Trademarks and Designs

Trademarks are broadly divided into goods marks, service marks, collective marks, and geographical indication collective marks, and the scope of protection also differs depending on the type.

A goods mark is a form of trademark used for the product itself, a service mark is used in the field of service provision, and a collective mark is used as the mark of an organization or association.

A geographical indication collective mark is a trademark that indicates the products of an organization based on the reputation and credit of a particular region, and it has a legal protection framework separate from that of an ordinary trademark.

If trademark registration is carried out without an accurate understanding of these types, the scope that can be protected may be narrowed, or the distinctive features may be missed due to the securing of inappropriate rights.

Therefore, it is effective to select a trademark type suitable for the company's business model and market strategy before the application, and, if necessary, to file overlapping applications for multiple types.

A trademark application is a procedure in which an application form, a trademark drawing, and a list of designated goods are submitted to the Korean Intellectual Property Office, and registration follows after examination.

During this process, the application may be rejected at examination on grounds such as a violation of the Unfair Competition Prevention and Trade Secret Protection Act, similarity to a prior-filed trademark, or a lack of distinctiveness.

In this case, an opportunity for amendment is given, but if the applicant fails to respond to the amendment, this leads to abandonment of the application.

To prevent this, the scope of the designated goods should be drafted clearly, and it is important to develop a distinctive trademark with a high likelihood of registration.

Where there is a risk of rejection, a response can be made through procedures such as the submission of a written opinion, amendment, an objection, or a lawsuit to cancel the trial decision, through a legal representative.

A violation of the Trademark Act is a criminal offense and is a non-complaint offense, in which an investigative agency exercises the right to prosecute even without a criminal complaint.

In the event of a violation, the sanction of imprisonment for up to seven years or a fine of up to 100 million won, along with the confiscation and destruction of the infringing items and the tools used to produce them, is imposed (Articles 230 and 236 of the Trademark Act).

In civil terms, the economic loss resulting from the infringement can be recovered through a claim for damages and a provisional injunction, and under the statutory presumption provisions, the amount of damages can be calculated by selecting one of the infringer's profits.

Securing thorough evidence of infringement and detecting the circumstances are necessary, and in preparation for confiscation measures, evidentiary materials should be submitted to the investigative agency or the court as soon as the fact of infringement is confirmed.

▶Defense Points in the Trademark Field

To be protected as a design, it must possess the qualities of an article, form, visibility, and aesthetic appeal.

The quality of an article means that it must be a movable tangible good capable of independent trade, or a digital design, and the quality of form means that it must be recognizable in appearance by combining shape, pattern, and color.

Visibility means that it must be confirmable with the naked eye, and aesthetic appeal means that it must give consumers a sense of aesthetic satisfaction for its value as a design to be recognized.

Typefaces are also subject to design protection, but a mere combination of patterns or colors that is not an article is not subject to protection.

To obtain a design registration, the three requirements of industrial applicability, novelty, and creativity must be met.

Industrial applicability means that the same article must be capable of mass production by machinery, handcraft, or similar means, so works of art and handicrafts do not, in principle, qualify.

Novelty means that the design must not be identical or similar to a design that has previously been publicly known or distributed, and creativity means that a person with ordinary skill must not be able to easily create the design from existing designs.

If these are not met, the design registration is rejected, so it is important to check for any gaps in rights through a prior design search before the application.

To secure a design right, a design registration application must be submitted to the Korean Intellectual Property Office.

In the application, the article to which the design is directed, information on the creator, drawings, and a written description are entered, and an application for multiple designs is also possible, and a claim of priority under a treaty is permitted.

During the examination process, the similarity to prior designs and whether the registration requirements are met are assessed, and where grounds for rejection arise, a response can be made through the submission of an amendment or an objection.

In particular, because the right to a disclosed design can be maintained through an application for the exception to loss of novelty before the registration decision, a strategy for its use is necessary.

Design registration may be rejected in the following cases.

A design that is identical or similar to a design that has previously been publicly known or publicly worked, or that was filed later in violation of the first-to-file principle, a design that harms public order or good morals, and a design composed solely of function are not protected.

In addition, cases that include another person's trademark, emblem, or national flag, or that are likely to be confused with another person's design, also constitute grounds for rejection.

Therefore, a prior search and a review of the possibility of registration should be carried out thoroughly before the application.

To prevent design disputes, a prior search should be conducted before the application, the clarity of the design specification and drawings should be secured, and after registration, unauthorized use should be promptly detected through monitoring of the market for infringing products.

When the fact of infringement is discovered, a strategy of sending a cease-and-desist letter before exercising rights to induce voluntary withdrawal, and combining civil and criminal procedures if the other party fails to comply, can be effective.

In addition, it is important to minimize the possibility of disputes by combining proactive rights-securing strategies, such as filing applications for a series of designs, applying the exception to loss of novelty, and using priority under a treaty.

A design right is an important intellectual property right that secures competitiveness through differentiation of a product's appearance, so proactive design applications and rights management are necessary in the course of commercialization.

It is advisable to thoroughly review the requirements for the establishment and registration of a design, to secure differentiation from prior designs, and then to file the application.

When design right infringement occurs, an effective way to reduce legal risk is to vigorously exercise rights through civil and criminal procedures and to appropriately use systems such as the voluntary reporting system and the exception provisions for loss of novelty.

In addition, establishing a framework for a prompt and strategic response in the event of a dispute, through market monitoring and the advice of a legal specialist, can be a core strategy for protecting a company's intellectual property competitiveness.

If you need legal assistance relating to trademarks and designs, it is recommended to proceed with a consultation with our firm's corporate specialist attorney.

▶Defense Points in the Design Field