Patents & Utility Models

We provide services in preparing and filing patent applications for registration. In addition, we provide services for conducting patent search, paying annuities, preparing and filing written argument and appeals, Patent Administrator, and infringement litigation

Designs

An industrial design is eligible for protection if registered at the Korean Industrial Property Office ("KIPO"). Under the Korean Design Act, a design is defined as a shape, pattern or color, or their combination, which produces an aesthetic impression on the sense of sight. A design must be industrially applicable, novel and non-obvious. Requirements for drawings for a design application are very complicated under KIPO's examination practice. We provide services in preparing and filing design applications for registration, including preparing drawings, which conform to the strict requirements of KIPO. In addition, we provide services for conducting design search, paying annuities, preparing and filing written argument and appeals, combating infringement of design rights & litigation.

Recognition of A Partial Design

A design registration for a part of an article, e.g., the handle of a cup or the neck of a bottle, is allowed, and thus, one can legally receive design protection against unauthorized copying for even a part of an article. You should pay special attention to the fact that the design application for a part of an article must be filed prior to or on the same date of filing a design application pertaining to any independent article containing such a part if the protection of both designs for the part and for the entire article are desired. Failure to comply with this requirement will subject the design application for a part of an article to rejection even if the same person files it.

Non- Substantive Examination in respect of shorter- life-cycle design

A shorter-life-cycle design, such as a fabric design, label design, container design, etc. has been allowed registration without substantive examination since March 1, 1998. However, there has been criticism over undue registration of a design and exercise of its right. Even a design application for a non-substantive examination is subject to examination at least in terms of its industrial applicability and whether it meets the requirement for subject of design registration although it is not subject to examination in terms of novelty or inventive step.

Trademarks

Barun IP & Law specializes in developing, obtaining, commercializing, maintaining, and litigating trademarks in Korea and around the world.

Trademark and Company Name Search Service

When planning to use and/or register a trademark or a company name in Korea, we recommend our clients to first evaluate the registrability of the mark and the potential risk in using the mark. We provide the Trademark and Company Name Search Service, along with offering professional opinion on relevant issues from our trademark specialists having outstanding experience in the field. For example, use of a trademark must be preceded by a careful consideration of the pronunciation and concept of the corresponding Korean transliteration of the mark in view of the unique nature of the Korean phonetic system and language. As a result, we emphasize the need to obtain proper guidance from trademark specialists well experienced in Korean trademark law and practice prior to actual use of a trademark in Korea.

Filing and Registering

Under the First-to-File Rule of the Korean Trademark Act, which uses International Class of goods and services (from March 1, 1998), it is essential to file a trademark application for registration in proper class(es) using acceptable description of goods/services to obtain the earliest filing and registration date in a speedy manner. Due to the large volume of applications filed at the KIPO, the delay caused by an office action issued by KIPO can be substantial. Accordingly, a proper trademark strategy in terms of filing trademark applications remains critical to maintaining an effective and practical trademark portfolio.

Renewal

A Korean trademark registration can be renewed every ten (10) years not by simply paying annuities but by filing a renewal application. KIPO has adopted the NICE Classification as of March 1,1998, and as such, the existing trademark registrations are subject to reclassification corresponding to the NICE system. A registrant is not required to re-classify the goods and services when a renewal application is filed. If not, however, a registrant must re-classify the goods and services through a separate procedure some time during the period from one (1) year prior to the expiry date and six (6) months after the expiry date. This procedure to re-classifying goods and services may be combined in a renewal application. All trademark registrants must pay special attention to the fact that reclassification of goods and services remains mandatory, and the failure to re-classify or re-classify correctly within the time limit may cause forfeiture of the subsequent right to renew for the relevant trademark registration.

Arguments/Appeals

We provide competent, quality services in preparing and filing written Arguments in response to the examiner's preliminary rejections, as well as filing appeals against the final rejections before the Korean Intellectual Property Tribunal, the Patent Court and the Supreme Court.

