Written by Nathalie Dreyfus19/10/2016
Nathalie Dreyfus, founder of Dreyfus, took part in the ERA Academy of Law conference on “The Protection of Geographical Indications”. During the conference, Ms. Dreyfus provided participants with an overview of the legal challenges present in the area of domain names and geographical indications. Written by Nathalie Dreyfus05/10/2016
The hashtag, by its insertion before an expression or a word allowing contents to be classified by theme, has in a few years, become an essential tool for social networks, for private individuals as well as companies through their trademarks. The daily impact of this new communication tool in our connected society is undeniable. It is a direct channel of communication and offers a real proximity with the client.
It is interesting to observe that hashtags can be given the same definition as a trademark as per the Code of Intellectual Property as well as the European directive 2008/95/EC and must therefore be protected in the same way, provided however that registration is sought and that the established requirements are met. In France, Article L.711-1 of the Code of Intellectual Property states that: “The following may constitute [such] sign: a) All kinds of designations such as: words, word groupings, last names and geographical names, pen names, letters, numbers, abbreviations (…)”. A hashtag could therefore be protected under trademark law if it meets the same requirements applicable for trademarks, namely distinctiveness, availability and lawfulness.
Formal registration definitely allows a hashtag to be protected against any unlawful reproduction or imitation. However, it appears somewhat incongruous that the holder of a trademark on a hashtag prohibits its use by web users, as the hashtag’s relevance lies in its sharing and propagation. Only its use by a competitor in his business activities would be likely to be suppressed and deemed to be an infringement.
There are some companies, mostly in the United Sates, that have managed to register trademarks containing the famous symbol ‘#’. For example, the operator T-Mobile USA has filed the trademark ‘#7NIGHTSTAND CHALLENGE’ (n°4671787) with the USPTO, United States Patent and Trademark Office. In France, the trademark ‘#CLIENT ADDICT’ has for instance been filed by Futur Telecom under n°4096205 in classes 9, 35, 38 and 42.
However, recently the California Central District Court, in its decision in the case Eksuzian. v. Albanese, dated 7 August 20151 took the position that hashtags could not be registered as trademarks due to their descriptive nature: ‘« hashtags are merely descriptive devices, not trademarks (…)’. However, according to USPTO, commercial trademarks are words, names, or symbols used to distinguish one product from another. They must have a distinctive characteristic. There are generally 4 levels of specificities from “arbitrary and fanciful” to “generic”. For the more arbitrary and fanciful ones, the USPTO2 allows the registration of a hashtag as trademark. On the other hand, generic trademarks do not benefit from this protection. The stand of the USPTO is more logical than that of the court: the purpose of trademark law is to protect and promote the distinctive characteristic, and to prevent other bodies from taking advantage of such distinctive characteristic. A hashtag potentially promotes the name, the reputation or even the product of companies.
As such, be in in France, at community or even international level, it would seem undeniable and logical that in the future and despite this decision of the California District Court, a distinctive hashtag would continue to be registered as trademark. It will be interesting to see how the situation pans out…
1 California Central District Court, Eksuzian. v. Albanese, 7 August 2015.
2 United States Patent and Trademark Office.
Written by Nathalie Dreyfus05/10/2016 The reproduction of a trademark in a URL or in the source code of a website raises recurring legal issues for companies confronted with unauthorized digital uses of their distinctive signs.
At a time when online visibility conditions access to the market, such practices directly call into question trademark law, as well as the boundaries between infringement, search engine optimization, lawful technical uses and unfair competition.
The central question appears simple at first glance: does the insertion of a trademark into a URL, an HTML tag or a website’s source code automatically constitute trademark infringement? In practice, the answer is nuanced. It requires a detailed legal analysis of the nature of the use, its economic context and its concrete effects on the relevant public.
Under both French law and European Union law, trademark infringement requires that several cumulative conditions be met. The trademark must be used in the course of trade, in relation to identical or similar goods or services, and such use must be liable to adversely affect one of the functions of the trademark, foremost among them its essential function of indicating the commercial origin of goods or services.
