By Veronica Andreev
1. What qualifications are required to become a trademark examiner at KIPO? Is there a specific background that is perhaps more advantageous?
According to Enforcement decree of the Korean Patent Act, to qualify as an examiner, a person must be a state public official ranked at Grade VI or higher, working for the Korean Intellectual Property Office (KIPO) or any of its affiliated agencies, and must have completed the specified training course for examiners conducted by the International Intellectual Property Training Institute:
To become a trademark examiner at KIPO, you generally need to pass a civil service examination, which typically involves both a written test and an interview process. Additionally, trademark attorneys and attorneys-at-law can be specially recruited as trademark examiners.
A background in law, business, or intellectual property is particularly advantageous, but not strictly required. Experience or certifications in intellectual property law, such as being a patent attorney, can provide an edge.
2. What inspired you to pursue a career in trademark law and become a trademark examiner at KIPO?
I became a civil servant for job stability and to serve the public interest. I started working as a civil servant at KIPO, and after working more than 10 years at several divisions at the KIPO, I became a trademark examiner.
I was particularly interested in a career in trademark law because it combines legal principles with creative innovation. Trademarks protect the identity and branding of businesses, which can be fascinating for those who enjoy the intersection of law and business strategy.
3. Can you share some of the most rewarding aspects of your work as a trademark examiner?
One of the most rewarding aspects of being a trademark examiner is contributing to the protection of intellectual property. By examining trademark applications, businesses’ brands are safeguarded, preventing confusion in the marketplace and protecting consumers. This helps innovators, entrepreneurs, and companies establish their identities and avoid legal conflicts.
A trademark examiner helps maintain a fair and level playing field in the marketplace. By ensuring that trademarks are distinct and non-confusing, A trademark examiner helps create an environment where businesses can compete based on the quality of their products or services rather than on misleading branding.
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4. What challenges do you face when reviewing trademark applications, and how do you overcome them?
One of the most significant challenges in reviewing trademark applications is assessing whether an applied-for mark is likely to cause confusion with existing trademarks. This involves comparing the marks’ appearance, sound, meaning, and overall commercial impression, as well as considering the relatedness of the goods or services. I often relied on court precedents and previous examination databases for similar marks. I tried my best into follow established guidelines and criteria to make more consistent determinations to overcome this challenge.
Another challenge is in determining whether an applied-for mark is descriptive. A trademark must be distinctive to be eligible for registration, and marks that are merely descriptive of the goods or services or that are generic cannot be registered. Determining whether a mark is descriptive or generic can be subjective and often requires careful analysis. I did my best to understand terms and phrases in the relevant industry fields, and followed court cases for litigations to overcome this challenge.
5. What is the most common mistake or misunderstanding you encounter when examining trademark applications?
One of the most common mistakes or misunderstandings that trademark examiners encounter when examining trademark applications is the failure to distinguish between marks that are merely descriptive and those that are distinctive. Applicants often submit marks that describe the goods or services they are associated with, thinking that these marks are protectable. However, a trademark must be distinctive to be registered. Descriptive terms or phrases that directly refer to the product or service are typically not eligible for trademark protection, unless they have acquired distinctiveness through extensive use in commerce (secondary meaning).
Applicants sometimes fail to understand the importance of distinctiveness and may argue that a descriptive term is somehow unique or that it has acquired distinctiveness, when it has not.
6. How has the field of trademark law evolved during your career, and what trends do you see shaping its future?
Trademark law has undergone significant evolution over the past few decades, largely driven by changes in technology, global commerce, and shifts in consumer behavior.
- With the explosion of e-commerce and social media platforms, trademarks have become even more crucial in helping consumers identify goods and services. Social media influencers, online marketplaces, and the growing importance of digital platforms have created new challenges for trademark enforcement, with counterfeit goods being sold directly to consumers.
- The globalization of trade has prompted greater international coordination on trademark law. Treaties such as the Madrid Protocol and the Paris Convention have streamlined the process for trademark owners to protect their marks in multiple jurisdictions. However, there are still significant differences in trademark law across countries that can lead to complications for multinational businesses.
- As brands and their intellectual property portfolios grow in importance, trademark disputes—both litigation and administrative oppositions—have become more common. Trademark owners are increasingly aggressive in defending their brands against perceived infringement.
- Over the last few decades, there has been growing recognition of non-traditional trademarks, such as colors, sounds, smells, and even holograms or motion marks. Courts have increasingly accepted these as protectable subject matter under trademark law.
Regarding trends in the future, I expect that NFTs may shape the future of intellectual property, particularly as brands issue digital goods, virtual assets, and exclusive experiences in the metaverse. Trademark registration for digital goods and virtual assets will likely become more streamlined and focused on this evolving sector.
As artificial intelligence and machine learning evolve, we may see more sophisticated trademark search tools that can predict potential conflicts or infringement more effectively.
7. Do you think the international trend is toward developing a uniform set of trademark practices or are there still many differences between countries to overcome?
