The ABA Section of Intellectual Property Law Landslide Magazine (May/June 2015) has an excellent article entitled: Trademark Tips: Seven Experts Share Their Secrets.
Ashly Boeshe wrote a great comment that is essential for protecting your IP in Asia. Ashly notes, in part, that:
“Trademark owners should take a global perspective when protecting their brands. Whether advertising their products or services online or manufacturing products in a foreign country, trademark owners should not only consider seeking trademark protection in their key markets, but also in countries where infringement runs rampant and relief may be difficult to come by.
Unlike the United States where trademark rights are obtained through use, several other major economic markets are civil code or “first to file” countries. In these jurisdictions, trademark rights do not commence with use, but rather are granted to the first person or entity to file a trademark application or obtain a trademark registration.”
Korea falls into this category. Korea is a “first to file” nation. In most cases, the first to file shall win over a subsequent filer unless, inter alia, the mark is “well-known” in Korea, has not been used for a period of time or you had no business relationship with the holder of the mark.
We wrote many articles on this issue. Please checkout the IP link to the right for more articles on this issue.
Sean Hayes may be contacted at: SeanHayes@ipglegal.com.
Sean Hayes is co-chair of the Korea Practice Team at IPG Legal. He is the first non-Korean attorney to have worked for the Korean court system (Constitutional Court of Korea) and one of the first non-Koreans to be a regular member of a Korean law faculty. Sean is ranked, for Korea, as one of only two non-Korean lawyers as a Top Attorney by AsiaLaw.
Sean’s profile may be found at: Sean C. Hayes
- Enforcing your Trademark Rights in Korea: IP Protection Strategies for Korea
- Searching Trademark & Service Marks in Korea: Register your Trademarks/Service Marks Prior to Doing Business in Korea
- Korean Trademark Act Revised: Korean Trademark Act of 2017
- Korean Business/Service Marks Protection under the Unfair Competition Prevention and Trade Secret Protection Act
- Korean Patent Court’s Intellectual Property Infringement Guidelines
- USPTO & Korean Intellectual Property Office’s New Pilot Program on Classifications of Patents: Korean IP Law Updates