The analysis is therefore not limited to the mere material reproduction of the sign, but focuses on its economic role and the effect it produces on the perception of the relevant public.
In this context, the presence of a trademark in a URL must be assessed in light of its function and its effects. A URL is not a neutral or purely technical element; it contributes to the identification of the website, its memorability for internet users, and its indexing and ranking by search engines. As such, it constitutes a vector of commercial visibility, the effects of which may be comparable to those of a domain name or a sign displayed directly on a webpage.
Where a trademark is incorporated into the URL of a website offering goods or services, such reproduction may be characterized as use in a distinctive capacity, particularly where it seeks to capture qualified traffic or to create, in the mind of the public, an association with the legitimate trademark owner. In this respect, the URL forms part of the overall commercial presentation of the website and contributes to shaping the perception of the reasonably well-informed and reasonably observant internet user.
This approach has been upheld by case law, notably in a judgment of January 29, 2016. In Un Amour de Tapis v. Westwing (Paris Court of First Instance, 3rd Chamber, 3rd Section, 29 January 2016, No. 14/06691), the court found trademark infringement on the basis of the unauthorized use of a trademark in the URL of a private sales website in the context of a one-off commercial operation. The court held that such reproduction was likely to create a risk of confusion as to the origin of the goods offered and to give the impression of the existence of a link, endorsement or participation by the trademark owner in the operation at issue.
The use of a trademark in the source code of a website presents a specific and significant feature. Although such use is invisible to the end user, it plays a decisive role in organic search rankings and in the way search engines identify, classify and promote a website’s content.
The source code therefore directly contributes to the visibility of an offer on the market.
The insertion of a trademark into strategic elements such as title tags, meta descriptions, HTML headings or alt attributes may constitute use in the course of trade where it is intended to improve the website’s positioning for searches associated with that trademark. Such use cannot be regarded as purely technical where it pursues an objective of attracting traffic and influencing the behavior of internet users.
Case law now consistently recognizes that the invisible nature of the use does not, in itself, preclude a finding of trademark infringement. In its judgments of March 23, 2010 (CJEU, March 23, 2010, joined cases C-236/08 to C-238/08), the European Union Court of Justice held that the assessment must focus on the effects produced on the economic behavior of internet users, in particular through the results displayed by search engines.
Where the use of a trademark in the source code enables the capture of qualified traffic, diverts the attention of internet users or creates an undue association with the legitimate trademark owner, an infringement of the functions of the trademark may be established, irrespective of the sign’s direct visibility on the page consulted.
In order to assess whether trademark infringement has occurred, courts carry out an overall assessment of the circumstances of the case.
The first criterion consists in determining whether the trademark is used as a distinctive sign in the URL, that is, as an indicator of commercial origin, rather than as a purely descriptive, informational or strictly necessary reference. The targeted and repeated insertion of the trademark into strategic elements such as the URL or certain component of the source code tends to reveal use as a trademark where it contributes to attracting the public and promoting the offer.
The likelihood of confusion remains a central criterion. It is assessed on a concrete basis, taking into account in particular the full or near-full reproduction of the trademark, the identity or similarity of the goods or services offered, as well as the overall presentation of the website and its digital environment. Taken together, these factors may lead internet users to mistakenly believe that there is an economic, organizational or contractual link with the trademark owner.
Beyond the likelihood of confusion, courts also take into consideration harm to the other functions of the trademark. Unauthorized use may adversely affect its advertising function by unduly exploiting its power of attraction, its investment function by weakening the efforts made by the owner to enhance the value of the sign, or its communication function. Such impairments may be sufficient to establish counterfeiting, even in the absence of immediate confusion.
Not every reproduction of a trademark in a digital environment is necessarily unlawful. Certain uses may be permitted where they are strictly necessary, proportionate and devoid of any distinctive character, in particular for descriptive, informational or fair comparative purposes.
