right, this shall not apply to the extent that an exclusive licensee monopolizes the right to use the registered trademark.

Article 51 (Scope of Ineffectiveness of Trademark Right)
(1) No effect of trademark right (excluding geographical collective mark right) shall be extended to the trademark which falls under any of the following subparagraphs: <Amended by Act No. 5355, Aug. 22, 1997; Act No. 6414, Feb. 3, 2001; Act No. 7290, Dec. 31, 2004>
  1. A trademark indicating his own name, title or trade name, portrait, signature, seal or well-known pseudonym, stage name, pen name and well-known abbreviation thereof, in usually used ways, except in case where the trademark is used for any unlawful competition after the establishment of the trademark right is registered;
  2. A trademark indicating in the normal denomination, producing place, quality, raw materials, efficacy, use, quantity, shape (including shapes of wrappers), price or producing, processing and using methods and time of goods identical with or similar to the designated goods of the registered trademark in a common way;
  3. A trademark used commonly for goods identical with or similar to designated goods of the registered trademark, and trademark formed of distinguished geographical denomination and abbreviation thereof or map; and
  4. A trademark only with three-dimensional shapes that are essential to secure the functions of the designated goods of a registered trademark or their packaging.
(2) No effect of geographical collective mark right shall be extended to the trademark or geographical indication which falls under any of the following subparagraphs: <Newly Inserted by Act No. 7290, Dec. 31, 2004>
  1. A trademark falling under paragraph (1) 1, 2 (excluding the case of falling under the place of origin), or 4;
  2. A trademark used commonly for goods identical with designated goods of the registered geographical collective mark;
  3. A geographical indication used for goods identical with designated goods of the registered geographical collective mark, which is used by a person who as his business produces, manufactures, or processes the goods in the relevant region or locality, or any other geographical indication which has homonymous relation to the said geographical indication; and
  4. Where a geographical indication identical with or similar to the registered geographical collective mark is included in a registered trademark whose registration was applied for prior to the filing date of the geographical collective mark application concerned, the registered trademark used by a person having the trademark right or any other relevant exclusive or ordinary licensee as to the designated goods.
Article 52 (Scope of Protection of Registered Trademark, etc.)
(1) The scope of protection of registered trademark shall be determined by a trademark specified in an application for trademark registration.
(2) The scope of protection of designated goods shall be determined by the goods specified in an application for a trademark registration or an application for registration of the conversion of the classification of goods. <Amended by Act No. 6414, Feb. 3, 2001>
Article 53 (Relation to Design Right, etc. of Another Person)

Where a person having a trademark right, an exclusive or ordinary licensee uses a registered trademark, if it conflicts, depending on the using condition, with another person???s patent right, utility model right and design right applied before the date of the application for trademark registration, or another person???s copyright created before the date of the application for trademark registration, he may not use the registered trademark on such designated goods in conflict without obtaining the consent of the person having the patent right, utility model right, design right or copyright. <Amended by Act No. 5355, Aug. 22, 1997; Act No. 7289, Dec. 31, 2004>

Article 54 (Transfer and Co-Ownership of Trademark Right, etc.)
(1) The trademark right may be divided by designated goods so as to be transferred. In this case, similar designated goods shall be transferred all together.
(2) through (4) Deleted. <by Act No. 5355, Aug. 22, 1997>
(5) If the trademark right is owned jointly, no co-owner may transfer his portion or establish the pledge right of which the object is the portion, without obtaining the consent of all other co-owners. <Amended by Act No. 5355, Aug. 22, 1997>
(6) If the trademark right is owned jointly, no co-owner may establish any exclusive or ordinary use right to the trademark right without obtaining the consent of all other co-owners. <Amended by Act No. 5355, Aug. 22, 1997>
(7) The business emblem right shall be unalienable: Provided, That this shall not apply to a case of transferring it together with the business.
(8) The trademark right registered under the proviso of Article 7 (1) 3 shall be unalienable: Provided, That this shall not apply to a case of transferring it together with the business related to the emblem as prescribed by the main sentence of Article 7 (1) 3.
(9) The collective mark right shall be unalienable: Provided, That in case of a merger of corporations, it may be transferred with the permission of the Commissioner of the Korean Intellectual Property Office.
(10) No pledge right of which the object is the business emblem right, the trademark right as prescribed by the proviso of Article 7 (1) 3 and the collective mark right, may be established.
Article 54-2 (Division of Trademark Right)
(1) Where there are two or more designated goods under one trademark right, such trademark right may be divided for each of such designated goods.
(2) Where claims have been raised to nullify a trademark right according to Article 71 (2), the division under paragraph (1) may be made until a judgement has been made, even after the trademark right is expired.

[This Article Newly Inserted by Act No. 5355, Aug. 22, 1997]

Article 55 (Exclusive License)
(1) An owner of a trademark right may establish an exclusive license as to the trademark right for another person.
(2) An exclusive license may not be established as to a business emblem or a collective mark right.
(3) An exclusive licensee who has been established an exclusive license under paragraph (1), shall have the exclusive right to use the registered trademark on the designated goods to the extent as provided in the license agreement.
(4) An exclusive licensee shall indicate his own name or title on the goods.
(5) An exclusive licensee may not transfer the license without the consent of an owner of the trademark right, except in case of inheritance or other general succession.
(6) An exclusive licensee may not establish a pledge or establish a nonexclusive license on the exclusive license without the consent of an owner of the trademark right.
(7) The provisions of Article 54 (5) and (6) shall apply mutatis mutandis to exclusive licenses.
Article 56 (Effects of Registration on Trademark Right and Exclusive License)
(1) The following matters shall not take effect without being registered: <Amended by Act No. 6414, Feb. 3, 2001>
  1. Transfer (excluding a case of being transferred by inheritance or other general succession), change, or extinguishment by abandonment, renewal of duration, conversion of the classification of goods, addition of designated goods or restriction of disposal, of the trademark right;
  2. Establishment, transfer (excluding a case of being transferred inheritance or other general succession), change, extinguishment by abandonment or restriction on disposal, of the exclusive license; and
  3. Establishment, transfer (excluding a case of being transferred by inheritance or other general succession), change, extinguishment by abandonment, or restriction on disposal, of the pledge right of which the object is the trademark right or exclusive license.
(2) In case of inheritance of, or other general succession to the trademark right, exclusive license, and pledge right as referred to in any of subparagraphs of paragraph (1), the effect thereof shall be reported without delay to the Commissioner of the Korean Intellectual Property Office.
Article 57 (Non-exclusive License)
(1) An owner of a trademark right may establish a non-exclusive license as to his trademark right for another person.
(2) A non-exclusive licensee who has been established a non-exclusive license under paragraph (1) shall have the right to use the registered trademark on the designated goods to the extent as provided in the license agreement.
(3) A non-exclusive license may not, except in case of inheritance or other general succession, be transferred without the consent of an owner of the trademark right (or an owner of trademark right and an exclusive licensee, in case of a non-exclusive license as to an exclusive license).
(4) A pledge may not be established as to a non-exclusive license without the consent of an owner of the trademark right (or an owner of trademark right and an exclusive licensee, in case of a non-exclusive license as to an exclusive license).
(5) The provisions of Articles 54 (5) and 55 (2) and (4) shall apply mutatis mutandis to non-exclusive licenses.
Article 57-2 (Right to Use Trademark After Expiration of Duration of Patent Right, etc.)
(1) Where a patent right under a patent application filed prior to or on the filing date of a trademark application conflicts with the trademark right under said trademark application and the duration of the patent right has expired, a patentee shall have the right to use, within the scope of the original patent right, the registered trademark or another trademark similar thereto with respect to the designated goods covered by the trademark application or goods similar thereto: Provided, That this shall not apply to a case where the registered trademark is used for the purpose of unfair competition.
(2) Where a patent right under a patent application filed prior to or on the filing date of a trademark application conflicts with the trademark right under said trademark application and the duration of the patent right has expired, any person who has an exclusive license with respect to the patent right or a non-exclusive license with respect to the patent right or its exclusive license effective under the provisions of Article 118 (1) of the Patent Act at the time of its expiration shall have the right to use, within the scope of the original right, the registered trademark or another trademark similar thereto on the designated goods or goods similar thereto: Provided, That this shall not apply to a case where the registered trademark is used for the purpose of unfair competition.
(3) A person who has been granted the right to use a trademark under paragraph (2) shall pay reasonable remuneration to an owner of the trademark right or exclusive licensee.
(4) An owner of the trademark or exclusive licensee may demand a person who has a right to use the trademark under paragraph (1) or (2) to make the necessary indications to prevent confusion between the goods of the trademark owner or exclusive licensee???s business and the goods of the other person???s business.
(5) A right to use a trademark under paragraph (1) or (2) may not, except in case of inheritance or other general succession, be transferred without the consent of an owner of the trademark or an exclusive licensee.
(6) The provisions of paragraphs (1) through (5) shall apply mutatis mutandis to a case where a utility model right or a design right under a utility model application or a design application filed prior to or on the filing date of a trademark application conflict with the trademark right under said trademark application and the duration of the utility model right or the design right has expired. <Amended by Act No. 7289, Dec. 31, 2004>

[This Article Newly Inserted by Act No. 6414, Feb. 3, 2001]

Article 58 (Effects of Registration of Non-exclusive License, etc.)
(1) The matters falling under the following subparagraphs shall have no effect on any third parties unless they are registered:
  1. Establishment, transfer (excluding a case of being transferred by inheritance or other general succession), change, extinguishment by abandonment or restriction on disposal, of the non-exclusive license; and
  2. Establishment, transfer (excluding a case of being transferred by inheritance or other general succession), change, extinguishment by abandonment or restriction on disposal, of the pledge right of which the object is the non-exclusive license.
(2) Where a non-exclusive license is registered, it shall also be effective to any person who acquires the trademark right or an exclusive license after the registration.
(3) In case of inheritance of or other general succession to the non-exclusive license and pledge right under the subparagraphs of paragraph (1), the effect thereof shall be reported without delay to the Commissioner of the Korean Intellectual Property Office.
Article 59 (Abandonment of Trademark Right)

An owner of a trademark right may abandon his trademark right for any one of the designated goods.

