1. 0 / # August 22, 2008 SAM SUP MOON Korean Intellectual Property Office (KIPO) Trademark Protection System in Korea

2. Contents What is a Trademark ? Ⅰ What is a trademark under the Trademark Act ? Ⅱ Which trademark is unregistable ? Ⅲ Trademark Protection System in Korea Ⅳ Procedure for registering a trademark Ⅴ Good Trademark Management Cases in Korea VII Madrid System VI

3. 2 / # I.What is a Trademark ? Trademark soju Goods

4. 3 / # I.What is a Trademark ? TM ® SM

5. 4 / # I.What is a Brand and a Trademark ?

6. 5 / # I.What is a Brand and a Trademark ? Ⓟ

7. 6 / # II. What is a Trademark under the Korean Trademark Act ? A sign, a character, a figure, a three-dimensional shape or any combination of these, or other visually recognizable sign which is used on goods related to the business of a person who conducts business activities to distinguish his goods from those of others. Definition of Trademark Definition of Service mark A mark used by a person who conducts a service business to distinguish his service from that of others. Definition of Collective mark A mark intended to be used by a legal entity founded in association with a person who conducts business activities such as producing, manufacturing, processing, certifying or selling goods and with a person who conducts a service business.

8. 7 / # Definition of Geographical Indication An indication that identifies a good as originating in a certain region where a given quality, reputation or other characteristics of the good is essentially attributable to that region. II. What is a Trademark under the Korean Trademark Act ?

9. 8 / # II. What is a Trademark under the Korean Trademark Act ? Color 3 D Shape of Product or Container Motion

10. 9 / # CTM Trademark No : 003673308 Goods & Services : 9, 16, 41 ? II. What is a Trademark under the Korean Trademark Act ? * With KORUS FTA, sound and smell mark will be allowed to be a trademark.

11. 10 / # The mark consists of the yell of the fictional character TARZAN, the yell consisting of five distinct phases, namely sustain, followed by ululation, followed by sustain, but at a higher frequency, followed by ululation, followed by sustain at the starting frequency, and being represented by the representation set out below, the upper representation being a plot, over the time of the yell, of the normalised envelope of the air pressure waveform and the lower representation being a normalised spectogram of the yell consisting of a three dimensional depiction of the frequency content (colours as shown) versus the frequency (vertical axis) over the time of the yell (horizontal axis).. II. What is a Trademark under the Korean Trademark Act ?

12. 11 / # III. Which Trademark is Unregistrable? Descriptive Marks Marks that describe the quality ('Super' or 'Best'), quantity ('One dozen'), value ('Cheap'), intended purpose ('Cleaner'), or geographical origin. Marks 'Common to the Trade' Marks that are signs or indications that are or have become customary in the trade. (e.g.: Escalator, Vaseline, Aspirin. cf: Xerox) Marks Contrary to Public Policy or Morality Deceptive Marks Marks that attempt to deceive the public by misrepresenting the nature, quality or geographical origin of the goods or services. Marks that are Identical with or Similar to the Earlier trademarks (due to confusion) If the goods or services for which the trademark is sought to be registered are identical with or similar to the goods or services for which the earlier mark is protected. Marks that are Identical with/Similar to the Well-Known Marks Unregistrable Marks

13. 12 / # 1.Trademark Registration 2.Unfair Competition Prevention Act (UCPA) - confusion - dilution - anticybersquatting 3.Design Registration 4.Copyright Act 1.Trademark Registration 2.Unfair Competition Prevention Act (UCPA) - confusion - dilution - anticybersquatting 3.Design Registration 4.Copyright Act IV. Trademark Protection System in Korea

14. 13 / # IV. Trademark Protection System in Korea an act of causing confusion with another person’s well-known goods an act of causing confusion with another person’s well-known commercial facilities and activities an act of doing damaging to distinctiveness or reputation attached to another person’s well-known sign an act of anticybersquatting another person’s well known sign Acts of Unfair Competition

15. 14 / # Trade Dress Protection by the UCPA IV. Trademark Protection System in Korea