That boundary, however, is a narrow one. Where the use goes beyond what is necessary to inform the public and tends to unduly capture customers or to take unfair advantage of the trademark’s reputation, the risk of a finding of infringement re-emerges.
In practice, where the strict conditions for trademark infringement are not fully met, the conduct at issue may nevertheless fall within the scope of unfair competition or parasitism, particularly where it reveals an intent to capitalize on the reputation of an established operator or to divert its online traffic.
The reproduction of a trademark in a URL or in the source code of a website cannot be only reduced to a purely technical use. Where it influences the visibility of the website, its organic search ranking and the economic behavior of internet users, it may constitute a use in the course of trade that adversely affects the functions of the trademark.
The assessment must remain concrete and based on the actual effects of the use. Regardless of whether the sign is visible or invisible to the user, URLs and source code fully form part of a website’s commercial presentation and may, as such, give rise to a finding of trademark infringement.
Dreyfus & Associés assists its clients in managing complex intellectual property cases, offering personalized advice and comprehensive operational support for the complete protection of intellectual property.
Nathalie Dreyfus with the support of the entire Dreyfus team.
Is it necessary to prove fraudulent intent in order to establish trademark infringement?
No. Trademark infringement is an objective form of liability. While intent may be relevant to the assessment of damages or the measures ordered, it is not a condition for establishing infringement.
Can the use of a competitor’s trademark in a URL be justified by comparative SEO practices?
Very rarely. Lawful comparative practices require information that is fair, objective and proportionate. In practice, the insertion of a trademark into a URL is difficult to justify under these standards.
Is the use of a trademark in a URL for purely internal (back-office) purposes risky?
In principle, no, provided that the URL is neither indexed nor accessible to the public.
Is an action based on unfair competition preferable where the use is described as “technical”?
It may offer greater flexibility in certain situations, particularly where the qualification of trademark infringement is uncertain. Both legal grounds may, however, be relied upon in a complementary manner.
Is the use of a trademark in a URL by an authorized distributor lawful?
This depends on the contractual framework and the conditions of use. In the absence of express authorization, excessive or misleading use may go beyond the distributor’s rights.
Do well-known trademarks benefit from enhanced protection in this context?
Yes. Harm to the investment function or the reputation of the trademark may be established even in the absence of a likelihood of confusion, thereby facilitating enforcement actions.
The purpose of this publication is to provide general guidance to the public and to highlight certain issues. It is not intended to apply to particular situations or to constitute legal advice.
Written by Nathalie Dreyfus05/10/2016
Setting out the evidence of an infringement on the Internet is not trivial, particularly regarding a lawsuit and despite the rule of evidence, a specific modus operandi established in that respect needs to be adhered to. As a matter of fact, in this respect, in 2010, a judgment of the Court of Appeal of Paris1 (Cour d’Appel de Paris) points out that a mere screenshot by the plaintiff has no probative value and is not sufficient to prove the infringement.
Archive.org, a website administered by Internet Archive, a non-profit organisation, prides itself for having saved 450 billion of web pages with its wayback engine. Its system provides a snapshot of the content of a webpage with great reliability. Even though the contents of a URL address may have changed, the system of archive.org avoids this risk of modification over time and makes it possible to access a web page as it appeared in the past, up to several years before.
At national level, judges have for long been reluctant to recognise such evidence. France, United States, and also Germany have seen their respective courts refusing such means of evidence because of the absence of legal authority of the issuing body of the archives as well as the lack of reliability of the dates obtained. Contrarily, supranational legal bodies (the WIPO Arbitration Center, European Patent Office) have often been more flexible in this regard.
Firstly, the Court of Appeal of Paris (Cour d’Appel de Paris), on 2 July 2010, did not recognise any probative value to the internet finding of the case in question, effected by means of archive.org, on the basis that “the finding has been effected from an archive website exploited by a third party to the procedure, who is a private person without legal authority, which operating conditions are unknown”, before adding that “this search engine has not been created for legal use” and that “the absence of any interference on the way to giving access to the pages under investigation was therefore not guaranteed”. In truth, this decision is case specific since, in this case, the bailiff, here the third party, had wrongly identified the date on which the archiving had been carried out, and the parties then had to use the URL address of the website on which the said date appeared.