Article 60 (Restriction on Abandonment of Trademark Right, etc.)
(1) An owner of a trademark right may not abandon his trademark right without the consent of an exclusive or non-exclusive licensee or pledgee.
(2) An exclusive licensee may not abandon his exclusive license without the consent of a pledgee or non-exclusive licensee under Article 55 (6).
(3) A non-exclusive licensee cannot abandon his non-exclusive license without the consent of a pledgee under Article 57 (4).
Article 61 (Effect of Abandonment)

Where a trademark right, an exclusive or non-exclusive license, or a pledge has been abandoned, the trademark right, exclusive or non-exclusive license or pledge shall be extinguished from that time.

Article 62 (Pledge)

Where a pledge has been established for the purpose of a trademark right or an exclusive or non-exclusive license, a pledgee may not use the registered trademark.

Article 63 (Subrogation for Pledge Right)

The pledge right may be exercised even to any considerations or things to be received for the use of the trademark right under this Act: Provided, That it shall be seized before it is paid or handed over.

Article 64 (Extinguishment of Trademark Right)

Where a successor fails to make a transfer registration of trademark right within three years after from the date of death of the original owner of trademark right, the trademark right shall be extinguished on the date following the expiration of three years from the date of such original owner???s death.

Article 64-2 (Extinguishment of Trademark Right in Absence of Registration of Conversion of Classification of Goods)
(1) Where there are any reason falling under any of the following subparagraphs, a trademark right covering designated goods of an application for registration of the conversion of the classification of goods shall extinguish on the expiration date of the duration of trademark right that is contained within the time limit under Article 46-2 (3) for registering the conversion of the classification of goods:
  1. Where a person who is entitled to register the conversion of the classification of goods does not file an application thereof within time limit under Article 46-2 (3);
  2. Where an application for registration of the conversion of the classification of goods has been withdrawn;
  3. Where a procedure relating to the conversion of the classification of goods has been invalidated under Article 6 (1) of the Patent Act applied mutatis mutandis under Article 5 of this Act;
  4. Where a decision to refuse registration of the conversion of the classification of goods becomes final and conclusive; and
  5. Where a trial decision invalidating registration of the conversion of the classification of goods under Article 72-2 (2) becomes final and conclusive.
(2) A trademark right covering designated goods that are the object of but not indicated in an application for registration of the conversion of the classification of goods under Article 46-2 (2) shall extinguish on the date when the designated goods that are indicated in the said application are converted and registered under Article 46-5.

[This Article Newly Inserted by Act No. 6414, Feb. 3, 2001]


CHAPTER VI PROTECTIONOFOWNER OF TRADEMARK RIGHT[edit]

Article 65 (Right to Request for Prohibition of Infringement)
(1) An owner of a trademark right or exclusive licensee may request the person who has infringed or might infringe his right to prohibit or prevent such infringement.
(2) Where an owner of a trademark right or exclusive licensee makes a request under paragraph (1), he may request the disuse of things by which the infringement is caused, removal of equipment offered for the infringement, and other acts necessary for the prevention of infringement.
Article 66 (Act Considered as Infringement)
(1) Any act which falls under any of the following subparagraphs shall be considered to infringe a trademark right (excluding a geographical collective mark right) or exclusive license: <Amended by Act No. 5355, Aug. 22, 1997; Act No. 7290, Dec. 31, 2004>
  1. An act of using a trademark identical with a registered trademark of another person on the goods similar to the designated goods, or using a trademark similar to the registered trademark of another person on the goods identical with or similar to the designated goods;
  2. An act of delivering, selling, forging, imitating or possessing a trademark identical with or similar to the registered trademark of another person with intention to use or make another person use it on any goods identical with or similar to the designated goods;
  3. An act of manufacturing, delivering, selling or possessing tools used for making the registered trademark of another person with intention to forge or imitate or to make a third person forge or imitate the registered trademark; and
  4. An act of keeping, for a purpose of transfer or delivery, goods identical with or similar to the designated goods on which another person???s registered trademark or any other similar trademark is used.
(2) Any act which falls under any of the following subparagraphs shall be considered to infringe a geographical collective mark right: <Newly Inserted by Act No. 7290, Dec. 31, 2004>
  1. An act of using a trademark (excluding a homonymous geographical indication; hereafter in this paragraph the same shall apply) similar to a registered geographical collective mark of another person on the goods identical with the designated goods;
  2. An act of delivering, selling, forging, imitating or possessing a trademark identical with or similar to the registered geographical collective mark of another person with intention to use or make a third person use it on any goods identical with the designated goods;
  3. An act of manufacturing, delivering, selling or possessing tools used for making the registered geographical collective mark of another person with intention to forge or imitate or to make a third person forge or imitate the registered geographical collective mark; and
  4. An act of keeping, for a purpose of transfer or delivery, goods identical with the designated goods on which a trademark identical with or similar to another person???s registered geographical collective mark is used.
Article 67 (Presumption, etc., of Amount of Damage)
(1) Where an owner of a trademark right or an exclusive licensee claims compensation from a person who has intentionally or negligently infringed a trademark right or exclusive license for damages caused by the infringer???s transfer of infringing articles, the amount of damages may be calculated as the number of transferred articles multiplied by the profit per unit of the articles that the owner of the trademark right or exclusive licensee might have sold in the absence of the said infringement. In this case, the compensation may not exceed an amount calculated as follows: the estimated profit per unit multiplied by the number of articles that the trademark right owner or licensee could have produced subtracted by the number of articles actually sold: Provided, That where the owner of the trademark right or exclusive licensee fails to sell his or her product for reasons other than infringement, a sum calculated according to the number of articles subject to said circumstances shall be deducted. <Newly Inserted by Act No. 6414, Feb. 3, 2001>
(2) Where an owner of a trademark right or an exclusive licensee claims compensation from a person who has intentionally or negligently infringed on the trademark right or the exclusive license due to damages caused to him by such infringement, the profits gained by the infringer by the infringement shall be presumed to be the amount of damage suffered by the owner of the trademark right or exclusive licensee.
(3) Where an owner of a trademark right or an exclusive licensee claims compensation from a person who has intentionally or negligently infringed the trademark right or exclusive license due to damages caused to him by the infringement, the amount of money which he would normally be entitled to receive for the use of the registered trademark may be claimed as the amount of damages suffered by him.
(4) Notwithstanding paragraph (3), where the amount is in excess of the amount under the same paragraph, the amount in excess may also be claimed as compensation for damage. In this case, the court may take into consideration whether there has been either willfulness or gross negligence on the part of the person who has infringed the trademark right or the exclusive license when awarding damages. <Amended by Act No. 6414, Feb. 3, 2001>
(5) In litigation relating to the infringement of a trademark right or exclusive license, where the court recognizes that the nature of the facts of the case make it difficult to provide evidence proving the amount of damage that has occurred, notwithstanding paragraphs (1) through (4), the court may determine a reasonable amount on the basis of an examination of the evidence and on a review of all the arguments. <Newly Inserted by Act No. 6414, Feb. 3, 2001>
Article 68 (Presumption of Intention)

Any person who has infringed on a trademark right or exclusive license of another person, indicating that it is a registered trademark under Article 90, shall, with respect to the infringement, be presumed to have known that the trademark was already registered.

Article 69 (Recovery of Credit of Owner, etc. of Trademark Right)

With respect to a person who makes an owner of a trademark right or exclusive licensee lose his business credit by infringing intentionally or by negligence on the trademark right or exclusive license, the court may, upon a request of the owner of the trademark right or exclusive licensee, order any measures necessary for recovering the business credit of the owner of the trademark right or exclusive licensee in lieu of a compensation for damages or together with it.

Article 70 (Presentation of Documents)

In a litigation as to an infringement on a trademark right or exclusive license, the court may, upon a request of a party, order the other party to present documents necessary for calculating the damage caused by the infringement: Provided, That this shall not apply to a case where a person who has the documents in hand has a justifiable reason for refusal of presentation of the documents.


CHAPTER VII TRIAL[edit]

Article 70-2 (Trial on Decision of Refusal)

Any person dissatisfied with a decision of refusal of trademark registration, a decision of refusal of additional registration of designated goods, a decision of refusal of registration for the renewal of duration of a trademark right, or a decision of refusal of registration of the conversion of the goods classification (hereinafter referred to as ???decision of refusal???) may make a request for trial within thirty days from the date of receipt of a certified copy of the decision of refusal. <Amended by Act No. 6414, Feb. 3, 2001> [This Article Newly Inserted by Act No. 4895, Jan. 5, 1995]

Article 70-3 (Trial on Decision of Rejection of Correction)

Any person dissatisfied with a decision of rejection of correction under Article 17 (1) may request a trial within thirty days from the date of receipt of a certified copy of the decision. [This Article Newly Inserted by Act No. 4895, Jan. 5, 1995]

