Recently, I received urgent calls from two clients.
Coincidentally, both companies were facing non-use cancellation trials filed against their registered trademarks. If a trademark is canceled, it may force the company to rebrand, which understandably caused significant concern for the executives involved.
In both cases, the companies were actively using their brands related to the registered trademarks. However, the opposing party apparently perceived some loopholes in the use of those trademarks and filed non-use cancellation trials. Fortunately, both companies were able to present sufficient evidence of use to defend their trademarks.
Although our clients had proof of use, statistically, 8 or 9 out of every 10 trademarks challenged in a non-use cancellation trial end up being canceled. Therefore, companies without adequate proof of use may face similar high-risk situations at any time.
If a trademark is not in use and there are no future plans to use it, cancellation may not cause significant damage. However, for companies using or planning to use a registered trademark, cancellation can be a serious business risk. This is why understanding and fulfilling the obligation of use is essential even after registration.
1. About Non-Use Cancellation Trials
The Korean Trademark Act includes non-use cancellation trials to encourage the use of registered trademarks and penalize trademark owners who fail to use them.
Specifically, if neither the trademark owner nor a registered user has used the registered trademark for a continuous period of three years or more in Korea, without a justifiable reason, the trademark may be subject to cancellation.
2. Key Points in Preparing for a Non-Use Cancellation Trial
If a company lacks sufficient evidence of use, the trademark may be canceled. Therefore, trademark owners should continuously use their trademarks and collect evidence of such use. If a trial is filed, they must present this evidence to avoid cancellation.
However, under the Trademark Act, it is not enough to merely use the mark. The mark must be used as “registered” and on the “designated goods.” Even with evidence of use, the trademark may still be canceled if these conditions are not met.
If the trademark has been significantly altered in use, to the extent that it no longer matches the registered version, it may not be considered identical. In such cases, the trademark can be canceled even if there is evidence of use.
Therefore, businesses should refrain from making excessive modifications to registered trademarks. If variations are necessary, they should consider filing a new application for the modified mark.
Additionally, if a trademark is used on goods that are not listed as designated goods, even if those goods are similar, the use may not be recognized as valid. To prevent such issues, companies should use the trademark on the goods specified in the registration and file for additional registration if they begin using the mark on new product categories.
3. A Word for Foreign Companies Entering Korea
Registering a trademark in Korea is only the beginning of protecting your brand. If a registered mark is not used for three consecutive years without a valid reason, anyone can file a non-use cancellation trial. This creates a risk of losing valuable brand assets.
Foreign companies looking to enter the Korean market should go beyond merely registering a trademark. It is crucial to develop and implement a usage strategy immediately upon registration, including marketing, distribution, and promotional activities.
Moreover, foreign companies should be aware that owning a trademark registration in Korea is not sufficient in itself. Active and consistent use of the trademark in Korea is critical to maintaining the validity of the registration. It is also advisable to consider registering both the English version and the Korean transliteration of a brand to ensure broader protection in the local market.
If a local distributor or licensee is authorized to use the trademark, make sure such rights are formally registered with the Korean Intellectual Property Office (KIPO), as unregistered use by third parties may not count as valid use in a non-use cancellation proceeding. In addition, trademarks designated under the Madrid Protocol are equally subject to Korea’s strict non-use cancellation rules. As such, a comprehensive trademark strategy that includes planned use and legal compliance is essential for any business entering the Korean market.
Trademark protection is not complete at registration—it is realized through ongoing use and diligent management.
By Ilhyo Suh
Patent Attorney, BLT Patent & law Firm: www.en.blt.kr
#TrademarkProtection #NonUseCancellation #IPStrategy #TrademarkLaw #BrandProtection #UseItOrLoseIt #TrademarkUse #IntellectualProperty #KIPO #KoreanMarket #ForeignBusinessTips #BrandManagement #TrademarkCompliance #MadridProtocol #TrademarkDefense
Recently, I received urgent calls from two clients.
