You and Me Both 'Original', What If the First User Trademark Application Was Late?

Provided by the Korean Intellectual Property Office

[Asia Economy (Daejeon) Reporter Jeong Il-woong] Cases where trademarks are devised but the trademark rights are not secured due to a lack of awareness about intellectual property rights are becoming frequent.

As a result, disputes often arise. A recent controversy involved a restaurant trademark in Pohang, which gained public attention after appearing on the program "Baek Jong-won's Alley Restaurant," being filed by a third party.

Some argue that regardless of the reason, the person who files the trademark first can register it. This aligns with the domestic Trademark Act adopting the principle of first-to-file.

However, the Korean Intellectual Property Office (KIPO) emphasizes that even if a trademark application is filed later than another, objections can be raised, and even after registration, invalidation trials can be requested for relief.

According to KIPO on the 21st, the current Trademark Act (Article 34, Paragraph 1, Items 12 and 13, etc.) states that even if a trademark recognized as indicating a specific source is filed first by another person, registration may be denied if it deceives consumers or is filed with malicious intent.

Also, if one discovers that a third party has filed a trademark without permission after having used the trade name or similar first, objections and information provision can be made before the trademark is registered, and invalidation trials can be requested even after registration. KIPO advises active responses against trademark hijacking and imitation filings.

In particular, the current Trademark Act recognizes the "prior use right of names, trade names, etc. for small business owners." Through this, the first user of a trademark can continue business without removing signs even if another person has registered the same or similar trademark first, provided there is no intent of unfair competition, according to KIPO.

Moreover, if names, trade names, menu names, etc. are widely recognized as indicating the source of one's business, they can be protected under the "Act on the Prevention of Unfair Competition and Protection of Trade Secrets" even without trademark registration.

In such cases, KIPO emphasizes the need for active responses, as it is possible to file injunctions and claim damages in court or seek relief through KIPO administrative investigations.

Moon Sam-seop, Director of the Trademark and Design Examination Bureau at KIPO, said, "If a trademark is recognized as indicating a specific source, imitation filings by third parties may not be registered, and prior users can be granted prior use rights, but this is only passive protection. Therefore, it is important for individual business owners and small business operators to file and complete trademark registration from the business planning stage to prevent potential trademark disputes."

This content was produced with the assistance of AI translation services.