CONTENTS
- 1. Trademark Infringement | Concept of a Trademark
- - Content of Trademark Rights
- - Types of Trademarks and Examples
- 2. Trademark Infringement | Penalties
- - Elements of Trademark Infringement
- 3. Trademark Infringement | Common Types of Trademark Infringement in Companies
- 4. Trademark Infringement | Corporate Response Measures
1. Trademark Infringement | Concept of a Trademark
Trademark right infringement refers to an act in which a business or individual uses a widely known brand or logo without authorization and thereby infringes the rights of the trademark owner.
A trademark here refers to a sign, character, figure, color, three-dimensional shape, or a combination thereof used to distinguish one's own goods or services from those of others.
In particular, sounds, scents, motions, and holograms may also be recognized as trademarks in recent practice, so the scope of rights has been broadening.
Through this, consumers can distinguish the source of goods, and businesses can protect their goodwill and customers.
Content of Trademark Rights
A trademark right is a right established through trademark registration. It is an exclusive and exclusionary right that allows the holder, against a person who uses the registered trademark on goods or uses a similar trademark, to seek an injunction against use, a claim for damages, a claim to prohibit acts of unfair competition, a claim to prohibit infringement, and a criminal complaint.
This right is valid within the scope of the designated goods, and the term of a trademark right is 10 years from the date of registration and may be renewed.
Types of Trademarks and Examples
Trademarks are classified into several types according to their form, and the Trademark Act provides for these as subjects of protection.
Most brand assets that companies use in conducting their business also fall within this scope, so it is important to clearly understand in advance which forms of trademark can be registered.
① Word marks
These are trademarks consisting of letters or numbers, and they protect a brand name expressed literally in characters.
② Figurative marks
These are trademarks consisting of pure pictures, symbols, logos, or other figures without letters.
③ Composite marks
These are trademarks in which letters and figures are combined, using both characters and a logo together.
④ Three-dimensional marks
This is the case of registering the three-dimensional shape or form of an article as a trademark. It is a method of protecting product design as a trademark.
⑤ Color marks
This protects a specific color or combination of colors as a trademark, drawing on the distinctiveness and recognition of the color itself.
2. Trademark Infringement | Penalties
When an act of trademark right infringement occurs, a charge of violation of the Trademark Act may apply, and criminal punishment may be imposed.
When a charge of violation of the Trademark Act is raised, the charge is assessed based on whether the trademark and its designation are, in their appearance, identical under general social norms, whether the goods on which the trademark was used are similar, and whether the trademark was used for trademark use rather than mere design use.
If an act of trademark right infringement is then found, the offender may be punished under the Trademark Act by imprisonment for up to 7 years or a fine of up to 100 million won, and the infringing articles are confiscated.
Because trademark right infringement does not constitute a crime requiring a complaint to prosecute, note that punishment may follow even without a complaint by the victim.
Elements of Trademark Infringement
For trademark right infringement to be established, the following requirements must be met.
① Use of a trademark identical or similar to the registered trademark
② Use on goods identical or similar to the designated goods
③ Trademark use (use for the purpose of indicating source)
④ Use without legitimate authority
If these requirements are met, not only civil claims for damages and injunctions against infringement but also criminal punishment may follow.
3. Trademark Infringement | Common Types of Trademark Infringement in Companies
The types of trademark infringement that businesses commit inadvertently in practice or that arise easily during competition and marketing are as follows.
Failing to recognize these in advance and to establish a response system may lead to civil and criminal liability, so caution is needed.
① Using a product name or logo similar to a competitor's trademark
This occurs when a business uses a name or logo resembling a competitor's trademark when launching its own new product. Where there is a likelihood of consumer mistake or confusion, it is judged to be trademark infringement.
In particular, producing the design, color, and font arrangement in a similar manner is regarded as clear infringement.
② Using another company's registered trademark as an online advertising keyword
This refers to setting a competitor's registered trademark as a keyword in search advertising, Naver shopping advertising, Google AdWords, and the like to display one's own advertisement.
This too is regarded as an act of luring consumers, and disputes over trademark infringement frequently arise.
③ Unauthorized use of another company's registered trademark in SNS hashtags or online store category names
Where a brand name is a registered trademark, including another company's brand name in a promotional hashtag for one's own products on Instagram, Naver Smart Store, and similar platforms, or using a competitor's brand name in a category name, also constitutes trademark infringement.
As an act that unfairly exploits the distinctiveness of a trademark, it may become the subject of a civil lawsuit.
④ Unauthorized production and sale of character goods combining design and trademark
Using a character image with registered design rights or trademark rights without authorization to produce and sell dolls, stationery, merchandise, and the like also constitutes trademark infringement.
⑤ Preempting a domain name similar to a registered trademark to sell similar products
Preempting a domain similar to another company's well-known registered trademark and selling similar products on that domain or redirecting to one's own site may become the subject of a ‘domain name dispute.’
⑥ Unauthorized engraving of another company's registered trademark on OEM/ODM products
In OEM or ODM production, manufacturing and selling without a formal license agreement even though a registered trademark is displayed on the product or packaging may result in an order to destroy the entire quantity of products together with criminal punishment.
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4. Trademark Infringement | Corporate Response Measures
Businesses can respond to trademark infringement as follows.
Apply in advance to the Korean Intellectual Property Office to secure rights to trademarks to be used, such as product names, service names, brand names, CI, and BI, and manage the renewal deadline (10 years)
② Operation of an infringement monitoring system
Regularly check, online (Naver, Coupang, marketplaces, keyword advertising) and offline, whether others are using, advertising, or selling trademarks identical or similar to the company's own
③ Management of keyword advertising, hashtags, and domain names
Because setting another company's registered trademark as a keyword advertisement, hashtag, or domain may give rise to infringement, internal marketing team training and prior review are crucial
④ Rights investigation and prior agreement when using a similar trademark
Where a trademark intended for use is similar to an existing registered trademark, conduct a rights investigation and, if necessary, conclude a license agreement
⑤ Sending a warning letter or certified mail when infringement occurs
Upon discovering infringement, respond promptly first with a warning letter, a request for voluntary removal, and delivery of certified mail
⑥ Civil claim for damages and provisional injunction prohibiting infringement
If voluntary correction is refused, promptly halt the infringing act through a claim for damages and an application for a provisional injunction prohibiting infringement
⑦ Criminal complaint and request for crackdown by the Korea Customs Service
In cases of intentional infringement, repeated infringement, or detection of smuggled infringing goods, file a criminal complaint and request a customs clearance crackdown by the Korea Customs Service
Trademark infringement is an important legal issue that goes beyond a simple legal dispute and directly affects a company's brand value, customer trust, and revenue.
In particular, as digital business expands, it is crucial to review in advance the trademark infringement risks that may arise inadvertently in keyword advertising, online stores, SNS marketing, and the like, and to establish a legal response system.
Organizing a trademark management system and an infringement response manual for each business and minimizing legal risk through the assistance of an intellectual property attorney will be a key strategy for securing competitiveness.
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