Article 71 (Nullity Trial on Trademark Registration)
(1) If a trademark registration or additional registration of designated goods falls under any of the following subparagraphs, an interested person or examiner may request a nullity trial. In this case, if there are two or more designated goods of the registered trademark, it may be requested by each designated goods: <Amended by Act No. 5355, Aug. 22, 1997; Act No. 6414, Feb. 3, 2001; Act No. 7290, Dec. 31, 2004>
  1. Where a trademark registration or additional registration of the designated goods is in contravention of the proviso of Article 3, Articles 6 through 8, the latter part of Article 12 (2), Article 12 (5), (7) through (9), 23 (1) 4 through 6 of this Act, or Article 25 of the Patent Act which is applicable mutatis mutandis under Article 5;
  2. Where a trademark registration or additional registration of designated goods is in contravention of the treaty;
  3. Where a trademark registration or additional registration of designated goods is made by a person who fails to succeed to the right created by the application for trademark registration;
  4. Where an owner of a trademark right becomes a person who is unable to enjoy the trademark right under Article 25 of the Patent Act which is applicable mutatis mutandis under Article 5 or such registered trademark is in contravention of the treaty;
  5. Where a registered trademark falls under any of the subparagraphs of Article 6 (1) after the registration of the trademark (excluding a case falling under Article 6 (2)); and
  6. Where a geographical indication which constitutes a registered geographical collective mark is no more protected or used by the country of origin after the registration of the geographical collective mark under Article 41.
(2) A nullity trial as referred to in paragraph (1) may be requested even after the trademark right is extinguished.
(3) If a trial decision that a trademark registration be nullified, becomes final and conclusive, the trademark right shall be considered not to have existed from the beginning: Provided, That if the trial decision that the trademark registration be nullified under paragraph (1) 4 through 6 becomes final and conclusive, the trademark right shall be considered not to have existed from the time when the registered trademark falls under the same subparagraph. <Amended by Act No. 6414, Feb. 3, 2001; Act No. 7290, Dec. 31, 2004>
(4) In applying the proviso of Article 3, where it is unable to specify the time when a registered trademark falls under paragraph (1) 4 through 6, the trademark right shall be deemed not to have existed from the time when a request for a nullity trial under paragraph (1) is requested and the contents of the request is made known to the public on the original register. <Newly Inserted by Act No. 6414, Feb. 3, 2001; Act No. 7290, Dec. 31, 2004>
(5) Where a trial under paragraph (1) has been requested, the presiding trial examiner shall notify the exclusive licensee of the trademark right, and other persons who have any registered rights relating to the trademark, regarding the subject of the request.
Article 72 (Nullity Trial on Registration for Renewal of Duration of Trademark Right)
(1) Where a registration for the renewal of duration of a trademark right falls under any of the following subparagraphs, an interested person or examiner may request a nullity trial. In this case, if there are two or more designated goods of the renewedly registered trademark, it may be requested for each of designated goods:
  1. Deleted; <by Act No. 5355, Aug. 22, 1997>
  2. Where a registration for the renewal of duration of a trademark right is in contravention of the provisions of Article 43 (2); and
  3. Where an application for a registration for the renewal of duration of a trademark right has been filed by a person other than the owner of the trademark right.
(2) The nullity trial as referred to in paragraph (1) may be requested even after the trademark right is extinguished.
(3) Where a trial decision that a registration for renewal of duration of a trademark right be nullified becomes final and conclusive, such registration shall be considered not to have been made from the beginning.
(4) The provisions of Article 71 (5) shall apply mutatis mutandis to the request for trial as referred to in paragraph (1). <Amended by Act No. 6765, Dec. 11, 2002>
Article 72-2 (Nullity Trial on Registration for Conversion of Classification of Goods)
(1) An interested person or an examiner may request a trial to nullify a registration of the conversion of the classification of goods in a case falling under any of the following subparagraphs. In this case, if there are two or more designated goods relating to the registration for the conversion of the classification of goods, a request for a nullity trial may be made for each of the designated goods:
  1. Where the registration of the conversion of the classification of goods has been granted for designated goods not covered by the present registered trademark or where the scope of the designated goods has been expanded;
  2. Where an application for the registration for the conversion of the classification of goods has been filed by a person who is not the owner of the concerned trademark right; and
  3. Where the registration for the conversion of the classification of goods is in violation of Article 46-2 (3).
(2) The provisions of Article 71 (2) and (5) shall apply mutatis mutandis to a nullity trial on a registration of the conversion of the classification of goods.
(3) Where a trial decision nullifying a registration of the conversion of the classification of goods has become final and conclusive, the registration of the conversion of the classification of goods shall be deemed to have never existed.

[This Article Newly Inserted by Act No. 6414, Feb. 3, 2001]

Article 73 (Revocation Trial on Trademark Registration)
(1) If a registered trademark falls under any of the following subparagraphs, a revocation trial on the trademark registration may be requested: <Amended by Act No. 5355, Aug. 22, 1997; Act No. 7290, Dec. 31, 2004>
  1. Deleted; <by Act No. 5355, Aug. 22, 1997>
  2. Where an owner of a trademark right makes consumers mistake the quality of goods or confused with goods related to any business of another person by using intentionally a trademark similar to the registered trademark on the designated goods, or using the registered trademark or similar trademark on goods similar to the designated goods;
  3. Where an owner of a trademark right, exclusive or non-exclusive licensee fails to use the registered trademark on the designated goods in Korea without any justifiable reason, for three or more years consecutively before a revocation trial is requested;
  4. Where it is in contravention of the provisions of Article 54 (1) (latter part), (5), (7) through (9);
  5. Where for a collective mark, a member of the organization concerned allows another person to use the collective mark in contravention of the articles of association of the organization, or a member of the organization concerned misleads consumers as to the quality or geographical origin of the goods or makes them confused with goods related to any business of another person by using the collective mark in contravention of the articles of association of the organization: Provided, That this shall not apply to a case where an owner of the collective mark right pays a considerable attention to the supervision of the member;
  6. Where it might make consumers mistake the quality of goods or confused with goods related to any business of another person by modifying the articles of association under Article 9 (3) after the establishment of the collective mark is registered;
  7. Where a trademark falling under the main sentence of Article 23 (1) 3 is registered, and an owner of the right to the trademark requests a revocation trial within five years from the day of trademark registration;
  8. Where an exclusive or non-exclusive licensee misleads consumers as to the quality of goods or makes them confused with goods related to any business of another person by using the registered trademark or similar trademark on the designated goods or similar goods: Provided, That this shall not apply to a case where an owner of trademark right pays a considerable attention;
  9. Where similar trademarks belong to each of different persons having trademark right because of transfer of trademark right, and one of them misleads consumers as to the quality of goods or makes them confused with goods related to any business of another person by using his own registered trademark upon designated goods like or similar goods designated by his own registered trademark to perform practices of unfair competition;
  10. Where for a collective mark, a third person misleads consumers as to the quality or geographical origin of goods, or makes them confused with goods related to any business of another person, by using the collective mark, and, in spite of such fact, an owner of the collective mark right does not take a proper measure therefor on purpose;
  11. Where, after effecting the registration of a geographical collective mark, the owner of the geographical collective mark right prohibits any person who produces, manufactures, or processes designated goods entitled for the geographical indication as his business from joining the organization through the articles of association of the organization concerned, or includes very strict conditions of entry into the organization in the articles of association concerned, which do not substantially allow any other person to join the organization, or allows any person disqualified for using the geographical indication to enter the organization; and
  12. Where for a geographical collective mark, the owner of the geographical collective mark right or a member of the organization concerned misleads consumers as to the quality of the goods or makes them confused with the geographical origin of the goods by using the collective mark in contravention of Article 90-2.
(2) Deleted. <by Act No. 5355, Aug. 22, 1997>
(3) Where a revocation trial is requested by the reason that it falls under paragraph (1) 3, if there are two or more designated goods of the registered trademark, the revocation trial on some designated goods may be requested.
(4) Where a revocation trial is requested by the reason that it falls under paragraph (1) 3, an owner of trademark right may not be exempted from the revocation of the trademark registration as to the designated goods related to a request for revocation trial, unless the requested person proves that he has used duly in Korea the registered trademark on one or more designated goods related to a request for revocation trial within three years before the day of trial request: Provided, That this shall not apply to a case where the requested person has proved a justifiable reason for not using it. <Amended by Act No. 5355, Aug. 22, 1997>
(5) After a revocation trial is requested by the reason that it falls under paragraph (1) 2, 3, 5, 6, and 8 through 12, even where the fact corresponding to the cause of the trial request disappears, the cause of revocation shall not be affected. <Amended by Act No. 5355, Aug. 22, 1997; Act No. 7290, Dec. 31, 2004>
(6) A revocation trial as referred to in paragraph (1) may be requested only by an interested person: Provided, That a trial made by the reason that it falls under subparagraphs 2, 5, 6, and 8 through 12 of the said paragraph may be requested by any person. <Amended by Act No. 5355, Aug. 22, 1997; Act No. 7290, Dec. 31, 2004>
(7) When a trial decision that a trademark registration be revoked, becomes final and conclusive, the trademark right shall be extinguished from that time onward.
(8) The provisions of Article 71 (5) shall apply mutatis mutandis to the request for trial as referred to in paragraph (1). <Amended by Act No. 5355, Aug. 22, 1997; Act No. 6765, Dec. 11, 2002>
Article 74 (Revocation Trial on Registration of Exclusive or Non-Exclusive License)
(1) Where an exclusive or non-exclusive licensee commits an act falling under Article 73 (1) 8, a revocation trial on registration of exclusive or non-exclusive license may be requested.
(2) After a revocation trial on a registration of exclusive or non-exclusive license is requested by the reason that it falls under paragraph (1), even where the fact corresponding to the cause of the trial request disappears, the cause of revocation shall not be affected.
(3) Any person may request a trial on revocation of exclusive or non-exclusive license under paragraph (1).
(4) Where a trial decision that the registration of exclusive or non-exclusive license be revoked becomes final and conclusive, the exclusive or non-exclusive license shall be extinguished from that time onward.
(5) The presiding trial examiner shall, upon a request under paragraph (1), notify it to a non-exclusive licensee on the exclusive license and other persons having the right registered in relation to the exclusive license, or persons having the right registered in relation to the non-exclusive license.
Article 75 (Affirmation Trial on Scope of Right)

An owner of trademark right or interested person may request an affirmation trial on the scope of the trademark right for the purpose of affirming the scope of right to the registered trademark.

Article 76 (Period of Exclusion)
(1) A nullity trial on a trademark registration, a registration for renewal of duration of a trademark right, and a registration of the conversion of the classification of goods under Article 7 (1) 6 through 9-2 and 14, Articles 8, 72 (1) 2, and 72-2 (1) 3 shall not be requested after five years from the registration date of the trademark, the registration date of the renewal of duration of the trademark right, or the registration date of the conversion of the classification of goods. <Amended by Act No. 4597, Dec. 10, 1993; Act No. 5355, Aug. 22, 1997; Act No. 6414, Feb. 3, 2001; Act No. 7290, Dec. 31, 2004>
(2) A revocation trial on a trademark registration and on the registration of an exclusive or non-exclusive license under Articles 73 (1) 2, 5, 6, and 8 through 12 and 74 (1) shall not be requested after three years from the date on which the alleged facts have ceased to exist. <Amended by Act No. 5355, Aug. 22, 1997; Act No. 7290, Dec. 31, 2004>
Article 77 (Mutatis Mutandis Application of Patent Act)

The provisions of Articles 139, 140, 141 through 153, 153-2 and 154 through 166 of the Patent Act shall apply mutatis mutandis to trials. In such cases, "nullity trial under Article 133 (1), 134 (1) or 137 (1)" in Article 139 (1) of the same Act shall read "nullity trial under Article 71 (1), 72 (1) and 72-2 (1), revocation trial under Article 73 (1)", "nullity trial of Article 133 (1)" in Article 161 (2) of the same Act shall read "nullity trial under Article 71 (1), 72 (1) and 72-2 (1), revocation trial under Article 73 (3)", "Article 133 (1), 134 (1), 135 and 137 (1)" in Article 165 (1) of the same Act shall read "Article 71 (1), 72 (1), 72-2 (1), 73 (1) and 75", and "Article 132-3, 136 or 138" in Article 165 (3) of the same Act shall read "Article 70-2 or 70-3". [This Article Wholly Amended by Act No. 6414, Feb. 3, 2001]

Article 78 Deleted.

