First GI collective mark registered
The first geographical indication (GI) to be registered as a collective mark was accepted on November 20 2006 - nearly two years after such registrations were made possible by an amendment to the Trademark Act.
Up until December 31 2004 a geographical sign could be registered as a trademark in South Korea only when it had gained secondary meaning with regards to the goods or services to which it applied at the time of filing.
However, the long tradition of protection of geographical indications in some parts of the world and the international efforts to harmonize trademark law led to the amendment of the Korean Trademark Act to include the following:
- Article 2(1)(iiibis) provides that 'GI' means "an indication that identifies a [product] as originating in a certain region where a given quality, reputation or other characteristic of the [product] is essentially attributable to that region"; and
- a GI for specific goods may be registered as a collective mark where it consists solely of (i) a sign indicating the place of production of the goods in question, or (ii) a sign indicating a conspicuous geographical name.
The first GI to be registered as a collective mark is 장흥표고버섯 (meaning 'JANGHEUNG MUSHROOM'). The owner of the mark may now institute civil and criminal actions such as infringement, injunction, presumption and/or compensation for damage based on the Trademark Act against any third party who uses the said mark without any right or permission.
It is expected that many other GIs will soon be protected as collective marks in Korea.
However, it is relatively difficult to meet the requirements relating to the filing of a collective trademark, because of, among other things, the laws on the formation of a corporate entity (being a corporate entity is one requirement) and the need to certify the quality or characteristic of the goods to be protected.
Further, the actual users of a sign registered as a collective mark cannot enforce the trademark right against infringers themselves, because (i) the right holder is the legal entity to which they belong, and (ii) a member of this entity may not be a licensee of the mark. In this regard, it is necessary that ways to protect the benefits of individual members of a corporate entity, such as a class action, be introduced. Further regulations facilitating the registration of geographical signs should also be considered.
Yoon Bae Kim, Kims and Lees, Seoul
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