Thereafter, some judgments have wrongly considered this specific case as a rule, the case law then considering the findings effected through the “archive.org” website as being deprived of probative value.
However, the case law of the European Patent Office in this matter has undergone a recent change. On 21 May 2014, the EPO’s Boards of appeal (T 0286/10) gave a ruling2 relating to taking into account the archives of the wayback engine in the case of an opposition to a patent. The Boards of appeal found no reason to consider the dates submitted by the Internet archives as being inaccurate, the burden of which lies on the defendant to prove “the new elements capable of discarding the suspicion and bringing contrary evidence destroying the presumption”. Furthermore, they specify that although the archives database is incomplete, it, with regards to its popularity and reputation, “demonstrates sufficient security to benefit from a presumption of a reliable and trustworthy source of information”, the burden of evidence to the contrary being on the adverse party.
This decision of the EPO therefore goes more in the upstream with regards to the acceptation of evidence submitted by a system of archives and in the legitimacy granted to the “archive.org” website. Similarly, the World Intellectual Property Office (WIPO) Arbitration and Mediation Center recognises the validity of evidence issued from the “archive.org” website.
However, the road towards the evolution of national considerations, and in particular French ones, seems long as long as the issuing body of screenshots is considered as illegitimate by the national judges.
Nevertheless, an evolution can be observed in French cases. Firstly, in a judgment of 19 March 2014, the Court of Appeal of Paris (Cour d’appel de Paris), based its decision on the comparison of websites provided by the “archive.org” website.
Furthermore, the Court of Appeal of Lyon (Cour d’appel de Lyon), on 28 May 2014, dated the beginning of the use of a domain name by taking into account screenshots from the “archive.org” website.
Finally, the TGI (Tribunal de Grande Instance) of Paris, admitted on 21 October 2015, the probative value of the “archive.org” website.
However, a bailiff’s findings seems necessary in order to point out useful pages. Indeed, case law considers that a mere screenshot is not enough as form of evidence in the absence of a bailiff’s findings. It will therefore be necessary to hire a bailiff with the relevant territorial jurisdiction and specialised in matters of “Internet findings”, in order to set out the findings in accordance with the Rule of Law. The probative value of the bailiff’s findings will depend on the compliance with a specific modus operandi, as well as the presence of specific technical statements, set out in case law and the Afnor NF Z67-147 norm, which, however, only amount to good practice guidelines3. It will concern, in particular, the description of the equipment used in order to reach the findings, the absence of proxy use and the deletion of cache memory. In the absence of such statements there will be a doubt as to the concordance between the page shown and the online one with regards to the findings. For them to be indisputable, the bailiff should also mention his IP address. It should also be noted that the evidence put forward with regards to the findings should have been obtained in good faith4.
These recent decisions therefore grant a certain probative value to the screenshots of the website “archive.org”. France therefore follows the decisions of the European and international bodies on this matter.
1 CA of Paris 2-7-2010 RG n°2009/12757
2 OEB, decision of the Technical Board of Appeal on 21 May 2014, Pointsec Mobile Technologies AB / Bouygues Telecom.
3 Court of Appeal of Paris, 27 February 2013
4 Court of Appeal of Paris, 7 October 2015: validity of screenshots if probative extrinsic elements supporting submitted elements, such as a bailiff’s findings, are provided. However, “the evidence put forward with regards to a bailiff’s findings should have been obtained in good faith”.
Written by Nathalie Dreyfus04/10/2016
Rwanda’s intellectual property legislation has been undergoing a wave of reform and modernization for a couple of years now. Indeed, a number of changes have been made in the area of Rwandan intellectual property. A new law, Law No. 005 of 2016, and several ministerial orders have introduced a number of amendments to existing legislation. More specifically, a Ministerial Order on the 17th of March 2016 is reshaping some aspects of the landscape of industrial property.
