English to Korean translation services and Korean to English translations play an important role in protecting intellectual property in Korea. Although intellectual property laws exist in Korea, the system of enforcement is not necessarily extra-territorial. In other words, what may happen in the US does not always happen in Korea. Thus, US companies looking to sell their products or services on the Korean market should always start by determining whether or not they are required to register their intellectual property rights in Korea. If the intellectual property rights are properly registered and an enforcement issue comes up, one will be spared the headache and extravagant costs of trying to navigate a complex legal system.
To illustrate this point, one can consider a frequent IP problem facing US companies in Korea: trademark protection. Trademark protection is a common issue because the Korean system is very different from the US system and many companies fail to grasp the importance – and consequences – of these differences. The US utilizes a ‘first commercial use’ or ‘first intent to use’ trademark registration system – meaning the business that can show an actual commercial use of the trademark will be granted the protection. In Korea, on the other hand, a ‘first to file’ system is used, meaning the business which first successfully registered their trademark with the Korean Intellectual Property Office, regardless of actual use, will be protected. Clearly, this alone demonstrates the importance of always registering a trademark in Korea.
To register a trademark in Korea, a US business should work with a qualified, local attorney who has experience in the registration procedures. To guarantee complete protection, one should file the registration in every applicable product class category as if a trademark is challenged, protection will only be granted to the noted product class categories.
During the registration process your attorney will review the Korean Intellectual Property Office’s Official Gazette. If it is discovered that another unauthorized party has already filed for the trademark, one can file an Opposition Action Petition within 30 days of the official publication’s date. Within this opposition one will state their case as to why the unauthorized party’s application should be rejected. It is essential to file this opposition as, due the country’s first to file system, if the unauthorized registrant successfully registers the trademark, they will become the legal owner of the trademark in Korea.
In such cases, where an unauthorized company successfully registers and uses a US company’s trademark for commercial purposes in Korea the only recourse available to the US company is an Invalidation Action. An Invalidation Action petition can be filed at any time during the course of the trademark’s 10 year lifespan. As with an Opposition Action Petition, the Invalidation Action should clearly outline why the unauthorized trademark owner’s registration should be voided and why the US company is in fact the legitimate and original owner of the trademark in question. Needless to say this petition must be filed in Korean and will likely require services of a legal translation company.
Remember, in both the Opposition Action and the Invalidation Action the burden of proof falls on the US company. Therefore, the US company must be prepared to provide documentation showing clear commercial use that substantiates the company’s financial investment in the trademark. All evidence not in Korean must include a foreign language translation. It is also highly advised to include evidence showing that the brand name is publicly recognized in Korea and that ‘the company is the source of the legitimate goods promoting the trademark’.
An alternative route to litigation is to attempt to settle the issue out of court. This is particularly appealing as the legal route can take up to four years. Instead, many US companies have opted to take the more direct route of simply buying their trademarks back from the unauthorized, yet legal, holder.