Q. Can a trademark in Korean owned by a third party be an obstacle in acquiring registration or use of a trademark in English?

A. If a trademark in Korean and a trademark in English sound similar to each other, the trademark in English can be rejected or opposed due to the trademark in Korean during the examination, and vice versa. Likewise, the use of the trademark in English can be challenged based on the trademark in Korean, and vice versa.

Article 34 (Trademarks Ineligible for Trademark Registration)(1) Notwithstanding Article 33, none of the following trademarks shall be registered:

7. Any trademark used for goods identical or similar to the designated goods, which is identical or similar to the registered trademark of another person (excluding any registered collective mark with geographical indication) based on first to file;

8. Any trademark used on goods recognized as identical to the designated goods, which is identical or similar to a registered collective mark with geographical indication of another person based on first to file;

9. Any trademark identical or similar to a trademark (excluding a geographical indication) widely recognized by consumers as indicating the goods of another person, which is used on goods identical or similar to the goods of another person;

10. Any trademark identical or similar to a geographical indication of another person widely recognized by consumers as indicating the goods of a specific region, which is used on goods recognized as identical to the goods using such geographical indication;

11. Any trademark likely to cause confusion with goods or business of another person remarkably recognized by consumers or to dilute their distinctiveness or reputation;

13. Any trademark identical or similar to a trademark (excluding a geographical indication) recognized as indicating the goods of a specific person by consumers in the Republic of Korea or overseas, which is used for unlawful purposes, such as unjust enrichment or inflicting loss on the specific person;

14. Any trademark identical or similar to a geographical indication recognized as indicating the goods of a specific region by customers in the Republic of Korea or overseas, which is used for unlawful purposes, such as unjust enrichment or inflicting loss on any legitimate users of such geographical indication;

Article 108 (Acts Deemed Infringement)(1) The following shall be deemed infringement of trademark rights (excluding the right to collective mark with geographical indication) or an exclusive license:

1. Using a trademark identical to a registered trademark of another person on goods similar to the designated goods, or using a trademark similar to the registered trademark of another person on goods identical or similar to the designated goods;

<For more information>

E-mail: hwangpa@hwangpa.com

TEL: 82-2-571-6211~4  /  FAX: 82-2-571-7300

Web page: www.hwangpa.co.kr