Licensing

We recommend that a trademark license be registered irrespective of whether it is exclusive or non-exclusive. An exclusive license takes effect only when it is properly recorded on the trademark register concerned. A non-exclusive license may also be recorded on the trademark register. Recording a non-exclusive license will substantially make it easier to establish use of a trademark in defending a non-use cancellation action. Moreover, a recorded licensee may assert his non-exclusive license against one who may have acquired a particular right (by way of trademark assignment or grant of exclusive license) with respect to the same trademark after the date of the license recordal.

Opposition

Once a trademark application has proceeded to registration, a trademark registration is deemed valid until it is finally and conclusively invalidated or canceled in an invalidation or cancellation action. Upon discovery of an application for a conflicting mark filed by a third party, it is thus essential that a strong and vigorous opposition be filed to block said application from proceeding to registration. The opposition procedure is quite similar to a trial in that it allows exchange of rebuttals accompanied by evidence, and thus, warrants a thorough and professional assistance by an experienced trademark specialist. We take special pride in providing our expert services in opposition procedures, which procedures are directly handled by our Representative Partner, who possesses impressive records in numerous opposition cases.

Cancellation/Invalidation Actions/Scope Trials/Appeals

In most of the cancellation actions (the cancellation does not have a retroactive effect) filed in Korea, the ground for cancellation is based on non-use of a registered mark. Two major grounds for invalidating a trademark registration (the effect of invalidation is retroactive to the initial registration date) are (i) conflict with previously registered or famous mark and (2) lack of inherent registrability.

Assignments, Merger, Change of Company Names & Recordals

When ownership of a trademark registration/application or a corporation changes due to assignments or merger, and when company name changes, it is critical to properly register the change at KIPO to give proper effect to the trademark registration and/or to establish proper evidence of use in the event of a cancellation action. We actively provide services in this area.

Customs Activities Including Recordation of Trademarks at Customs Office

We provide services relating to recordal of trademarks (which are already registered with KIPO) at Customs Office. Registration as a trademark is pre-requisite to recording the same trademark at Customs Office. Once a trademark is recorded at Customs Office, the Customs Office will monitor the import and/or export of the products bearing or using such a mark so as to locate products infringing the trademarks registered at the Customs Office. Once identified, Customs Office may, ex officio, suspend the import/export of counterfeiting products or notify the registrant of the trademark registration so that the trademark owner may take appropriate legal actions.

Combating Counterfeiting & Litigation

We represent clients in anti-counterfeit programs designed to identify and eliminate piracy and counterfeiting Activities. Our services in this area include obtaining search and seize orders, conducting and defending actions for infringement of trademarks, obtaining injunctions, criminal and civil suits in close cooperation with our professional litigators in the General Legal Affairs Division.

Copyrights

A copyright automatically attaches at the time a work is created. The copyright in a work can be registered with the Ministry of Culture and Sports at any point during the life of the copyright. Although failure to register a copyright will not invalidate it, registration is recommended as it affords the copyright holder to enjoy a presumption of validity, exclusive license registration, assignment, etc. As a registered copyright agent at the Ministry of Culture and Sports, we offer services in preparing and registering various types of copyrights, managing and licensing copyrights, and infringement litigation.

Computer Programs

The nature of protection for computer programs is substantially similar to the protected afforded to copyrights. However, Korea maintains a separate body of law to specifically provide for the protection of computer programs, and computer programs are required to be registered before the Program Deliberation & Mediation Committee, a business trustee of the Ministry of Information and Communication. We provide services relating to preparing and registering computer programs, including managing and licensing computer program copyrights and infringement litigation.

Unfair Competition & Trade Secret

Unregistered marks and trade secrets can be protected under the Unfair Competition Prevention Act. Certain statutory requirements must be satisfied before one can receive protection under the Unfair Competition Prevention Act, and we work with our clients to offer a continuing, comprehensive legal strategy to protect their unregistered marks and trade secrets in line with the legal requirements.

Business Consulting

We offer comprehensive business consulting service in the areas but not limited to establishing local corporation, branch office; contract negotiation; selection of a new business partner; dispute resolution; market research in relation to branding, licensing, and franchising; obtaining, commercializing and litigating intellectual property matters; advertising and marketing in close partnerships with I-CDS, LLC (International Consultancy, Development & Strategy) in L.A USA.