OVERVIEW OF TRADEMARKS SYSTEM

(1) Subject matter of trademarks

​

The term "trademark" refers to a mark used to distinguish one’s own goods from those of others and the term "mark" as used here refers to all indications used to identify the source of goods, irrespective of the composition or methods of the expression, including any sign, letter, figure, sound, smell, three-dimensional shape, hologram, movement, color, etc.

​

(2) Requirements for trademark registration

• Distinctiveness requirements

For a mark to be registered as a trademark, it must possess distinctiveness. The Trademark Act enumerates the grounds for denial of trademark registration due to lack of distinctiveness.
 
a. Generic Name :  A mark which uses a commonly used name for a particular product.
    Example: Trademark "Potato Chips" for designated goods of chips.

b. Commonly Used Name :  A mark used to refer to a particular category of products. 
     Example: Trademark "tex" for designated goods of textiles.
c. Descriptive Marks : A mark which indicates the quality, effect, usage, quantity, place of production etc. of a particular product. 
    Example: Trademark "high tech" for designated goods of cellular phones (indicating quality).
d. Distinctively Geographical indication : A geographical indication distinctively known to consumers.
    Example: Mount Everest.
e. Common Surname or Name : A name which indicates a common last name, a company, a group, a position
    Example: Smith, CEO, Association.
f. Simple and Readily Available Mark :  A mark consisting of a simple and readily available mark.
    Example: 123.
g. Other Marks Lacking Distinctiveness : A commonly used slogan, catch phrase, greetings, etc.  
    Example: Be Smart.

​

• Negative requirements

Even where the trademark has distinctiveness, the trademark shall not be registered if granting a monopolistic and exclusive right is viewed as against public interest or when it infringes upon another's interest. 
Specifically, the trademark application is rejected when the sought-for-protection trademark is: (i) identical or similar to a trademark already registered by another person; (ii) identical or similar to a trademark widely recognized by consumers as indicating the goods of another person; (iii) likely to cause confusion with goods or business of another person readily recognized by consumers; (iv) likely to mislead consumers about the quality of goods or deceive consumers; or (v) identical or similar to a trademark recognized as indicating the goods of a specific person by consumers, domestic or overseas, which is deemed to have been filed with the intention of using it for unlawful purposes such as unfair profits.

​

(3) Application process for trademark registration

To register a trademark, it is necessary to go through the process of application for trademark registration. Unlike patent prosecution, trademark registration does not need a complex technological descriptions, thus the trademark application is often carried out personally without an assistance of patent attorney.

​

• Application documents

The basic documents submitted during a trademark application are as follows:
① Application form.
② Specimen of the trademark.
③ Description of the trademark

​

• Selection of designated goods

Aside from the trademark itself, goods which will bear the trademark must be designated. The categories of classes under the Trademark Act (Class 1-Class 45) can be found in the Exhibit Table 1 of the Enforcement Rules of the Trademark Act.

​

• Publication of trademark application and a system for filing objections

If at the end of the examination the examiner finds no grounds to reject the trademark registration, the examiner publicizes the application and proceeds to a two (2) months of a public examination, during which any person can file a formal objection to oppose the registration. If there are no objections during this period, then the trademark registration decision will be rendered.

​

(4) Enforceability of trademark rights

Once the trademark is registered through the above registration process, trademark rights come into effect.

​

• Rights of a trademark holder

A trademark holder has exclusive right to use the registered trademark in relation to the designated goods and may grant a license to a third party for its use. Trademark laws define infringement as an unauthorized use of a trademark identical or similar to a registered trademark on goods identical or similar to the designated goods by person other than a trademark holder.

​

• Principle of territoriality

Trademark rights are only recognized in the country where it is registered. Therefore, to receive protection of a trademark overseas, it is necessary to register the trademark in each of those countries. Registration can be obtained by either: (i) registering the trademark in each country individually, or (ii) using the Madrid System to enjoy the effects of registration in several countries through a single registration process. As the requirements for trademark registration somewhat differs by countries, it is advisable to consult with a patent attorney for the detailed process.

​

• Term of a trademark

The term of trademark rights are ten (10) years from the date of registration, but the term can be renewed for another ten (10) years allowing for a permanent ownership under this renewal process. This is a stark difference from patent right, utility model right, or design right, which all provide for a limited period of legal protection and no renewal of term is granted upon expiration.