<by Act No. 4895, Jan. 5, 1995>

Article 79 (Form of Request for Trial on Decision of Refusal or Decision of Rejection for Correction)
(1) Any person who requests a trial on the decision of refusal under Article 70-2 or a trial on the decision of rejection for correction under Article 70-3 shall submit to the President of the Intellectual Property Tribunal a request for trial specifying the following matters: <Amended by Act No. 4895, Jan. 5, 1995; Act No. 6414, Feb. 3, 2001>
1. The name and address of requester (in case of a corporation, its title and place of business);
1-2. The name, address, or place of business, if any, of an agent (if the agent is a patent corporation, its title, place of office, and the name of the designated patent attorney);
2. The date and number of the application;
3. The designated goods and the classification thereof;
4. The date of examiner's decision of refusal or rejection for correction;
5. The indication of trial case;
6. The purpose and reasons for the request; and
7. Deleted. <by Act No. 6414, Feb. 3, 2001>
(2) Where a trial on the decision of refusal under Article 70-2 is requested, and where such decision of refusal is based on the acceptance of an objection to the trademark registration, the President of the Intellectual Property Tribunal shall notify it to the applicant. <Amended by Act No. 4895, Jan, 5, 1995; Act No. 6414, Feb. 3, 2001>
Article 80 Deleted.

<by Act No. 4895, Jan. 5, 1995>

Article 81 (Mutatis Mutandis Application of Provisions concerning Examination in Trial to Decision of Refusal)
(1) The provisions of Articles 15, 17, 18, 23 (2), 24 through 30, 45 (2), 46-4 (2) and 48 (2) shall apply mutatis mutandis to a trial on a decision of refusal. In this case, the provisions of Article 24 shall not apply to a case where an application for trademark registration or additional registration of designated goods has already been published. <Amended by Act No. 4895, Jan. 5, 1995; Act No. 6414, Feb. 3, 2001>
(2) Where Article 17 is applicable mutatis mutandis under paragraph (1), "if any applicant requests a trail against a decision on the rejection of correction under Article 70-3" in Article 17 (3) shall read "if a lawsuit is brought under Article 186 (1) of the Patent Act applied under Article 86 (2) of the Trademark Act", and "until the trial decision of the trial has become final and conclusive" shall read "until the judgement has become final and conclusive". <Amended by Act No. 4895, Jan. 5, 1995>
(3) The provisions of Articles 17 (4) through (6), 23 (2), 45 (2), 46-4 (2) and 48 (2) applied mutatis mutandis under paragraph (1) shall apply mutatis mutandis to a case where the reasons for decision of refusal and other reasons for refusal are found. <Amended by Act No. 6414, Feb. 3, 2001>
Article 82 (Special Provisions of Trial on Decision of Refusal or Decision of Rejection for Correction)
(1) The provisions of Articles 172 and 176 of the Patent Act shall apply mutatis mutandis to the trial on the decision of refusal and the decision of rejection for amendment. In this case, "Article 132-3" in Article 176 (1) of the Patent Act shall read "Article 70-2 or 70-3", and "decision of refusal to grant a patent, refusal to grant an extension of duration of a patent right, or revocation of a patent" in Article 176 (1) of the Patent Act shall read "decision of refusal or decision of rejection for correction". <Amended by Act No. 6414, Feb. 3, 2001>
(2) The provisions of Articles 147 (1) and (2), 155, and 156 of the Patent Act which are applicable mutatis mutandis under Article 77 shall not apply to the trial on the decision of refusal as referred to in Article 70-2 and the decision of rejection for correction as referred to in Article 70-3. <Amended by Act No. 6414, Feb. 3, 2001>

[This Article Wholly Amended by Act No. 4895, Jan. 5, 1995]


CHAPTER VIII RETRIAL AND LITIGATION[edit]

Article 83 (Request for Retrial)
(1) Any party may request a retrial on a trial decision which has become final and conclusive.
(2) The provisions of Articles 451 and 453 of the Civil Procedure Act shall apply mutatis mutandis to the request for retrial under paragraph (1). <Amended by Act No. 6626, Jan. 26, 2002>
Article 84 (Appeal of Dissatisfaction with Fraudulent Trial Decision)
(1) If the parties to a trial has a trial decision made for the purpose of fraudulently injuring the right or interest of the third person in conspiracy with each other, the third person may request a retrial on the final and conclusive trial decision. <Amended by Act No. 4895, Jan. 5, 1995>
(2) In case of request for retrial as referred to in paragraph (1), the parties to a trial shall be joint defendants. <Amended by Act No. 4895, Jan. 5, 1995>
Article 85 (Restriction on Effect of Trademark Right Restored by Retrial)

In a case of falling under any of the following subparagraphs, no effect of trademark right shall extend to any act using in good faith a trademark identical with the registered trademark on any goods identical with the designated goods after the trial decision becomes final and conclusive and before the request for retrial is registered, and any act falling under any subparagraph of Article 66 (1) or (2): <Amended by Act No. 7290, Dec. 31, 2004>

  1. Where, after a trademark registration or registration for the renewal of duration of a trademark right is nullified, its effect is restored by the retrial;
  2. Where, after a trademark registration is revoked, its effect is restored by the retrial; and
  3. Where, after a trial decision that it is not included in the scope of the trademark right becomes conclusive, a trial decision contrary to it becomes final and conclusive by the retrial.
Article 86 (Mutatis Mutandis Application of Patent Act, etc.)
(1) The provisions of Articles 180 and 184 of the Patent Act and Article 459 (1) of the Civil Procedure Act shall apply mutatis mutandis to the procedures and requests for a retrial. <Amended by Act No. 6626, Jan. 26, 2002>
(2) The provisions of Articles 186 through 188 and 189 of the Patent Act shall apply mutatis mutandis to a litigation. In this case, "action against a trial decision" in Article 186 (1) of the same Act shall read "action against a trial decision and decision of rejection for amendment under Article 17 (1) applied mutatis mutandis under Article 81 (1) (including cases under Article 184 of the Patent Act applied mutatis mutandis under Article 86 (1))" and "Articles 133 (1), 134 (1), 135 (1), 137 (1) and 138 (1) and (3)" in the proviso of Article 187 of the same Act shall read "Articles 71 (1), 72 (1), 72-2 (1), 73 (1) and (2), 74 (1) and 75". <Amended by Act No. 4895, Jan. 5, 1995; Act No. 6414, Feb. 3, 2001>


CHAPTER VIII-2 INTERNATIONAL APPLICATION UNDER PROTOCOL[edit]

SECTION 1 International Application, etc.[edit]

Article 86-2 (International Application)

A person who desires to seek an international registration (hereinafter referred to as an "international registration") as referred to in Article 2 (1) of the Protocol shall file with the Commissioner of the Korean Intellectual Property Office an international application on the basis of a registered trademark or an application for trademark registration that falls under any of the following subparagraphs:

  1. The applicant's application for trademark registration;
  2. The applicant's trademark registration; or
  3. The applicant's application for trademark registration and the applicant's trademark registration.

[This Article Newly Inserted by Act No. 6414, Feb. 3, 2001]

Article 86-3 (Persons Capable of Application)
(1) Any Person who is capable of filing an international application with the Commissioner of the Korean Intellectual Property Office shall be as follows:
  1. A national of the Republic of Korea; or
  2. A person who has an address (in case of a corporation, its place of business) in the Republic of Korea.
(2) Where two or more persons file a joint international application, they shall meet the requirements for an applicant as prescribed by the Ordinance of the Ministry of Commerce, Industry and Energy.

[This Article Newly Inserted by Act No. 6414, Feb. 3, 2001]

Article 86-4 (Procedure for International Application)
(1) A person desiring to file an international application shall submit to the Commissioner of the Korean Intellectual Property Office a request for an international application (hereinafter referred to as "international application") and the documents necessary for an international application, which are to be prepared in a language prescribed by the Ordinance of the Ministry of Commerce, Industry and Energy.
(2) The following particulars shall be indicated in an international application:
  1. The name and address of the applicant (in case of a corporation, its title and place of business);
  2. Matters relevant to the requirements for an applicant under Article 86-3;
  3. The names of the contracting States (including inter-governmental organizations; hereinafter referred to as the "designated state") where protection of the trademark is desired;
  4. The filing date and the application number of the basic application under Article 2 (1) of the Protocol (hereinafter referred as to the "basic application") or the registration date and the registration number of the basic registration under Article 2(1) of the Protocol (hereinafter referred as to the "basic registration");
  5. The trademark for which international registration is being sought;
  6. The goods and the classification of goods for which international registration is being sought; and
  7. The particulars prescribed by the Ordinance of the Ministry of Commerce, Industry and Energy.
(3) Where a person desiring to file an international application claims color as a distinctive feature of a trademark, he shall be required to state the purpose thereof and the color or the combination of colors, and to append a copy of the said trademark in color to the international application.

[This Article Newly Inserted by Act No. 6414, Feb. 3, 2001]

Article 86-5 (Examination, etc. of Particulars in International Application)
(1) Where the particulars entered in an international application correspond to the particulars entered in the basic application or the basic registration, the Commissioner of the Korean Intellectual Property Office shall indicate an acknowledgement of the correspondence and the date of receipt of the international application in the international application.
(2) After indicating the date of receipt, etc. under Paragraph (1), the Commissioner of the Korean Intellectual Property Office shall transmit the international application and the documents necessary for the international application to the International Bureau under Article 2 (1) of the Protocol (hereinafter referred to as the "International Bureau") and a copy of the international application to the applicant.

