[Patent Talk] Even a Registered Trademark Can Be Canceled If Not Used for Three Years or More

Once registered, a trademark right lasts for 10 years and can be extended for further 10-year periods through applications for renewal of registration. This is because the longer a company uses a trademark on its goods or services, the stronger the mark's function of indicating source to consumers becomes. For example, "Kia Motors" was registered as a trademark in 1991 and is still maintained today through three applications for renewal of the term of registration.

However, if a trademark is not used continuously for three years or more after registration, it may be canceled through a so-called non-use cancellation trial. Specifically, a petition for a non-use cancellation trial is granted where i) neither the trademark owner nor any licensee, ii) without justifiable reason, iii) has used the registered trademark iv) on the registered designated goods v) in Korea continuously for three years or more before the date of the petition for the cancellation trial (Article 119(3) of the Trademark Act).

Trademark rights exist to protect the source-indicating function of marks and thereby protect order in commerce, so granting an exclusive right to a mark that is not used is contrary to the public interest, for example by depriving third parties of the opportunity to choose that mark. Accordingly, filing applications for marks you do not intend to use, merely to preempt them, should be avoided.

In non-use cancellation trials, the main issue is usually whether the registered trademark has been used within the scope of identity. In principle, the use must be within the scope of identity, so using a modified logo or modified lettering may result in cancellation. According to case law, however, where a "mark combining Korean and English" is registered and only the Korean or only the English part is used, this is recognized as use within the scope of identity.

Accordingly, anyone seeking to file a trademark application should not immediately give up on filing just because a similar earlier-registered mark exists. If there is no record of the mark's use available on the internet or elsewhere, filing a non-use cancellation trial should also be considered. Once a non-use cancellation trial is filed, the burden of proving use of the mark...