| Trademark Use Doctrine and Trademark Registration
Aug 2018 |
| Can a trademark be registered if the owner transfers the trademark to someone else without any intention to use it or to apply for a trademark for exclusive use? |
| Article 3 (1) of the Trademark Act |
| Article 3 (The person who can receive the trademark registration) 1. The person who uses the trademark in Korea or who intends to use the trademark may register his trademark. However, the employees of the Patent Office and the Patent Official shall not be allowed to register the trademark during their service, except in the case of inheritance or bequest. |
| The Trademark Act stipulates that a person who uses or intends to use a trademark in Korea is allowed to register his trademark (Article 3 (1) of the Trademark Act). And if it is deemed that the trademark registration is not possible in accordance with Article 3 of the Trademark Act, the examiner must decide to reject the trademark registration (Article 54 (3) of the Trademark Act). |
| The Patent Court has stated that "If you cannot say that you are using a mark that is used to identify a commodity related to your business with another commodity i.e. the purpose of using the exclusive use license or the normal license, or the transfer of trademark rights to a third party, etc., <…> The registration shall be invalidated pursuant to Article 71, Paragraph 1, Subparagraph 1 of the Trademark Act, if it does not conform to the definition of the mark ". (Patent Court 2006.6.16 Decision 2006/2332 Judgment, etc.) |
| Therefore, if you do not use the trademark in Korea and do not intend to use it, you cannot register the trademark. Also, if you file a trademark application with the purpose of assignment or a license only, you may not be able to register the trademark. |
| This is called trademark use, and you should have infringed the trademark rights as a compromise. Simply having a trademark can not be an act of infringement. |
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