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Q
I want to protect my company's brand overseas as well. Would I need legal advice?
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Our company holds a brand for which trademark registration has already been completed in Korea. As we recently plan to enter overseas markets, we want to protect that brand abroad as well, and I would like to know specifically what methods are available when filing a trademark application overseas, or whether an international application system can be used. I would also like to know the reasons for obtaining legal advice when proceeding with an overseas trademark application and the role it plays.
Legal advice
Answer to Related Inquiry
Author: 김국일
To protect a trademark overseas, you must register it directly in accordance with the trademark law of the relevant country or region.
Because a domestic trademark registration alone does not confer rights overseas, it is important to carefully design the application strategy and procedures.
There are broadly four methods of overseas application.
First, filing directly in the country where protection is sought, which usually makes use of the priority right under the Paris Convention and must follow each country's procedures and requirements.
Second, filing through an organization operated under a treaty among multiple countries or for countries without an independent trademark office, a representative example being the Benelux Office for Intellectual Property or the African Intellectual Property Organization (OAPI).
Third, where both individual countries and a regional organization exist, you can obtain protection in several countries with a single application, as with the EUIPO or ARIPO.
Fourth, using the international application system under the Madrid Protocol, you can file an international application in multiple countries based on a valid trademark registered domestically.
As such, because an overseas application must take into account various factors such as the target countries, procedures, costs, and duration, obtaining legal advice at the early stage is essential.
Through legal advice, the entire process can be supported, including establishing the application strategy, providing guidance on procedures by country, reviewing documents, and making use of international treaties, thereby increasing the likelihood of securing overseas trademark rights and minimizing legal risks.
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Sung Dong PARK
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Experience as a senior prosecutor at the Seoul High Prosecutors' Office and a police officer at the Seoul Metropolitan Police Agency
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