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Trademark
Law
Chapter
Four Trademark Rights
¡@¡@Article
027 ~ Article 039
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27 Duration and renewal of trademark registration |
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A
trademark proprietor shall be granted trademark rights for a term
of ten years from the date of registration announcement.
The durational term of a trademark registration may be renewed for
a period of ten years at a time.
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| Article
28 Application for renewal |
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Application
for renewal of the durational term of a trademark registration shall
be filed within six months anterior or posterior to the expiration
of the term. Renewal applied for within six months posterior to
the expiration of the term shall be subject to payment of double
registration fee.
The
renewed durational term of a trademark registration granted under
the preceding paragraph shall be calculated from the day following
the date of expiration of the original term.
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| Article
29 Rights afforded by trademark registration |
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A
trademark proprietor shall be afforded trademark rights in relation
to the goods or services designated by its registration.
Unless
otherwise provided in Article 30 of this Law, the following acts
shall be subject to consent of the trademark proprietor:
1.
use of any mark identical with its registered mark in relation to
the same goods or services;
2.
use of any mark identical with its registered mark in relation to
related goods or services thus likely to cause confusion to the
related consumers; and
3.
use of any mark similar to its registered mark in relation to the
same or related goods or services thus likely to cause confusion
to the related consumers.
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| Article
30 Limitation on trademark rights: bona fide use; exhaustion of rights
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The
following circumstances shall not be restricted by a third-party
trademark rights:
1. where anyone has used, in good faith or in a reasonable manner,
an indication of its own name or trade name, the name, shape, quality,
function, or place of origin of goods or services, or notes which
are otherwise explanatory of the goods or services, provided that
the use does not amount to trademark use;
2.
where anyone has applied to goods or the packaging thereof a three-dimensional
shape that is purely functional; and
3.
where, prior to the filing date of the third-party trademark registration,
anyone had used in good faith identical or similar trademarks on
the same or related goods or services. This provision however shall
be applicable to such goods or services only. The trademark proprietor
may request such third party to affix appropriate indications to
distinguish its goods.
A
trademark proprietor is not entitled to claim trademark rights against
use of its registered trademark on goods which have been put on
the market under the trademark by the trademark proprietor or by
any person with its consent or which have been auctioned or disposed
by the competent authority as prescribed by the applicable law.
This provision, however, shall not apply when the claim is made
with intent to prevent deterioration of or damages to such goods,
or for other justifiable causes.
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| Article
31 Division |
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A
trademark proprietor may file application with the Trademark Office
for approval to divide its trademark rights according to the designated
goods or services.
The application to divide trademark rights as referred to in the
preceding paragraph may be filed before finalization of opposition
or invalidation proceedings thereagainst.
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| Article
32 Amendments after registration |
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Where
there is any change in the particulars of a registered trademark,
application for amendment shall be filed with the Trademark Office
for approval; the amendment shall otherwise have no locus standi
against any third party.
The trademark itself and the designated goods or services shall
not be amended after registration. This provision shall, however,
not apply to the restriction of the designated goods or services.
The
provisions of the third paragraph of Article 20 and the second paragraph
of the preceding Article shall apply, mutatis mutandis, to amendment
of registration particulars.
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| Article
33 Recordation of license; marking requirements for licensee |
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A
trademark proprietor may grant another a license to use its registered
trademark on all or part of goods or services designated by its
registration.
Application shall be made to record the license referred to in the
preceding paragraph with the Trademark Office. Unrecorded license
shall have no locus standi against any third party. The same provision
shall apply as well when, subject to approval by the trademark proprietor,
the licensee of the trademark grants a sub-license to a third party
to use the registered trademark.
In
the event of transfer of the licensed mark after recordation of
a license, the licensing agreement on file shall in turn be binding
upon the assignee.
A
trademark licensee/sublicensee shall affix licensing marking to
the goods, the packaging or containers therefor, or articles and
documentation associated with the licensing in a salient and readily
recognized manner. In the event of palpable difficulty in so doing,
a notice concerning the licensing may otherwise be given at the
business place or on other related articles.
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| Article
34 Grounds for revocation of license recordation |
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Whenever
a licensee violates the provisions of the fourth paragraph of the
preceding Article, should no remedial action be taken to make correction
within a time period specified by the Trademark Office ex officio
or upon request, the trademark licensing recordal shall be revoked.
Prior to the expiration of the term of a trademark license, in the
event of any of the following circumstances, application for revocation
of the license recordal may be filed by the party concerned or any
interested party along with the relevant evidence:
1.
where the trademark proprietor and licensee have mutually agreed
to terminate the license. This provision shall apply to sublicense
as well;
2.
where it is specified in the licensing agreement that either the
trademark proprietor or the licensee may unilaterally terminate
the trademark license at its discretion and intent to terminate
the license has been indicated by one party thereto accordingly;
and
3.
where the trademark proprietor has notified the licensee its intent
to rescind or terminate the licensing agreement for breach of the
provisions of the agreement by the licensee and the licensee has
not raised any objection thereto.
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| Article
35 Recordation of assignment |
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Transfer
of trademark rights shall be recorded with the Trademark Office.
Unrecorded transfer shall have no locus standi against any third
party.
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| Article
36 Indication required of trademark proprietors to prevent confusion
resulting from transfer |
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Where,
as a result of transfer of trademark rights, two or more trademark
proprietors use identical trademark in relation to related goods
or services or use similar trademarks in relation to the same or
related goods or services thus likely to cause confusion among the
related consumers, each of the trademark proprietors shall affix
appropriate indication to distinguish its own goods or services.
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| Article
37 Recordation of trademark-related pledge |
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Where
a registered trademark is deposited as the subject of a pledge by
the proprietor, applications shall be filed with the Trademark Office
to record the establishment, alteration and extinguishment of such
pledge. Without recordation by the Trademark Office, such arrangements
shall have no locus standi against any third party.
In the event of establishment of multiple pledges on trademark rights
by the proprietor thereof to secure the multiple creditors¡¦ rights,
the sequence of the pledges shall be determined in order of recordation.
During
the validity term of the pledge, unless otherwise licensed by the
trademark proprietor, the creditors shall not use the trademark.
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| Article
38 Waiver of trademark rights |
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A
trademark proprietor may waive its trademark rights. The waiver
shall, however, be subject to approval of the licensee or creditor,
if there is any recordation of license or pledge against such registration.
The waiver as referred to in the preceding paragraph shall be made
in writing before the Trademark Office.
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| Article
39 Grounds for lapse of trademark rights |
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Trademark
rights shall lapse in the event of either of the following circumstances:
1. where no renewal has been made according to the provisions of
Article 28; and
2.
where the trademark proprietor is deceased without heirs.
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