A reorganization of the opposition procedure to trademarks and geographical indication registrations
Article 3 of the Ministerial Order of March 17th, 2016 amends the length of the opposition period allowing a challenge to an application request for registration of a trademark or geographical indication. The new law means the holder of an intellectual property right can file an opposition within 60 days after the publication of the application request, as opposed to 30 days, previously.
Although the 60-day period was made official by Article 3 of the order, the Rwandan registry has already been allowing for the 60-day opposition period for 19 months.
The same Article 3 of the Ministerial Order grants a 14-day response period to the trademark registration applicant.
Meanwhile, Article 4 expressly sets out the information that an opposition to a trademark or geographical indication registration must contain: the identity of the holder of the registration request of the sign, the nature of the opposition, detailed reasons for the opposition, physical evidence of the grounds for the opposition, powers of attorney (if necessary) and the date and signature of the opposing party.
The decrease of several taxes
A large number of changes in tax rates has also taken place in Rwanda.. In particular, the following official taxes relating to trademarks have been reduced:
– Trademark filing;
– Change of name recordal;
– Change of address recordal;
– Merger recordal;
– Renewals
The Ministerial Order of March 17th, 2016 has,, within the trademark registration system, also introduced taxes linked to the classes of the Nice classification.
Rwandan law has also been reformed to allow for the protection of different plant varieties. Rwanda joined the Madrid Protocol on August 17th, 2013, finally allowing trademark holders to designate Rwanda in an application for international protection.
It will be interesting to see how these reforms are received by trademark holders in Rwanda but also to see potential further modernization of Rwandan intellectual property legislation given a wider international context.
Written by Nathalie Dreyfus04/10/2016 
Thailand has recently undergone a significant and welcome change in the landscape of intellectual property. Indeed, the government has decided to bring into force an amendment on trademarks, “Act B. E. 2559,” effective as of July 28th, 2016. The Act will reform current procedures through a series of legal amendments.
The amendments represent Thailand’s first step towards international standardisation of its protection of intellectual property rights. Whilst the current challenge is to construct a legal infrastructure Thailand would then be able to gradually build up towards accession to the Madrid Protocol. However, even if the amendment introduces a number of developments into Thailand’s intellectual property legislation, more decrees will have to be adopted in order to complete this core structure.
A reform of the trademark registration process
A first step in bringing the legislation closer in line with the Madrid Protocol was done through the drafting of a law, in force since July 28th, 2016 allowing for multi-class trademark registration. Until then, one could only register trademarks in one class/category. The reform mainly simplifies the process of issuing trademarks, allowing for the protection of products and services of different categories under the same trademark.
Before the trademark reform, a prior application would result in the automatic cancellation of other applicants’ rights to register a similar or identical trademark even if the application was still under review and its registration still in progress. As of July 28th, 2016, subsequent applications will simply be suspended during the review period of the first application. Furthermore, trademark holders are no longer allowed to apply for the association of several similar trademarks.
Strengthened trademark protection
On one hand, the amendment of the law on Thailand’s trademarks will bring changes to the current timeframes. The response time to an objection or an opposition made to Thailand’s Trademarks Office has now been reduced from 90 to 60 days.
On the other hand, the time limit to pay the registration fee is extended from 30 to 60 days after the registration notice date. It is also possible to request for an extension of the deadline.
A grace period of 6 months after the expiry date has also been added. During that time, trademark holders will be authorized to renew their trademark applications in exchange for the payment of a higher rate .
One of the amendments that has gotten a lot of media coverage is the possibility of registering sound marks via the Thailand Trademark Office. This protection has been in force in other countries for some time. In France for instance, audible signs can give rise to a valid trademark pursuant to the law of 4 January 1991, if the signs are represented by musical scores or sonograms.
