[Patent Talk] When Someone Else Files Your Trade Name as a Trademark First

A client recently contacted me to say that someone else had filed a trademark application for the client's trade name. The client, who had worked for many years in the kitchen of a franchise restaurant, had opened a new restaurant, and less than a month later found that the client's trade name had been filed as a trademark in the name of the franchise company the client used to work for. It appeared that the franchise company had filed the application after seeing that the client's new restaurant was doing well.

This is a case in which a mark was preempted by another party at the very start of a business, a somewhat unfair situation that can arise in Korea, which follows the first-to-file principle. In this case, even if the other party's application is later registered, the client, who had been using the mark in good faith before the filing, may be protected under the Trademark Act by a prior-use right. Even so, any expansion of the business through franchising after the filing date would not be protected by the prior-use right, so it is better in many respects to prevent the other party's application from being registered.

There are two procedures for providing the examiner with reasons why another party's trademark application should be rejected: submission of information and opposition. While the application is under examination, the ‘submission of information’ procedure can be used by filing an information statement; if the examiner finds no grounds for rejection and issues a decision to publish for opposition, a ‘notice of opposition’ may be filed within two months.

In this case, if the trade name had come to be recognized by consumers as indicating the source of a particular person before the other party's filing, and the other party had an unfair purpose of obtaining improper gain, information could be submitted on the basis of Article 34(1)(xiii) of the Trademark Act. However, because the application was filed less than a month after the business opened, it may not be easy to prove that the mark was well known, or to prove the subjective element of the other party's unfair purpose.

Apart from Article 34(1)(xiii), Article 34(1)(ix) and (xii), which are assessed as of the time of the decision on registration, may also be considered. If, by the time of the decision on registration, the trade name has become well known nationwide ...