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Korean Trademark System – Trials and Lawsuits
관리자 
15-12-28 14:58
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This newsletter introduces an outline of the Korean legal system for trademark. The outline includes disputes through trials between interested parties, and trademark infringement and legal actions thereto.
 
 
1. Trials
 
(A) Trial of the final rejection
 
a) Trial of the final rejection by the examiner
 
Where the examiner issues a final rejection notice against a trademark application, the applicant can file a request for trial with the Board of Trial Examiners (BTE) within 30 days from the date when he received the notice of final rejection.
 
If the BTE accept the grounds for the trial, it cancels the final rejection by its decision. The examiner who received the decision of the BTE shall make publication of the trademark application. The procedure after the publication is the same as the above.
 
However, if the BTE does not accept the trial grounds, it rejects the trial of the applicant. The applicant who appeals the decision of the BTE can file a lawsuit with the Patent Court.
 
b) Trial of the final rejection by the BE
 
Where the BE made a final rejection in the opposition procedure, the applicant can file a request for trial with the Board of Trial Examiners (BTE) within 30 days from the date when he received the notice of final rejection.
 
(B) Trial of the invalidation of the trademark registration
 
a) Trial of the invalidation of the trademark registration requested by any interested party or examiner
 
Any interested party or examiner in the TO can file a trial of the invalidation of the trademark registration with the BTE in case they judged a registered trademark had grounds for invalidation of the registration. This trial can be filed after trademark right of any trademark registration expired.
 
If the BTE accept thegrounds for the trial, it makes a decision to invalidate the trademark registration. When the decision of the BTE becomes conclusive, the trademark right is void, in principle, retroactive to the date of registration.
 
The trademark owner who received the decision to invalidate his trademark registration of the BTE can file a lawsuit to seek for cancellation of the BTE's decision with the Patent Court within 30 days from the date when he received the decision.
 
However, if the TEB does not accept the grounds for the trial, it rejects the trial. The trial requester who received the decision to reject his trial by the BTE can file a lawsuit to seek for cancellation of the BTE's decision with the Patent Court within 30 days from the date when he received the decision.
 
b) Trial of the invalidation of the trademark registration requested by opposer of trademark application
 
Where any opposition to a trademark application is rejected and the applied trademark is registered, the opposer who received the rejection of his opposition can file a trial of the invalidation of the trademark registration with the BTE as an interested party of the registration.
 
Where this trial is accepted or rejected by the BTE, the trademark owner or the requester can file a lawsuit to seek for cancellation of the BTE's decision with the Patent Court.
 
(C) Trial of the cancellation of trademark registration
 
Where a trademark owner uses his registered trademark unlawfully, anyone can file a trial of the cancellation of the trademark registration in question. In addition, where a trademark owner does not use his registered trademark for over 3 years without justifiable reasons, an interested party can file a trial of the cancellation of the trademark registration.
 
The BTE examines the cancellation trails above. If the BTE accepts the trial grounds, it makes a decision to cancel the registration of trademark. However, the BTE does not accept the trial grounds, it makes a decision to reject the trial.
 
When the decision of the BTE becomes conclusive, the trademark right is void from the time. It means that the effect of the decision is not retroactive.
 
Where this trial is accepted or rejected by the BTE, the trademark owner or the requester can filea lawsuit to seek for cancellation of the BTE's decision with the Patent Court.
 
2. Renewal of trademark right
 
Where the trademark owner wants to continue to use his trademark after the first 10 year duration of the trademark right expired, he should file a renewal of his trademark right with the TO.
 
When a renewal of trademark right is filed with the TO, the trademark right is regarded as renewed. The renewal is effective for additional 10 years from the next date when the first 10 year duration expired. The trademark owner who wantsto use continuously can extend his trademark right for every 10 years by filing the renewal of trademark right.
 
3. Lawsuits
 
(A) Lawsuits filed with the Patent Court
 
As explained in the above trials of the invalidation or cancellation of trademark registration, a requester or a trademark owner appealing the decision of the BTE can file a lawsuit to seek for cancellation of the BTE's decision with the Patent Court.
 
Any party who does not accept the decision of the Patent Court can file an appeal with the Supreme Court. The appeal should be made within 2 weeks from the date when the decision is delivered.
The decision of the Supreme Court on the appeal against the decision of the Patent Court is final.
 
(B) Lawsuits filed with a District Court
 
Any trademark owner who judges other person infringes his trademark right can file a lawsuit for seeking prohibition of the infringement against the infringer with a District Court. An exclusive licensee who judges other person infringes his right of exclusive licensee can also file a lawsuit for seeking prohibition of the infringement against the infringer with a District Court.
 
Any party who does not accept the decision of the District Court can file an appeal with the High Court. The appeal should be made within 2 weeks from the date when the decision is delivered.
 
A party who does not accept the decision of the High Court can file an appeal with the Supreme Court. The decision of the Supreme Court on the appeal against the decision of the High Court is final.
 
The procedure of the appeal before the Supreme Court is the same as that of the appeal against the decision of the Patent Court.
 
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