Thailand has now decided to admit that goods and services can be distinguished by audible signs. Such sound marks are a natural complement to the category of protected trademarks. However, in Europe, a judgement of the Court of Justice of the European Union dated November 27, 2003 (CJEU November 27, 2003, n°C-283/01) has further highlighted the protection of sound marks. The European judges ruled that only a transcription constituting a musical score complies with the requirements so that the “graphic representation is clear, precise, self-contained, easily accessible, intelligible, durable and objective.” Therefore, we will have to wait for developments in Thailand’s caselaw to effectively define the framework for this new addition to the field of distinctive marks.
Written by Nathalie Dreyfus04/10/2016
Kenyan trademark law has recently undergone reform. The enactment of the Companies Act 2015 and Companies (General) Regulations 2015 has resulted in a change in practice for the Kenyan Industrial property Institute.
The Institute now has the obligation to examine the occurrence of pre-existing trademarks when it assesses the name of a company. Indeed, the name of a company should be refused if it is considered as offensive or undesirable: the name of a company will be considered as such if it includes a trademark which has already been registered.
However, it is possible to bypass this requirement by seeking the consent of the holder of the pre-existing trademark and requesting to be able to register the company name, despite the pre-existing registered trademark.
Finally, the Office’s obligation in terms of the company name does not apply the other way round: the Kenyan Industrial Property Institute need not examine pre-existing company names when evaluating applications for trademarks.
Written by Nathalie Dreyfus04/10/2016 On February 29, 2016, the National Assembly of the Republic of Korea adopted legislation profoundly reforming the trademark law framework. This reform entered into force on September 1, 2016 and represents one of the most significant developments in South Korean trademark law since the major revisions of the 1990s.
Trademark protection in South Korea is obtained through registration with the Korean Intellectual Property Office (KIPO), the competent administrative authority for intellectual property matters and the functional equivalent of the French INPI.
Since 2016, several successive waves of amendments have pursued the same objective: improving procedural efficiency, introducing greater flexibility for applicants, and strengthening remedies against infringement and intentional misconduct.
The challenge is clear: filing in South Korea is no longer merely about “reserving” a sign. It now requires anticipating a modernized legal framework in which use, coexistence, and procedural speed play a central role.
Prior to the reform, Article 2(1)(i) defined a trademark as “a means used on goods related to the business of a person engaged in commercial activities […] to distinguish them from the goods of others.” This definition was accompanied by an exhaustive list of visually recognizable signs, including symbols, characters, illustrations, three-dimensional shapes, or combinations thereof.
This approach, strongly rooted in the requirement of visual perception, had become increasingly ill-suited to contemporary developments in marketing and the identification of products and services.
Since September 1, 2016, Korean law defines a trademark in deliberately functional and abstract terms as “a sign used to identify and distinguish the goods or services of one person from those of another.” The explicit reference to the form of expression has been abandoned. This evolution allows for a broader understanding of distinctive signs, regardless of their mode of perception, and aligns Korean law more closely with international standards.
Under Korean law, a registered trademark may be cancelled if it has not been put to genuine and continuous use during the three years preceding the cancellation request.
Under the former legislation, Article 73(6) restricted non-use cancellation actions to “interested parties,” requiring applicants to demonstrate a direct and current legal interest.
The reform expressly removed this requirement. Article 119(5) of the revised law now provides that “any third party,” without having to justify a specific interest, may file a non-use cancellation action. This legislative choice marks a clear break with previous practice and reflects a strong commitment to clearing the register of dormant trademarks.
The reform also amended the former Article 73(7), which provided that trademark rights ceased on the date when the cancellation decision became final. Article 119(6) now introduces retroactive effect: the right is deemed to have ceased as of the filing date of the cancellation request.
This retroactivity significantly strengthens the effectiveness of cancellation actions and their impact on related proceedings, particularly on the examination of subsequent applications.