16. 15 / # Trade Dress Protection by the UCPA IV. Trademark Protection System in Korea

17. 16 / # VIAGRA ® IV. Trademark Protection System in Korea

18. 17 / # Design or Trademark ? IV. Trademark Protection System in Korea

19. 18 / # Registered Trademark IV. Trademark Protection System in Korea

20. 19 / # Design or Trademark ? IV. Trademark Protection System in Korea

21. 20 / # Community DesignCommunity Trade Mark Image Filing date19/12/200516/12/2005 Application No.000450176-0001005032008 Products Goods/Services Graphic symbol14, 18, 21, 25, 28 IV. Trademark Protection System in Korea

22. 21 / # Community DesignCommunity Trade Mark Image Filing date01/04/2003 01/05/2003 Application No.000025242-0064003186947 Products Goods/Services Labels3 IV. Trademark Protection System in Korea

23. 22 / # IV. Trademark Protection System in Korea Literary artistic and scientific works

24. 23 / # IV. Trademark Protection System in Korea Registration System First-to-file System Substantive Examination System Multiple Class Application & Registration System Pre-grant Opposition System Main Characteristics of Korean Trademark Act

25. 24 / # A. Filing an Application Document required (a) an application stating the name and address of the applicant, the claim and the priority data (if the right of priority is claimed); (b) trademark (c) the list of designated goods and/or services (d) if the right of priority is claimed, the priority document which is a certified copy of the priority application together with its Korean translation, if necessary; (e) a power of attorney, if necessary, and (f) other required documents prescribed by the relevant act and order. V. Procedure for Registering a Trademark

26. 25 / # Claim of Priority * The right of priority may be claimed for a trademark application under the Paris Convention or based on a bilateral agreement or reciprocity. * A claim of priority in a trademark application can be made only if the trademark application is filed in the Republic of Korea within 6 months from the claimed priority date. V. Procedure for Registering a Trademark

27. 26 / # V. Procedure for Registering a Trademark Trademark Application

28. 27 / # V. Procedure for Registering a Trademark

29. 28 / # B. Formality Check * Once a trademark application is submitted to KIPO, it will be checked to ensure that all requirements necessary to accord the application filing date have been satisfied. * Under the Article 9bis of the Trademark Act, in any of the following instances, a applicant is requested to make the required correction within a designated period without any application number being assigned; (a)where the indication that trademark registration is sought is not clear (b)where the name of the applicant is not indicated, or the indication is not considered sufficient to the extent to enable the identification of the applicant (c)where a trademark is not indicated, or the indication is not clearly recognizable (d)where the designated goods are not indicated (e)where the application is not written in Korean; etc. V. Procedure for Registering a Trademark

30. 29 / # * Once the application has satisfied all the requirements, KIPO assigns an application number and examines as to whether other formality requirements under the Trademark Act have been met. * If KIPO discovers that a document or information is missing, it will issue a notice of amendment requesting the applicant to supplement the missing data, within the specified time limit. * If the applicant does not comply with such a request within the designated or any extended period, the trademark application will be nullified and then considered as having never been filed. V. Procedure for Registering a Trademark

31. 30 / # C. Rejection and Registration * If a trademark application falls under any of the grounds for rejection enumerated in the Trademark Act, the Examiner must issue a notice of preliminary rejection, stating the reasons for rejection, and give the applicant an opportunity to submit a written opinion and/or amendment, within the specified time limit. * If the examiner finds no ground for rejection or he/she is persuaded by the applicant's opinion and/or amendment, he/she will render a decision to publish the application and publish the trademark application in the “Trademark Gazette” * If the examiner considers that the grounds for rejection has not been overcome, he/she will issue a notice of final rejection of the trademark registration. V. Procedure for Registering a Trademark