[This Article Newly Inserted by Act No. 6414, Feb. 3, 2001]

Article 86-6 (Subsequent Designation)
(1) A holder of an international registration who desires to expend protection of a internationally registered trademark by subsequently designating additional states or inter-governmental organizations (hereinafter referred to as a ???subsequent designation???) may request a subsequent designation from the Commissioner of the Korean Intellectual Property Office under the conditions as prescribed by the Ordinance of the Ministry of Commerce, Industry and Energy.
(2) In the application of paragraph (1), a holder of an international registration may subsequently designate all or part of the internationally registered and designated goods.

[This Article Newly Inserted by Act No. 6414, Feb. 3, 2001]

Article 86-7 (Renewal of Duration)
(1) A holder of an international registration may renew the duration of an international registration for each additional 10 years.
(2) A person who desires to renew the duration of an international registration under Paragraph (1) may request the renewal of the duration of international registration to the Commissioner of Korean Intellectual Property Office under the conditions as prescribed by the Ordinance of the Ministry of Commerce, Industry and Energy.

[This Article Newly Inserted by Act No. 6414, Feb. 3, 2001]

Article 86-8 (Change of Record in the Ownership of International Registration)
(1) A holder of an international registration or his successor may record a change in the ownership of an international registration with regard to all or part of the designated goods or the designated states.
(2) A person who desires to record a change in the ownership of an international registration under paragraph (1) may file a request for record of a change of ownership of an international registration with the Commissioner of Korean Intellectual Property under the conditions as prescribed by the Ordinance of the Ministry of Commerce, Industry and Energy.

[This Article Newly Inserted by Act No. 6414, Feb. 3, 2001]

Article 86-9 (Payment of Fees)
(1) A Person who falls under any of the following subparagraphs shall pay a fee to the Commissioner of the Korean Intellectual Property Office:
  1. A person who desires to file an international application;
  2. A person who desires to make a subsequent designation;
  3. A person who desires to request the renewal of the duration of an international registration under Article 86-7; and
  4. A person who desires to request the record of a change in the ownership of an international registration under Article 86-8.
(2) Matters necessary for the fees, the payment methods and period thereof under paragraph (1) shall be prescribed by the Ordinance of the Ministry of Commerce, Industry and Energy.

[This Article Newly Inserted by Act No. 6414, Feb. 3, 2001]

Article 86-10 (Correction for Unpaid Fees)

Where a person who falls under any of the subparagraphs of Article 86-9 (1) fails to pay the fees required under Article 86-9 (2), the Commissioner of the Korean Intellectual Property Office may order him to correct it within a designated time limit. [This Article Newly Inserted by Act No. 6414, Feb. 3, 2001]

Article 86-11 (Invalidation of Procedure)

Where a person who has been ordered to make correction under Article 86-10 fails to pay the fees within the designated time limit, the Commissioner of the Korean Intellectual Property Office may invalidate the said procedure. [This Article Newly Inserted by Act No. 6414, Feb. 3, 2001]

Article 86-12 (Registration of Change in Particulars of International Registration, etc.)

Matters necessary for a request for registration of a change to the particulars of an international registration or other international applications shall be prescribed by the Ordinance of the Ministry of Commerce, Industry and Energy. [This Article Newly Inserted by Act No. 6414, Feb. 3, 2001]

Article 86-13 (Exclusion for Business Emblem)

The provisions of Articles 86-2 through 86-12 shall not apply to business emblems. [This Article Newly Inserted by Act No. 6414, Feb. 3, 2001]


SECTION 2 Special Caseson Application for International Trademark Registration[edit]

Article 86-14 (Application for International Trademark Registration)
(1) An international application that has been registered internationally under the Protocol and that designates the Republic of Korea as a designated State (including subsequent designation) shall be considered to be an application for trademark registration under this Act.
(2) In the application of paragraph (1), the date of international registration under Article 3(4) of the Protocol (hereinafter referred to as the "date of international registration") shall be considered to be the filing date of application for trademark registration under this Act: Provided, That in case of an international application that subsequently designates the Republic of Korea, the date on which the subsequent designation is recorded in the International Register (referring to that under Article 2(1) of the Protocol; hereinafter the same shall apply) (hereinafter referred to as the "date of subsequent designation") shall be considered to be the filing date of the application for trademark registration under this Act.
(3) In the event that an international application is considered to be an application for trademark registration under paragraph (1), the name and address of the owner of the international registration (in case of a corporation, its title and place of business), the trademark, the designated goods and the classifications thereof that are recorded in the International Register shall be deemed to be the name and address of the applicant (in case of a corporation, its title and place of business), the trademark, the designated goods and the classifications thereof, respectively, under this Act.

[This Article Newly Inserted by Act No. 6414, Feb. 3, 2001]

Article 86-15 (Special Cases for Business Emblem)

The provisions for business emblems shall not apply to an application for international trademark registration. [This Article Newly Inserted by Act No. 6414, Feb. 3, 2001]

Article 86-16 (Special Cases for Application for International Trademark Registration)
(1) In applying this Act to an application for international trademark registration, the purport of the priority claim, the name of the country in which the basic application was filed, and the filing date of the application recorded in the International Register shall be deemed to be the purport of the priority claim, the name of the country in which the basic application was filed, and the filing date of the application that are indicated in the application for trademark registration.
(2) In applying this Act to an application for international trademark registration, the purport of a three-dimensional trademark that is recorded in the International Register shall be deemed to be the purport of a three-dimensional trademark that is indicated in the application for trademark registration.
(3) A person who desires to obtain registration for a collective mark shall submit the articles of association prescribed by Article 9 (3) within the time limit fixed by the Ordinance of the Ministry of Commerce, Industry and Energy. In this case, a person who intends to have a geographical collective mark under Article 2 (1) 3-4 registered shall submit a document stating the points of the mark application and the documents, as prescribed by the Presidential Decree, attesting to the fact that it conforms to the definition of geographical indication under Article 2 (1) 3-2, together with the articles of association. <Amended by Act No. 7290, Dec. 31, 2004>

[This Article Newly Inserted by Act No. 6414, Feb. 3, 2001]

Article 86-17 (Effect of Application for International Trademark Registration Where Domestic Trademark has been Registered)
(1) Where a holder of a trademark right that has been registered in the Republic of Korea (excluding trademarks registered by means of an application for international trademark registration; hereafter referred to as a ???domestically registered trademark??? in this Article) files an application for international trademark registration, if all the following subparagraphs are fulfilled, the application for international trademark registration shall be deemed to be filed on the filing date of the application for trademark registration that corresponds to the said domestically registered trademark and be deemed to be within the overlapping scope of designated goods:
  1. The trademark registered under the application for international trademark registration in the International Register (hereinafter referred to as an ???internationally registered trademark???) shall be identical to the domestically registered trademark;
  2. The holder of the internationally registered trademark shall be identical to the holder of the domestically registered trademark;
  3. All designated goods of the domestically registered trademark shall be included as designated goods of the internationally registered trademark; and
  4. Territorial extension under Article 3-3 of the Protocol shall be effective after the registration date of the domestically registered trademark.
(2) Where the priority under the Treaty for the application for trademark registration related to the domestically registered trademark under paragraph (1) is recognized, the priority shall also be recognized with regard to the application for international trademark registration under the same paragraph.
(3) Where the right of the domestically registered trademark is cancelled or extinguished under any of the following subparagraphs, the effect of the concerned application for international trademark registration under paragraphs (1) and (2) shall not be recognized within the same scope of the designated goods of the cancelled or extinguished trademark right: <Amended by Act No. 7290, Dec. 31, 2004>
  1. Where a trial decision canceling the trademark registration by a reason of falling under Article 73 (1) 2, 3, and 5 through 12 has become final and conclusive; and
  2. Where a trial for the cancellation of a trademark registration is requested by a reason of Article 73 (1) 2, 3, and 5 through 12, and the trademark right has become extinguished due to the expiration of the trademark duration or to the abandonment of some of the trademark rights or designated goods after the request date of the trial for cancellation.

[This Article Newly Inserted by Act No. 6414, Feb. 3, 2001]

Article 86-18 (Special Cases for Succession and Divided Transfer, etc. of Application)
(1) In applying Article 12 (1) to applications for international trademark registration, ???except in cases of inheritance or other general succession, the applicant reports the change in name of the applicant??? shall read ???the applicant reports the change of the name of the applicant to the International Bureau???.
(2) Where part or all of the designated goods of international registration have been divided and transferred by the change in name of the international registration, each application for international trademark registration shall be deemed to have been filed by each changed holder of the name.
(3) The provisions of Article 12 (4) shall not apply to applications for international trademark registration.

[This Article Newly Inserted by Act No. 6414, Feb. 3, 2001]

Article 86-19 (Special Cases for Correction)
(1) In applying Article 14 (1) to applications for international trademark registration, ???designated goods and trademark as to an application for trademark registration??? shall read ???designated goods as to an application for trademark registration only when the applicant has been notified of the reasons for refusal under Article 23 (2)???.
(2) In applying Article 15 to applications for international trademark registration, ???designated goods and trademark??? shall read ???designated goods???.
(3) The provisions of Article 16 (1) 4 shall not apply to applications for international trademark registration.
(4) In applying Article 16 (2) or (3) to applications for international trademark registration, ???trademark or designated goods??? shall read ???designated goods???, respectively.

