All material subject to strictly enforced copyright laws. © 2022 Managing IP is part of the Euromoney Institutional Investor PLC group.

South Korea: How do you fast track trademark registration in Korea?

Sponsored by hanolip-400px.png
Motion Blur from a Tokyo Monorail

It is often time that matters in business. For trademarks, a prompt registration is probably the single most important issue in all areas of business, not just in the fashion industry. In Korea, it takes approximately one to 1.2 years to obtain a registered trademark using the regular system. However, this period can be shortened substantially if one uses fast-track examination.

Regular examination v fast-track examination in Korea

Trademark applications are examined in order of filing date in Korea. Allowance of a registration is determined through substantive examination including absolute grounds for rejection, such as inherent distinctiveness of the marks etc. as well as relative grounds for rejection, such as prior rights of others etc.

Under local practice, it takes about eight to 10 months to receive the first examination result from the filing date. If there is no ground for rejection, an application is published for opposition purposes for two months, and if no opposition is filed, the mark will be registered upon payment of the registration fee. This entire procedure usually takes about one to 1.2 years from the filing date.

Instead of taking a regular track, one may request fast-track examination. If the request is approved, the applicant may receive the examination results within about one to two months from the date of request. Thus, under the fast-track system, examination starts at least six months earlier than under the regular track system.

Fast-track examination can be based on various grounds

Fast-track examination can be based on several statutory grounds (the Korean Trademark Act and its Enforcement Decree).

The most common basis for requesting fast-track examination is that the applicant is currently using the trademark or is about to use the trademark soon in Korea. In this case, the actual use of the trademark or the plan to use the trademark in the near future for at least one item of each similar group of designated goods of the applied for mark must be proved by objective evidence.

If the applicant's trademark is appropriated by an unauthorised party, it is possible to request fast-track examination by providing objective evidence such as a copy of the cease-and-desist letter or a copy of the preliminary injunction petition, etc. Fast-track is also available when the applicant for a trademark receives a warning letter from a third party as to the use of his or her mark, or receives an observation brief (based on the third party's prior application/registration).

If the owner of a mark failed to renew the registration, he or she can request fast-track examination with respect to the same mark and designated goods.

As of July 2019, the Korean Intellectual Property Office (KIPO) has made it possible to request fast-track examination when the applicant submits results of the prior mark search conducted by a professional search agency designated by KIPO. The significance of this modification is that the request for fast-track examination does not require objective evidence of actual use or infringement as mentioned above, thus providing a very easy and efficient way of accelerating trademark examination. Foreign applicants can enjoy all the same benefits when they file a trademark application in Korea.

Although fast-track examination can shorten the duration until the issuance of a first office action, the trademark registration may be delayed due to the time required for responding to the office action. For foreign applicants, one of the main office actions is that the description of designated goods fails to conform to the necessary requirements. This may be resolved efficiently at the time of filing with proper consulting and amendment. In case it is necessary, a request for a "shortened response period" may also be filed, which can shorten the examination period for the submitted response by about one to two months.

Fast is a trend

In Korea, the number of trademark applications using the fast-track system has increased significantly, starting from 654 in 2009, to 5,734 in 2018 and 7,595 in 2019. The number is further increasing in 2020, with the adoption of new changes in 2019. As the statistics show, it is certainly an option many companies try when they file trademark applications in Korea.

Min Son

Partner, Hanol IP & Law


More from across our site

The UPC held a pilot training system for its new IT system in London last Thursday, June 30, and a full programme will follow later this year
In-house sources say clarity on what counts as lawful access to data will be key to the success of the UK’s new copyright exception
The attitude of ISPs continues to shift following a copyright claim filed at the England and Wales High Court
The EU is seeking to create a single market for data and trade secrets owners will need to prepare early, according to IP lawyers at Osborne Clarke
In-house and private practice counsel discuss issues with pre-grant opposition in India, including the rise of non-speaking orders and straw man filings
The US Supreme Court rejected an appeal on American Axle, dashing hopes of a judicial fix to patent eligibility uncertainty
The Copyright Office refused to grant protection on the basis that the authorship couldn’t be distinguished from the final work produced by the program
COVID vaccines top Clarivate’s new brands list; Fed Circuit reverses Coca-Cola’s TTAB win; Skechers sues Brooks; USPTO to retire Public PAIR tool; CCB sees cricket complaint
Lawyers should pay attention to APJs’ questions and remember that PTAB proceedings aren’t jury trials, say former PTAB judges
The USPTO cancelled ‘Galavava’ and 'Surfstar Wake' and partly cancelled ‘Heika’ this month
We use cookies to provide a personalized site experience.
By continuing to use & browse the site you agree to our Privacy Policy.
I agree