Coincidentally, both companies were facing non-use cancellation trials filed against their registered trademarks. If a trademark is canceled, it may force the company to rebrand, which understandably caused significant concern for the executives involved.
In both cases, the companies were actively using their brands related to the registered trademarks. However, the opposing party apparently perceived some loopholes in the use of those trademarks and filed non-use cancellation trials. Fortunately, both companies were able to present sufficient evidence of use to defend their trademarks.
Although our clients had proof of use, statistically, 8 or 9 out of every 10 trademarks challenged in a non-use cancellation trial end up being canceled. Therefore, companies without adequate proof of use may face similar high-risk situations at any time.
If a trademark is not in use and there are no future plans to use it, cancellation may not cause significant damage. However, for companies using or planning to use a registered trademark, cancellation can be a serious business risk. This is why understanding and fulfilling the obligation of use is essential even after registration.
1. About Non-Use Cancellation Trials
The Korean Trademark Act includes non-use cancellation trials to encourage the use of registered trademarks and penalize trademark owners who fail to use them.
Specifically, if neither the trademark owner nor a registered user has used the registered trademark for a continuous period of three years or more in Korea, without a justifiable reason, the trademark may be subject to cancellation.
2. Key Points in Preparing for a Non-Use Cancellation Trial
If a company lacks sufficient evidence of use, the trademark may be canceled. Therefore, trademark owners should continuously use their trademarks and collect evidence of such use. If a trial is filed, they must present this evidence to avoid cancellation.
However, under the Trademark Act, it is not enough to merely use the mark. The mark must be used as “registered” and on the “designated goods.” Even with evidence of use, the trademark may still be canceled if these conditions are not met.
If the trademark has been significantly altered in use, to the extent that it no longer matches the registered version, it may not be considered identical. In such cases, the trademark can be canceled even if there is evidence of use.
Therefore, businesses should refrain from making excessive modifications to registered trademarks. If variations are necessary, they should consider filing a new application for the modified mark.
Additionally, if a trademark is used on goods that are not listed as designated goods, even if those goods are similar, the use may not be recognized as valid. To prevent such issues, companies should use the trademark on the goods specified in the registration and file for additional registration if they begin using the mark on new product categories.
3. A Word for Foreign Companies Entering Korea
Registering a trademark in Korea is only the beginning of protecting your brand. If a registered mark is not used for three consecutive years without a valid reason, anyone can file a non-use cancellation trial. This creates a risk of losing valuable brand assets.
Foreign companies looking to enter the Korean market should go beyond merely registering a trademark. It is crucial to develop and implement a usage strategy immediately upon registration, including marketing, distribution, and promotional activities.
Moreover, foreign companies should be aware that owning a trademark registration in Korea is not sufficient in itself. Active and consistent use of the trademark in Korea is critical to maintaining the validity of the registration. It is also advisable to consider registering both the English version and the Korean transliteration of a brand to ensure broader protection in the local market.
If a local distributor or licensee is authorized to use the trademark, make sure such rights are formally registered with the Korean Intellectual Property Office (KIPO), as unregistered use by third parties may not count as valid use in a non-use cancellation proceeding. In addition, trademarks designated under the Madrid Protocol are equally subject to Korea’s strict non-use cancellation rules. As such, a comprehensive trademark strategy that includes planned use and legal compliance is essential for any business entering the Korean market.
Trademark protection is not complete at registration—it is realized through ongoing use and diligent management.
By Ilhyo Suh
Patent Attorney, BLT Patent & law Firm: www.en.blt.kr
#TrademarkProtection #NonUseCancellation #IPStrategy #TrademarkLaw #BrandProtection #UseItOrLoseIt #TrademarkUse #IntellectualProperty #KIPO #KoreanMarket #ForeignBusinessTips #BrandManagement #TrademarkCompliance #MadridProtocol #TrademarkDefense