Korean law prohibits the registration of trademarks identical or similar to earlier registered trademarks. Former Article 7(1)(vii) required examiners to assess similarity as of the filing date. Any subsequent changes affecting the earlier mark, such as cancellation, invalidation, abandonment, or assignment, were irrelevant.
Article 34(2) of the revised law introduces a fundamental change: examination must now be conducted as of the examination date, not the filing date. As a result, a cancellation or invalidation decision issued during the examination process must be taken into account and may allow the later mark to proceed to registration.
The 2016 reform repealed the rule under former Article 8, which imposed a six-month waiting period between the filing of a trademark application and the initiation of a non-use cancellation action against an earlier trademark.
Today, only the criterion of anteriority between the registration application and the cancellation request remains, without any minimum waiting period.
The reform also repealed Article 7(1)(viii), which imposed a one-year waiting period before filing a trademark identical or similar to a cancelled third-party trademark. Its removal contributes to shortening registration timelines and improving system predictability.
The Korean Unfair Competition Prevention Act (UCPA) defines consumer confusion as an act of unfair competition. However, the issue of whether the continued, good faith use of an identical or similar mark before it became widely known constitutes unfair competition has been a subject of debate. The Supreme Court of Korea ruled in 2004 that such use should be considered as unfair competition.
However, the amended Korean Consumer Protection Act (UCPA) introduces an exception for previous users in good faith. It stipulates that, in certain cases, the continued use of the mark by these users does not constitute unfair competition, as long as they used the mark before it became widely recognized and without malicious intent. The law also grants owners of well-known marks the right to request preventive measures to avoid confusion among consumers.
A provision that entered into force on May 1, 2024 introduced a legally recognized possibility to accept letters of consent issued by prior rights holders in order to overcome examiner objections based on identity or similarity.
This measure applies to all pending applications and allows applicants to submit a letter of consent to address confusion risks identified by examiners, without immediately resorting to litigation or cancellation proceedings.
On this basis, an applicant facing a provisional refusal based on similarity may:
• submit a letter of consent from the prior trademark owner,
• accompany it with a broader coexistence agreement governing future use,
• or establish contractual restrictions designed to prevent confusion in relevant markets.
This provision enhances flexibility under Korean trademark law and aligns Korean practice with that of other jurisdictions that recognize contractual consent mechanisms.
As of July 22, 2025, the opposition period has been reduced from two months to 30 days for trademarks published from that date onward.
This change has significant implications, as monitoring systems must become more responsive and internal processes detection, assessment, decision-making, and file preparation—must be optimized.
The reform of South Korean trademark law represents a decisive shift towards broader, more deterrent, and more internationally aligned protection.
In an economic environment where trademark value is central, this reform requires heightened vigilance and advanced legal expertise in order to transform legislative developments into sustainable competitive advantages.
Dreyfus & Associés assists its clients in managing complex intellectual property cases, offering personalized advice and comprehensive operational support for the complete protection of intellectual property.
Nathalie Dreyfus with the support of the entire Dreyfus team
Is it mandatory to appoint a local representative to file a trademark in South Korea?
Yes. Applicants who have neither domicile nor establishment in South Korea must act through a KIPO-accredited representative. This requirement applies to both national filings and subsequent procedures, including responses to objections, oppositions, and cancellation actions.
What is the term of protection of a trademark in South Korea and how can it be renewed?
A registered trademark is protected for ten years from the date of registration. Upon expiry, the owner must renew the registration to extend protection for a further ten-year period. This process may be repeated indefinitely, subject to compliance with applicable formalities and deadlines.
What are the average timelines for trademark registration in South Korea?
In the absence of objections or opposition, registration generally takes between six and eight months. However, shortened opposition periods and active examination practices may significantly extend the process in contested cases.
Is prior use required before registration?
No. The Korean system is based on the filing principle rather than prior use. However, failure to make genuine use for a continuous three-year period exposes the trademark to cancellation for non-use, now available to any third party.
Does KIPO conduct an ex officio examination of distinctiveness?