[This Article Newly Inserted by Act No. 6414, Feb. 3, 2001]

Article 86-20 (Special Cases for Division of Applications)

The provisions of Article 18 shall not apply to applications for international trademark registration. [This Article Newly Inserted by Act No. 6414, Feb. 3, 2001]

Article 86-21 (Special Cases for Conversion of Applications)

The provisions of Article 19 (1) through (4) shall not apply to applications for international trademark registration. [This Article Newly Inserted by Act No. 6414, Feb. 3, 2001]

Article 86-22 (Special Cases for Priority Claim under Paris Convention)

The provisions of Article 20 (4) and (5) shall not apply to a case where an applicant of an international trademark registration claims priority under the Paris Convention. [This Article Newly Inserted by Act No. 6414, Feb. 3, 2001]

Article 86-23 (Special Cases for Time of Application)

In applying Article 21 (2) to applications for international trademark registration, ???submit the documents specified such purpose to the Commissioner of the Korean Intellectual Property Office, together with the application for trademark registration, and present the documents to attest it within thirty days from the application for trademark registration is filed??? in Article 21 (2) shall read ???submit written statements to that effect and documents proving the relevant facts to the Commissioner of the Korean Intellectual Property Office within the time limits prescribed by the Ordinance of the Ministry of Commerce, Industry and Energy???. [This Article Newly Inserted by Act No. 6414, Feb. 3, 2001]

Article 86-24 (Special Cases for Public Notice of Application)

In applying Article 24 (1) to applications for international trademark registration, ???finds no grounds for rejecting??? shall read ???finds no grounds for rejecting within time limits prescribed by the Ordinance of the Ministry of Commerce, Industry and Energy???. [This Article Newly Inserted by Act No. 6414, Feb. 3, 2001]

Article 86-25 (Special Cases for Right to Demand Compensation for Loss)

In applying the proviso of Article 24-2 (1) to applications for international trademark registration, ???copy of the said application for trademark registration??? shall read ???copy of the said international application???. [This Article Newly Inserted by Act No. 6414, Feb. 3, 2001]

Article 86-26 (Special Cases for Objection to Trademark Registration)

In applying Article 25 (2) 2 to applications for international trademark registration, ???serial number of the application for the trademark registration??? shall read ???international registration number of the application for international trademark registration???. [This Article Newly Inserted by Act No. 6414, Feb. 3, 2001]

Article 86-27 (Special Cases for Decision of Trademark Registration)

In applying Article 30 to applications for international trademark registration, ???cannot find any reasons for refusing??? shall read ???cannot find any reasons for refusing within time limits prescribed by the Ordinance of the Ministry of Commerce, Industry and Energy???. [This Article Newly Inserted by Act No. 6414, Feb. 3, 2001]

Article 86-28 (Special Cases for Trademark Registration Fees, etc.)
(1) Any person desiring to file an application for international trademark registration or to renew the duration of a trademark right of which the establishment has been registered under Article 86-31 (hereinafter referred to as ???trademark right based on an international registration???) shall pay the individual fee prescribed by Article 8(7)(a) of the Protocol to the International Bureau.
(2) Matters necessary for the payment of individual fees under paragraph (1) shall be prescribed by the Ordinance of the Ministry of Commerce, Industry and Energy.
(3) The provisions of Article 34 through 36-2 shall not apply to applications for international trademark registrations or to trademark rights based on an international registration.

[This Article Newly Inserted by Act No. 6414, Feb. 3, 2001]

Article 86-29 (Special Cases for Refund of Trademark Registration Fees, etc.)

In applying the main sentence of Article 38 (1) to applications for international trademark registration, ???trademark registration fee and official fee that have been paid??? shall read ???fee which has been paid???, and in applying the proviso of Article 38 (1), and Article 38 (2) and (3), ???trademark registration fee and official fee??? shall read ???fee???. [This Article Newly Inserted by Act No. 6414, Feb. 3, 2001]

Article 86-30 (Special Cases for Registration in Trademark Register)
(1) In applying Article 39 (1) 1 to trademark rights based on the international registration, ???establishment, transfer, modification, expiration, renewal of duration, conversion of the classification of goods under Article 46-2, additional registration of designated goods, or restriction on disposal, of a trademark right??? shall read ???establishment or restriction on disposal of a trademark right???.
(2) The transfer, modification, expiration, or renewal of duration of trademark right based on an international registration shall be based on the registration of the International Register.

[This Article Newly Inserted by Act No. 6414, Feb. 3, 2001]

Article 86-31 (Special Cases for Registration of Establishment of Trademark Right)

In applying Article 41 (2) to applications for international trademark registration, ???where a trademark registration fee is paid in accordance with Article 34 (1)??? shall read ???where a decision on trademark registration has been rendered???. [This Article Newly Inserted by Act No. 6414, Feb. 3, 2001]

Article 86-32 (Special Cases for Duration of Trademark Right)
(1) The duration of the trademark rights based on the international registration shall be from the date of registration under Article 86-31 to ten years from the date of the international registration.
(2) The duration of a trademark right based on an international registration may be renewed for an additional ten years upon renewal of the duration of the international registration.
(3) Where the duration of the trademark right based on an international registration has been renewed under paragraph (2), the duration of the trademark right based on the international registration shall be deemed to have been renewed at the time of expiration of said duration.
(4) The provisions of Articles 42 through 46-5, 49 (1) and (2) and 64-2 shall not apply to trademark rights based on an international registration.

[This Article Newly Inserted by Act No. 6414, Feb. 3, 2001]

Article 86-33 (Special Cases for Application for Additional Registration of Designated Goods)

The provisions of Articles 47, 48, and 49 (3) shall not apply to applications for international trademark registration or to trademark rights based on international registration. [This Article Newly Inserted by Act No. 6414, Feb. 3, 2001]

Article 86-34 (Special Cases for Division of Trademark Right)

The provisions of Article 54-2 shall not apply to trademark rights based on international registration. [This Article Newly Inserted by Act No. 6414, Feb. 3, 2001]

Article 86-35 (Special Cases for Effects of Trademark Right Registration)
(1) The transfer, change, extinguishment by abandonment or renewal of a duration of trademark rights based on international registration shall be of no effect unless it is recorded in the International Register.
(2) The provisions of Article 56 (1) 1 (excluding the part relating to the restriction on disposal) shall not apply to trademark rights based on an international registration.
(3) In applying Article 56 (2) to trademark rights based on international registration, ???trademark right and exclusive license??? shall read ???exclusive license???.

[This Article Newly Inserted by Act No. 6414, Feb. 3, 2001]

Article 86-36 (Effects of Extinguishment of International Registration)
(1) Where all or part of an international registration on which an international trademark application is based has been extinguished, the application for international trademark registration shall be deemed to have been withdrawn to the extent of which all or some of the designated goods have been extinguished.
(2) Where all or part of an international registration on which an international trademark application is based has been extinguished, the trademark right shall be deemed to have been extinguished to the extent of which all or some of the designated goods have been extinguished.
(3) The effects of withdrawal or extinguishment under paragraph (1) or (2) shall enter into force from the date on which the international registration in the International Register has been extinguished.

[This Article Newly Inserted by Act No. 6414, Feb. 3, 2001]

Article 86-37 (Special Cases for Abandonment of Trademark Right)
(1) The provisions of Article 60 (1) shall not apply to a trademark right based on an international registration.
(2) In applying Article 61 to a trademark right based on an international registration, ???trademark right and exclusive license??? shall read ???exclusive license???.

[This Article Newly Inserted by Act No. 6414, Feb. 3, 2001]

Article 86-38 (Special Cases for Nullity Trial of Registration for Renewal of Duration of Trademark Right)

The provisions of Articles 72 and 72-2 shall not apply to a trademark right based on an international registration. [This Article Newly Inserted by Act No. 6414, Feb. 3, 2001]


SECTION 3 Special Cases for Application for Trademark Registration[edit]

Article 86-39 (Special Cases for Applications for Trademark Registration after Extinguishment of International Registration)
(1) Where an international trademark registration designating (including subsequent designations) the Republic of Korea has expired with respect to all or some of the designated goods under Article 6(4) of the Protocol, the holder of said international registration may file an application for trademark registration with the Commissioner of the Korean Intellectual Property Office for all or some of said designated goods.
(2) Where an application for trademark registration under paragraph (1) fulfills all the requirements of the following subparagraphs, the application shall be deemed to have been filed on the date of the international registration (in case of a subsequent designation, the date of said subsequent designation):
  1. The application under paragraph (1) shall be filed within three months from the extinguishment date of international registration under the same paragraph;
  2. The designated goods of the application for trademark registration under paragraph (1) shall be among the designated goods contained in the international registration under the same paragraph; and
  3. The trademark for which a trademark registration is being sought shall be identical to the trademark of the extinguished international registration.
(3) Where a right of priority is recognized under a treaty for an application for international trademark registration that is filed in connection with an international registration under paragraph (1), the said right of priority is recognized for the application for the trademark registration under the same paragraph.

[This Article Newly Inserted by Act No. 6414, Feb. 3, 2001]

Article 86-40 (Special Cases for Application for Trademark Registration after Denunciation of Protocol)
(1) Where a holder of the international registration designating (including subsequent designations) the Republic of Korea is no longer entitled to file an international application under Article 15 (5) (b) of the Protocol, the holder of the said international registration may file an application for trademark registration to the Commissioner of the Korean Intellectual Property Office with respect to all or some of the designated goods of the international registration.
(2) Article 86-39 (2) and (3) shall apply mutatis mutandis to an application for trademark registration under paragraph (1). In this case, ???within three months from the extinguishment date of international registration under the same paragraph??? in Article 86-39 (2) 1 shall read ???within two years from the date on which the denunciation under Article 15 (3) of the Protocol became effective???.

[This Article Newly Inserted by Act No. 6414, Feb. 3, 2001]

Article 86-41 (Special Cases for Examination)

The provisions of Articles 23, 24, and 25 through 29 shall not apply to a case where an application for trademark registration that falls under any of the following subparagraphs (hereinafter referred to as a ???reapplication???) is filed for a registered mark of the principal and said mark has been registered under Article 86-31:

  1. An application for trademark registration that fulfills all requirements of the subparagraphs of Article 86-39 (2) and is filed under Article 86-39 (1); and
  2. An application for trademark registration that fulfills all the requirements of the subparagraphs of Article 86-39 (2), which applies mutatis mutandis to Article 86-40 (2), and is filed under Article 86-40 (1).