The international trend in trademark law has been toward greater harmonization, but there are still significant differences between countries that need to be overcome. Let me break this down in more detail:
One of the most significant efforts to harmonize trademark practices internationally is the Madrid System for the international registration of trademarks. Managed by the World Intellectual Property Organization (WIPO), the Madrid Protocol allows trademark owners to register their mark in multiple countries by filing one application. This has streamlined the process of gaining international trademark protection in member countries.
Another important international agreement is the Paris Convention for the Protection of Industrial Property, which sets certain minimum standards for trademark protection, including the right of priority.
While this agreement promotes uniformity, it leaves many details—such as the specific rules for trademark registration and enforcement—to individual countries.
8. How does KIPO handle trademark applications from foreign applicants, especially those from the United States? Are there any specific considerations?
The Korean Intellectual Property Office handles trademark applications from foreign applicants, including those from the United States, through a structured process that aligns with international intellectual property conventions and treaties, as well as South Korean domestic laws. Below are some key points to consider when applying for a trademark in South Korea as a foreign applicant:
(1) South Korea is a member of several key international intellectual property treaties, such as the Paris Convention for the Protection of Industrial Property and the Madrid Protocol.
The Paris Convention allows applicants from member countries to file trademark applications in South Korea within six months of filing in their home country, preserving the original filing date. The Madrid Protocol allows foreign applicants to file for trademark protection in multiple countries, including South Korea, via a single international application.
(2) U.S. applicants can file directly with KIPO by submitting their application in Korean through a local IP attorney. If the U.S. applicant is already the owner of a U.S.-registered trademark, they can extend protection to South Korea through the Madrid System by filing through the USPTO.
(3) The application must be filed in Korean. Foreign applicants generally need to work with a local trademark attorney or agent to ensure that their application complies with all local requirements.
(4) KIPO conducts a formal examination of trademark applications to assess compliance with South Korean trademark law. KIPO checks for compliance with the basic requirements of distinctiveness, non-deceptiveness, and non-confusability with prior marks.
9. What are some of the key challenges foreign applicants face when applying for trademarks in Korea, and how can they navigate the system more effectively?
Foreign applicants seeking to register trademarks in South Korea face several key challenges, but with careful planning and understanding of the system, they can navigate the process more effectively. Below are some of the main challenges and tips for overcoming them:
(1) Hire a local trademark attorney or a qualified IP service provider to assist with translation and communication with KIPO.
(2) Familiarize yourself with the Korean Trademark Act and relevant regulations. KIPO’s website and legal resources offer some guidance, but consulting a local IP attorney is usually the best approach.
(3) Understand the appropriate classes for your goods/services. Misclassifying the goods/services could delay the process or result in the application being rejected.
(4) Conduct a comprehensive trademark search before filing your application to identify any potential conflicts. KIPO offers a trademark database for searching, but it may be easier to conduct an in-depth search through a local attorney or professional service. If a conflict is found, consider rebranding, adjusting the trademark design, or negotiating coexistence agreements with the existing trademark holders.
(5) Be prepared for a potentially lengthy process. The typical timeline for receiving a decision on a trademark application in South Korea is around 12 to 18 months. Respond promptly to any office actions or requests from KIPO. If the office action is complex, seek professional assistance to address the issues effectively.
(6) Take advantage of the Madrid Protocol for international trademark registration, which allows you to extend your trademark rights to South Korea based on an existing international application. If you are applying through the Paris Convention, ensure you meet the requirements for priority claims and file within the required timelines.
10. What advice would you give to U.S.-based companies seeking trademark protection in Korea for the first time?
For U.S.-based companies seeking trademark protection in South Korea for the first time, it is essential to understand the key differences in trademark law, procedures, and strategies to ensure success. Below is a guide of advice to help navigate the process:
South Korea has a well-established trademark system governed by the Korean Intellectual Property Office (KIPO). The legal framework is generally aligned with international standards, but there are some important nuances to be aware of:
(1) Unlike the U.S., which follows a first-to-use system, South Korea uses a first-to-file system. This means that the first person to file a trademark application, regardless of actual use, has the right to the trademark. Hence, it is critical to file your trademark application as soon as possible.
(2) Before filing your application, conduct a trademark search in the South Korean market to check for existing trademarks that are similar or identical to yours. This will help avoid conflicts with already registered marks and increase the likelihood of successful registration.
(3) File your trademark application directly with KIPO or through the Madrid Protocol if you are already registered with the World Intellectual Property Organization (WIPO).
(4) After submission, KIPO will examine your trademark for compliance with requirements, including distinctiveness, potential conflicts, and other formalities. If there are objections, KIPO will issue an examination report, and you will have the opportunity to respond.
(5) After publication, there is a 2-month period where third parties can file an opposition. It is important to monitor this period closely.
(6) Non-Use Cancellation: A registered trademark in Korea can be canceled if it is not used for a period of 3 consecutive years after registration, so you must actively use the trademark in commerce.
January 09, 2025
Interviewee : Hyun Ok, Jang (Trademark Examiner)
Chemicals & Foods Trademark Examination Division
Trademark & Design Examination Bureau
Korean Intellectual Property Office