Yes. Distinctiveness is examined ex officio. Descriptive, generic, or non-distinctive signs may be refused even in the absence of earlier rights.
This publication is intended to provide general guidance and highlight certain issues. It is not intended to apply to specific circumstances or to constitute legal advice.
Written by Nathalie Dreyfus04/10/2016
The Sultanate of Oman, a Middle Eastern country situated in the south of the Arabian Peninsula, has undergone several major changes in its intellectual property law through the decision no. 124/2016 of the Ministry of Trade and Industry.
A major reform for trademark holders
This act is mainly designed to regulate the registration of trade names and to extend trademark protection for the benefit of holders of intellectual property rights. Prior to this reform, trade names were not published as trademarks and could not, therefore, be subject to an opposition. The new act now allows all trademark holders to apply for the cancellation of any trade name, if the latter is similar to a national or international trademark already registered and protected in Oman.
Dr. Ali bin Masoud al Sunaidy, Minister of Commerce and Industry, also recalled a fundamental principle in the field of Omani intellectual property law. Indeed, registered trade names must be composed of Arabic words, except if they are names of international companies registered in the Sultanate.
In addition, a trade name with political, religious or military connotations, or containing the word “Oman” will also be refused.
A regional opening
This change is in line with recent legislative developments carried out in the Middle East. The United Arab Emirates for instance have adopted, in early 2015, a similar reform to reduce conflicts between trade names and trademarks.
Written by Nathalie Dreyfus04/10/2016
The use of a trademark as a hashtag on social networks sometimes causes problems for companies who feel that their intellectual property rights have been infringed.
Opposition to an unrestricted and free use of the hashtag, in this case #Rio2016, also originated from several Olympic Committees in the context of the 2016 Summer Olympic Games in Rio.
The firm position of the Olympic Committees
During the Summer Olympic Games of 2016, the hashtag “#Rio2016” was obviously widespread across the Internet and on various social networks. Many Internet users and companies have frequently used the hashtag to support and encourage their national team.
However, not everyone was enthusiastic about this practice. In fact, several Olympic Committees, including Germany and the US, banned the use of the hashtag by non-Olympic sponsor companies. The Committees considered that the companies were not entitled to use the hashtag since, according to the Committees, such use is an act of counterfeit which infringes their intellectual property rights.
In the United States, the Committee served notice to a women’s ready-to-wear company, Oiselle, to remove a picture posted on Instagram of a track and field athlete of the national team who is also the brand ambassador, and under which the caption included the hashtag #RoadtoRio. The founder of the trademark, Sally Bergeson, has also reacted to the controversy by posting on her blog an article about the rule that is causing this prohibition, “Rule 40“. The rule, enshrined in the Olympic Charter states that “except as permitted by the IOC Executive Board, no competitor, team official or other team personnel who participates in the Olympic Games may allow his person, name, picture or sports performances to be used for advertising purposes during the Olympic Games.”
However, the decision was not unanimously nor positively welcomed. Some companies in the United States defended themselves by suing the Committee and condemned a ridiculous and far too strict restriction policy.
Abusive bans
In Europe these prohibitions also seem absurd. In reference to the judgment of the Court of Justice of the European Union on September 22, 2011 involving Interflora and Marks & Spencer, the use of a trademark as a Google AdWord can be an act of counterfeit if that use has adverse effects on the functions of the trademark, that is, on the specific image which the company wants to create in the mind of the consumer. One can draw a parallel between Google AdWords and hashtags and consider that only a hashtag which adversely affects the functions of the trademark can be prohibited.
Yet, if the company simply wishes to support its country in the context of the competition and if no business link is established between the Olympic Games and company (i.e. if the hashtag is not used in relation to the goods and services of the company), then it is entitled to use this hashtag.
The hashtag #Rio2016 therefore cannot be protected in the same manner as the Olympic rings symbol for example, because it is not a trademark or a design within in the strict legal sense of the term. Thus, its use should not be as limited as some Olympic Committees are arguing.