[This Article Newly Inserted by Act No. 6414, Feb. 3, 2001]

Article 86-42 (Special Cases for Period of Exclusion)

Where a trademark has been registered by re-application and the period of exclusion under Article 76 (1) for the previous trademark right based on the international registration has expired, a nullity trial against said trademark, which has been registered by re-application, shall not be requested. [This Article Newly Inserted by Act No. 6414, Feb. 3, 2001]


CHAPTER IX SUPPLEMENTARY PROVISIONS[edit]

Article 87 (Inspection, etc. of Documents)

Any person who needs a certification as to application for and trial on trademark registration, delivery of a copy or abstract of a document, inspection or reproduction of the trademark register and documents, may request it to the Commissioner of the Korean Intellectual Property Office or the President of the Intellectual Property Tribunal. <Amended by Act No. 4895, Jan. 5, 1995>

Article 88 (Prohibition of Carrying Out and Publication of Documents concerning Application for Trademark Registration, Examination, Trial, Retrial or Trademark Register, etc.)
(1) The documents concerning an application for trademark registration, examination, trial, retrial, or the trademark register may not be carried out: Provided, That with respect to the documents concerning applications for trademark registration and geographical collective mark registration or the documents concerning the examination thereof under Article 22-2 (1) through (3), this shall not apply. <Amended by Act No. 5355, Aug. 22, 1997; Act No. 7290, Dec. 31, 2004>
(2) An answer shall not be given to a request for an expert opinion, testimony or an inquiry as to the contents of a case that is in the process of the application for trademark registration, examination, trial or retrial or as to a decision to grant or refuse a trademark registration or the contents of a decision. <Amended by Act No. 5355, Aug. 22, 1997; Act No. 6414, Feb. 3, 2001>
Article 89 (Trademark Gazette)
(1) The Korean Intellectual Property Office shall publish the Trademark Gazette.
(2) The Trademark Gazette may be published by electronic media under the conditions as determined by the Ordinance of the Ministry of Commerce, Industry and Energy. <Newly Inserted by Act No. 5329, Apr. 10, 1997; Act No. 6414, Feb. 3, 2001>
(3) In publishing the Trademark Gazette by electronic media, the Commissioner of the Korean Intellectual Property Office shall make public matters relating to the publication of the Trademark Gazette, its main contents, and service by publication through a communication network. <Newly Inserted by Act No. 5329, Apr. 10, 1997; Act No. 6414, Feb. 3, 2001>
(4) Matters to be inserted in the Trademark Gazette shall be determined by the Presidential Decree.
Article 90 (Indication of Registered Trademark)

Where an owner of a trademark right, or an exclusive or non-exclusive licensee uses a registered trademark, he may indicate that the trademark is a registered trademark.

Article 90-2 (Indication of Registered Homonymous Geographical Collective Mark)

Where two or more registered geographical collective marks have homonymous relation to each other, the owners of such mark rights and the members of the organizations concerned shall, in using the registered geographical collective marks, make necessary indications on the goods concerned so that consumers are not misled as to their geographical origins. [This Article Newly Inserted by Act No. 7290, Dec. 31, 2004]

Article 91 (Prohibition of False Indication)
(1) No person shall be allowed to perform any of the following acts: <Amended by Act No. 5355, Aug. 22, 1997>
  1. An act indicating a trademark which is not registered or applied for a trademark registration, on any goods, as if it were a registered trademark or its registration were applied for;
  2. An act indicating a trademark which is not registered or applied for a trademark registration, on advertisements, signboards, labels or packaging of goods or other business transaction documents, etc. as if it were a registered trademark or its registration were applied for; and
  3. An act marking an indication that the trademark is registered with respect to goods other than the designated goods, or which is liable to cause confusion, in case the registered trademark is used on goods other than the designated goods.
(2) Acts indicating a trademark under paragraph (1) 1 and 2 shall include the goods and packaging, advertisement, signboards, or labels that have become shapes of marks. <Newly Inserted by Act No. 5355, Apr. 22, 1997>
Article 91-2 (Special Provisions on Trademarks, etc. Similar to Registered Trademarks)
(1) The term ???registered trademark??? in Articles 50, 53, 55 (3), 57 (2), 62, 67 (3), 73 (1) 3 and 4, 85, 90 and 91 shall be deemed to include trademarks, similar to the registered trademark, which will be deemed identical with the registered trademark if their colors are the same as those of the registered trademark. <Amended by Act No. 5355, Aug. 22, 1997; Act No. 6765, Dec. 11, 2002>
(2) The term ???trademark similar to the registered trademark??? in Articles 66 (1) 1 and 73 (1) 2 shall be deemed not to include trademarks, as similar to the registered trademark, which will be deemed identical with the registered trademark if their colors are the same as those of the registered trademark. <Amended by Act No. 7290, Dec. 31, 2004>
(3) The term ???trademark similar to a registered geographical collective mark of another person??? in Article 66 (2) 1 shall be deemed not to include trademarks, as similar to the registered collective mark, which will be deemed identical with the registered collective mark if their colors are the same as those of the registered collective mark. <Newly Inserted by Act No. 7290, Dec. 31, 2004>

[This Article Newly Inserted by Act No. 5083, Dec. 29, 1995]

Article 92 (Mutatis Mutandis Application of Patent Act)

The provisions of Articles 217-2 through 220, 222 and 224-2 of the Patent Act shall apply mutatis mutandis to trademarks. <Amended by Act No. 4895, Jan. 5, 1995; Act No. 5576, Sep. 23, 1998>


CHAPTER X PENAL PROVISIONS[edit]

Article 93 (Offense of Infringement)

Any person who has infringed a trademark right or an exclusive license shall be punished by imprisonment for not more than seven years or a fine not exceeding 100 million won. <Amended by Act No. 5355, Aug. 22, 1997; Act No. 6414, Feb. 3, 2001>

Article 94 (Perjury)
(1) Where a witness, expert witness, or interpreter, having taken an oath under this Act, made a false statement or given a false expert opinion or interpreted falsely before the Intellectual Property Tribunal, such person shall be punished by imprisonment for not more than five years or a fine not exceeding 10 million won. <Amended by Act No. 4895, Jan. 5, 1995; Act No. 6414, Feb. 3, 2001>
(2)If a person who committed the offense as referred to in paragraph (1), surrenders himself to justice before a decision to grant or refuse a trademark registration or trial decision on the case becomes final and conclusive, the punishment may be reduced or exempted. <Amended by Act No. 6414, Feb. 3, 2001>
Article 95 (Offense of False Marking)

Any person who has violated Article 91 shall be punished by imprisonment for not more than three years or a fine not exceeding 20 million won.

Article 96 (Offense of Fraudulent Act)

Any person who obtains a trademark registration, additional registration of designated goods, registration for the renewal of duration of a trademark right, registration of the conversion of the classification of goods, or trial decision by a fraudulent act or other unlawful act, shall be punished by imprisonment for not more than three years, or a fine not exceeding 20 million won. <Amended by Act No. 6414, Feb. 3, 2001>

Article 97 (Joint Penal Provisions)

Where a representative of a corporation, or an agent, employer or any other employee of a corporation or an individual commits an offense as prescribed by Article 93, 95 or 96 in relation to affairs of the corporation or individual, the said corporation, in addition to the offender, shall be sentenced to a fine that falls under any of the following subparagraphs and the said person shall be sentenced to a fine as prescribed by the respective Articles: <Amended by Act No. 6414, Feb. 3, 2001>

  1. A case of Article 93: a fine not exceeding 300 million won; and
  2. A case of Article 95 or 96: a fine not exceeding 60 million won.
Article 97-2 (Confiscation)
(1) A trademark or packaging that infringes trademark rights or exclusive use rights of another under Article 93, or obtained by such infringement actions, or machinery used for the production of goods, trademarks, or packaging shall be confiscated.
(2) Notwithstanding paragraph (1), the goods which may be easily detached from their trademarks or packagings for the purpose of removing the infringement and which does not effect the function and feature of those goods may not be confiscated.

[This Article Newly Inserted by Act No. 5355, Aug. 22, 1997]

Article 98 (Fine for Negligence)
(1) Any person who falls under any of the following subparagraphs, shall be punished by a fine for negligence not exceeding five hundred thousand won: <Amended by Act No. 4895, Jan. 5, 1995; Act No. 6626, Jan. 26, 2002>
  1. A person who takes an oath under Articles 299 (2) and 367 of the Civil Procedure Act, and makes a false statement before the Intellectual Property Tribunal;
  2. A person who is ordered to produce or present documents or other things in relation to the taking or preservation of evidence by the Intellectual Property Tribunal and fails to comply with the order without any justifiable reason; and
  3. A person who is summoned as a witness, appraiser or interpreter by the Intellectual Property Tribunal, but fails to comply with the summon without any justifiable reason, or refuses to take an oath or make a statement, testimony, appraisal or interpretation.
(2) The fine for negligence as referred to in paragraph (1) shall be imposed and collected by the Commissioner of the Korean Intellectual Property Office under the conditions as prescribed by the Presidential Decree.
(3) Any person who is dissatisfied with a disposition of the fine for negligence under paragraph (2), may raise an objection against the Commissioner of the Korean Intellectual Property Office within thirty days from the notification date of the disposition.
(4) If a person who is subject to a disposition of the fine for negligence as referred to in paragraph (2), raises an objection under paragraph (3), the Commissioner of the Korean Intellectual Property Office shall inform it without delay to the competent court, which shall, upon receiving the information, bring the case of fine for negligence to trial under the Non-Contentious Case Litigation Procedure Act.
(5) If no objection is made, or no fine for negligence is paid, within the period as referred to in paragraph (3), it shall be collected according to the examples of a disposition of the national taxes in arrears.


ADDENDA[edit]

Article 1 (Enforcement Date)

This Act shall enter into force on September 1, 1990.

Article 2 (General Transitional Measures)

Except as provided otherwise in Articles 3 through 8 of the Addenda, this Act shall be applicable even to matters taken place before this Act enters into force: Provided, That the effect taken under the previous provisions shall not be affected.

Article 3 (Transitional Measures concerning Rejection of Correction)

Any correction made before this Act enters into force shall be subject to the previous provisions.

Article 4 (Transitional Measures concerning Application, etc. for Trademark Registration)

The examination as to applications for trademark registration, registration for the renewal of duration of a trademark right and additional registration of designated goods, and the appellate trial on the refusal ruling, made before this Act enters into force shall be subject to the previous provisions.

Article 5 (Transitional Measures concerning Effect of Registration for Renewal of Duration of Trademark Right)

In case where a trademark is registered pursuant to the previous provisions before this Act enters into force, and the renewal of trademark right duration is registered under this Act, the registered trademark shall be considered to have been registered under this Act.

