Prevent similar trademark registration
July 14, 2018
How to prevent similar trademark registration in Korea
There are two ways to prevent similar trademark registration: opposition and providing information. The opposition can be raised when the application is published after KIPO examiner has reviewed the application. You can provide the information during the examination.
You can also file the invalidation in order to cancel the trademark that has already been registered.
Once a trademark application is published in the official gazette, the “Trademark Publication Gazette,” any person may file an opposition within two months (non-extendable). If the opposition is accepted by KIPO, the said application will be rejected.
Approximately 6% of published applications have been opposed in the last 10 years, and of which approximately 34%have been rejected as the oppositions are accepted.
l Providing Information
A third party may provide information or materials that disadvantage to the trademark application when he/she thinks that the trademark application should not be registered. The examiner will refer to information or material while he/she is examining the application, and that will prevent from being registered by mistake of the examiner.
Providing information is much cheaper than filing an opposition or invalidation, but it is necessary to regularly monitor and searching the database for the newly filed application.
l Opposition flow chart
1. Publication the application
Once the examiner confirmed the application, it is published in the official gazette in order to anybody can submit an opposition.
2. BKIP monitoring Service
If we find any similar marks among the newly published application, we immediately notify the client for the opposition.
3. Filing the opposition
File the opposition within 1 month with a brief statement on the grounds for opposition
4. Decision of opposition
After KIPO receives the opposition and response from both sides, they will review and decide whether if the opposition is reasonable or not. If it is not reasonable to be opposed, the application will be grated for protection. If it is reasonable to be opposed, the application will be refused.