32. 31 / # * Once a trademark application is published in the Trademark Gazette, any person may file an opposition to the trademark registration within 2 months of the publication date of the application. * The grounds for opposition are the same as the requirements of registration under the Trademark Act. * When an opposition is filed, the examiner shall transmit to the applicant a copy of opposition to the trademark registration and give the applicant an opportunity to submit an written opinion and/or amendment within a designated period. * After the expiry of the designated periods, the examiner decide on the opposition to the trademark registration. D. Opposition V. Procedure for Registering a Trademark

33. 32 / # E. Appeal & Trial * The applicant may lodge an appeal against the examiner's final rejection within 30 days from the date of receiving the notice of final rejection. * Such appeal and trial procedure are conducted in the Intellectual Property Tribunal (IPT) of KIPO and the IPT's decision may be appealed to the Patent Court. * An appeal against the Patent Court's ruling may be reviewed by the Supreme Court. V. Procedure for Registering a Trademark

34. 33 / # F. Trademark Right & Renewal * When no opposition is filed or the ground for the opposition is overcome, the examiner will render a decision to grant registration. * The term of a registered trademark may be renewed for an additional 10 years upon applying to renew the term. * A trademark right comes into effect from the registration date and the term of a registered trademark is for 10 years from the registration date. V. Procedure for Registering a Trademark

35. 34 / # V. Procedure for Registering a Trademark Notification of Reason for Rejection Correction or Amendment Application Registration Final Rejection Payment of Fees Examination Grant of Trademark Registration Publication Opposition (Overcome)

36. 35 / # A Notice of Preliminary Rejection V. Procedure for Registering a Trademark

37. 36 / # A Notice of Final Rejection V. Procedure for Registering a Trademark

38. 37 / # Nice Classification Goods & Services Trademark Trademark Gazette V. Procedure for Registering a Trademark

39. 38 / # Trademark Registration Certificate V. Procedure for Registering a Trademark

40. 39 / # Trademark Goods & Services Trademark Register V. Procedure for Registering a Trademark

41. 40 / # VI. Madrid System

42. 41 / # 1. Samsung Started business as a grocery market VII. Good Trademark Management Cases in Korea Extended business area 1938 Commodities, Textiles and clothing, foreign trade, home electronics, chemistry, shipbuilding, automobile manufacturing, insurance, Semiconductors, Cell phones, etc.

43. 42 / # Announced New CI (cost $ 20 million) Brand value 1. Samsung 1993 (2001)(2007) $ $ $ $ $ 6.1 billion (42th) $ 16.9 billion (21th) 1992 "New Management" Kicks off - Seeks global and premium brand - overcomes "Sony" (21th) $ 16.9 billion (25th) $ 12.9 billion $ $ $ $ (2007) VII. Good Trademark Management Cases in Korea

44. 43 / # 2. 777 (Producer of nail clippers) In 2000, the Chinese Prime Minister, Zhu Rongqi, referred 777 nail clippers as an example of a good quality product. VII. Good Trademark Management Cases in Korea

45. 44 / # etc Produce 100 million sets of nail clippers per a year (in 2005) - exports to 92 countries 777 43% 777 43% - global market share 43% (1st) VII. Good Trademark Management Cases in Korea

46. 45 / # In the 1980s, a 777 nail clipper cost 25 cents - a nail cutter with “Revlon” trademark costs 3 $ => specialization and quality management In the 1980s, a 777 nail clipper cost 25 cents - a nail cutter with “Revlon” trademark costs 3 $ => specialization and quality management Trademark dispute with Boeing 777 in the U.S. (1995) - Boeing registered trademark 777 in the U.S. (1990) - 777 had begun using the mark in Korea in 1980 - 777 won the litigation Trademark dispute with Boeing 777 in the U.S. (1995) - Boeing registered trademark 777 in the U.S. (1990) - 777 had begun using the mark in Korea in 1980 - 777 won the litigation vs VII. Good Trademark Management Cases in Korea

47. 46 / # Seoul City 3. Local Government VII. Good Trademark Management Cases in Korea

48. 47 / # Daejeon City Others VII. Good Trademark Management Cases in Korea

49. Many thanks ! SAM SUP MOON moon2s@paran.com