Article 6 (Transitional Measures concerning Effect of License)

The effect of the license registered pursuant to the previous provisions before this Act enters into force shall be subject to the previous provisions.

Article 7 (Transitional Measures concerning Trial, etc. on Registered Trademark)
(1) The trial, appellate trial, retrial and lawsuit on the nullity trial of a trademark registered by applications for trademark registration, trademark right duration renewal registration and additional registration of designated goods and on the affirmation trial on the scope of right, which is made before this Act enters into force, shall be subject to the previous provisions, except in case of the request as prescribed in the latter part of main sentence of Article 71 (1) and the latter part of main sentence of Article 72 (1).
(2) Any trial, appellate trial, retrial and lawsuit on a revocation trial of the trademark registration requested before this Act enters into force shall be subject to the previous provisions.
(3) Any trial, appellate trial, retrial and lawsuit on the revocation trial of the license registration made pursuant to the previous provisions before this Act enters into force shall be subject to the previous provisions, except in case of the request as prescribed by Article 74 (3).
Article 8 (Transitional Measures concerning Procedures and Expenses of Trial, Compensation for Damages, etc.)

The procedures, expenses, compensation for damages, etc. as to the trial, appellate trial, retrial and lawsuit requested before this Act enters into force shall be subject to the previous provisions.


ADDENDA[edit]

<Act No. 4541, Mar. 6, 1993>

Article 1 (Enforcement Date)

This Act shall enter into force on the date of its promulgation. (Proviso Omitted.)

Articles 2 through 5 Omitted.


ADDENDA[edit]

<Act No. 4597, Dec. 10, 1993>

(1) (Enforcement Date) This Act shall enter into force on January 1, 1994.
(2) (Transitional Measures concerning Application for Trademark Registration, etc.) The Appellate trial on the examination and refusal ruling on an application for trademark registration, duration renewal registration of trademark right, or additional registration of designated goods, made before this Act enters into force, shall be governed by the previous provisions.
(3) (Transitional Measures concerning Return Period of Trademark Registration Fee, etc.) The return of any trademark registration fee or other fee paid by mistake before this Act enters into force, shall be governed by the previous provisions.
(4) (Transitional Measures concerning Trial, etc. on Registered Trademark) Any trial, appellate trial, retrial or litigation on any trademark registered by application for trademark registration, duration renewal registration of the trademark right, or additional registration of the designated goods, made before this Act enters into force, shall be governed by the previous provisions.


ADDENDA[edit]

<Act No. 4895, Jan. 5, 1995>

Article 1 (Enforcement Date)

This Act shall enter into force on March 1, 1998.

Article 2 (Transitional Measures concerning Cases Pending)
(1) Any case for which a request for trial has been made or a case pending for which a request for appellate trial against a ruling of refusal or a decision of dismissal for correction prior to entry into force of this Act shall be deemed to have made a request against a trial with the Intellectual Property Tribunal and to have been pending therein.
(2) Any case for which a request for trial and decision has been made or a case pending for which a request for immediate appeal against a decision of dismissal for request for the Intellectual Property Tribunal under this Act and to have been pending therein.
Article 3 (Transitional Measures concerning Cases, etc. against which Dissatisfactions may be Brought)
(1) Any litigation may be brought against a case on which a trial and decision of a trial, a decision of dismissal for request for trial, a ruling of refusal, a decision of revocation or a decision of dismissal for correction by the examiner at the time this Act enters into force, and against which a dissatisfaction has not brought with the Patent Tribunal under the previous provision, within 30 days from the enforcement date of this Act, a litigation as referred to in Article 186 (1) of the Patent Act which is applied mutatis mutandis under Article 86 (2) may be brought against a trial and a decision of the trial and a decision of dismissal for request for trial, and a trial as referred to in Article 70-2 or 70-3 may be requested against a ruling of refusal, a decision of revocation or a decision of dismissal for correction by the examiner unless any period for dissatisfaction has expired under the previous provisions at the time this Act enters into force.
(2) Any dissatisfaction may be brought against a case on which a trial and decision of a trial, a decision of dismissal for request for appellate trial, a decision of dismissal for correction by the appellate trial judge at the time this Act enters into force has been served with the Supreme Court, unless any period for dissatisfaction has expired under the previous provisions at the time this Act enters into force.
(3) Any case against which a dissatisfaction has been brought with the Supreme Court and which is pending therein prior to entry into force of this Act and any case against which a dissatisfaction has been brought pursuant to paragraph (2) shall be deemed to have been pending or to have been brought against the Supreme Court.
Article 4 (Transitional Measures concerning Cases of Retrial)

The provisions of Articles 2 and 3 of the Addenda shall apply mutatis mutandis to any case of retrial pending.

Article 5 (Transfer, etc. of Documents)
(1) The Commissioner of the Korean Intellectual Property Office shall transfer documents on any case which is pending as referred to in Article 2 (1) (including those applied mutatis mutandis under Article 4 of the Addenda) without delay to the President of the Intellectual Patent Tribunal.
(2) The Commissioner of the Korean Intellectual Property Office shall transfer documents on any case which is pending as referred to in Article 2 (2) of the Addenda (including those applied mutatis mutandis under Article 4 of the Addenda) without delay to the President of the Intellectual Patent Court. In this case, matters necessary for the transfer etc. of documents shall be determined by the Supreme Court Regulations.


ADDENDUM[edit]

<Act No. 5083, Dec. 29, 1995>

This Act shall enter into force on January 1, 1996.


ADDENDA[edit]

<Act No. 5329, Apr. 10, 1997>

Article 1 (Enforcement Date)

This Act shall enter into force on July 1, 1997. (Proviso Omitted.)

Articles 2 through 5 Omitted.


ADDENDA[edit]

<Act No. 5355, Aug. 22, 1997>

Article 1 (Enforcement Date)

This Act shall enter into force on March 1, 1998.

Article 2 (Transitional Measures concerning Application for Trademark Registration, etc.)

The previous provisions shall apply to the application for trademark registration, application for registration for the renewal of duration of a trademark right, and examination of and trial on refusal decisions on the application for additional registration of designated goods before this Act enters into force.

Article 3 (Transitional Measures concerning Trial on Registered Trademark, etc)

The previous provisions (excluding Article 73 (1) 1) shall apply to trials, appeals, and litigations in respect of registered trademarks by the application for trademark registration, application for registration for the renewal of duration of a trademark right, and application for additional registration of designated trademarks before this Act enters into force. <Amended by Act No. 6414, Feb. 3, 2001>

Article 4 (Transitional Measures concerning Unified Trademark)
(1) An application for unified trademark registration or trademark rights in respect of unified trademarks before the enforcement of this Act shall be regarded as an application for trademark registration or trademark rights under this Act.
(2) Pending trail on nullification or cancellation on grounds of contravention of the previous provisions of Article 11 (1) or (3), or 54 (2) after the enforcement of this Act shall be governed by the previous provisions.
Article 5 (Transitional Measures concerning Trial on Cancellation of Trademark Registration)

Notwithstanding the amended provisions of Article 73 (4), the previous provisions shall apply to trial on cancellation initiated by Article 73 (1) 3 by three years from the enforcement date of this Act.

Article 6 (Transitional Measures concerning Three-Dimensional Trademark)
(1) Where a person had submitted goods with three-dimensional trademark for an exhibition under Article 21 (1) before the enforcement of this Act, the enforcement date of this Act is regarded as the submission date of such goods for an exhibition when he makes an application for registration of the three-dimensional trademark concerned under the amended provisions of Article 2.
(2) Where a person had made an application for registration of three-dimensional trademark in one of the parties to the treaties under Article 20 before this Act enters into force, the enforcement date of this Act is regarded as the application date of trademark registration in one of the countries to the treaty when he makes an application for registration of the three-dimensional trademark concerned under the amended provisions of Article 2.


ADDENDA[edit]

<Act No. 5576, Sep. 23, 1998>

Article 1 (Enforcement Date)

This Act shall enter into force on January 1, 1999. (Proviso Omitted.)

Articles 2 through 5 Omitted.


ADDENDA[edit]

<Act No. 6414, Feb. 3, 2001>

(1) (Enforcement Date) This Act shall enter into force on July 1, 2001: Provided, That the amended provisions of Article 38 shall enter into force on the date of its promulgation, and the part pertaining to international application among the amended provisions of Article 5 and the amended provisions of Article 86-2 through 86-42 shall enter into the force on the date on which the Protocol becomes effective in the Republic of Korea.
(2) (Application Examples as to Right to Demand Compensation for Loss) The amended provisions of Article 24-2 shall apply to an application for trademark registration or to an application for additional registration of designated goods, which is filed first after July 1, 2001.
(3) (Transitional Measures concerning Examination, etc. on Application, etc. for Trademark Registration) The previous provisions shall apply to an examination of an application for trademark registration, an application for registration of a renewal of duration of a trademark right, an application for additional registration of designated goods, a trial against a ruling of refusal, and retrial and/or litigation initiated before this Act enters into force.
(4) (Transitional Measures concerning Trial, etc. on Registered Trademark) The previous provisions shall apply to a trial, retrial, and litigation pertaining to an application for trademark registration, an application for registration of a renewal of duration of a trademark right, or an application for additional registration of designated goods filed before this Act enters into force: Provided, That the amended provisions of Article 3 of the Addenda of the Trademark Act, amended by Act No. 5355, shall apply to a request for trial, trial, retrial and litigation for cancellation of a trademark registration under Article 73 (1) 1 after July 1, 2001.


ADDENDA[edit]

<Act No. 6626, Jan. 26, 2002>

Article 1 (Enforcement Date)

This Act shall enter into force on July 1, 2002.

Articles 2 through 7 Omitted.


ADDENDUM[edit]

<Act No. 6765, Dec. 11, 2002>

This Act shall enter into force five months after the date of its promulgation.


ADDENDA[edit]

<Act No. 7289, Dec. 31, 2004>

Article 1 (Enforcement Date)

This Act shall enter into force six months after the date of its promulgation.

Articles 2 through 5 Omitted.


ADDENDUM[edit]

<Act No. 7290, Dec. 31, 2004>

This Act shall enter into force six months after the date of its promulgation.


Notes[edit]


Source[edit]

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