Madrid System is operated by the Madrid treaty and Madrid Protocol which is expanding the applicant’s conveniences greatly with the simplification of the procedure and reducing the cost with the characters of [1 application system for multi-nations] and [User-Friendly System]
There is no need to hire the attorney for the application in each of countries at the stage of international registration in principle, so you can reduce the cost of attorney fees.
When the registration is decided without the provisional rejection notice, there is no need for the help of attorney who has his address in Korea. But if there is the reason of rejection after the examination on the international trademark application, “the provisional rejection notice by the discretion” will be given and if there is the motion for the objection, “the provisional rejection notice based on the motion for the objection” will be given to the applicant and the international administrative office.
When you receive the notice of the provisional rejection by the examiner’s discretion or the notice of the provisional rejection based on the objection, you should submit the letter of opinion or the correction with hiring the agent in Korea.
Because the designated office document should be submitted by the Korean agent, when there is the “objection” etc raised, corresponding the notice with hiring Korean attorney is advantageous.
Designation of attorney is completed with simply submitting “the power of attorney” of the applicant.
PATENT IN KOREA is showing that the high rate of success in trademark registration in Korea against rejections with the number of 500 cases annually.
This firm is the most suitable and the strongest agent for the “Motion for the objection”
II. Case of overcoming the motion of Objection
[Summary of the reason of objection]
The demurrer is asserting that the registration should not be granted with the reason of that when “MP3”, the name of the trademark in this case is used for “cosmetics, soap, and beauty supply products”, it will raise the possibility of confusion with the “MP3” under the Act of Trademark Art. 7.1.11. in the objection which was submitted on Aug 21, 2006 and the its correction of Sep 20, 2006
The international application of trademark in this case has its object for the “cosmetic product” there is no possibility of existing customers who will confuse with “the cosmetics” and “MP3 player” as the electronic device, therefore it is not under the Trademark Act Art 7.1.11.
(1) There will be no concern of confusing, because the reason of the designated product is “cosmetic”, so it is wholly different with the “MP3 player” as an electronic device and “digital compressed file” which is the invisible program.
(2) Furthermore, “cosmetic products” are sold at “the cosmetic specialized shop”, and “MP3 player” is sold at “”Electronic products store” and “the MP3 file” is the product which can be purchased by downloading from the computer, so these selling places are completely different from each other,
(3) Korea Supreme Court has decided in the precedent case that there is no concern of confusing in the qualities of the products even when the trademark which has the meaning of “Hamburger” is used for “the plain bread”, because of the totally different qualities of products.
Therefore, the objection of this case which was raised with the reason of possible confusion when the name of “MP3” is given to the “cosmetics”, those “cosmetics” will be misrecognized as the “MP3 player” or “MP3 file”, even though this international application of trademark is well qualified as the registrable trademark and also not coming under the trademark act art 7.1.11, can be said that this is mere the assertion without the perceptible reasons which was based on the misunderstanding of the above article of act, please issue the decision which was shown in the intent of the written answer for the objection.
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III. Case of the provisionary rejection by the
examiner’s discretion.
[Reason for the rejection]
심사관님께서는 본원상표에 대한 2006년 8월 18일자 의견제출통지서에서,
『The assigned examiner refuses registration because the identification of
some of the designated goods, which are listed below, is not specific and is
too broad a description to accept. Korean Trademark Act, Article 10(1).
[Class 21] glassware, etc.』
라고 지적하신 바, 출원인은 거절이유에 대하여 하기와 같은 내용의 의견을 개진하
는 바입니다.
[ 의견내용 ]
1. The 21nd class: coffee cups, tea cups and mugs, dishes, plates and bowls
Although there was not the indication of the examiner, it is regarded as the comprehensive name, so we have decided to correct to “the Coffee cups not of precious metal; tea cups and mugs not of precious metal; dishes not of precious metal; plates and bowls not of precious metal”
These all products are one sort of the “tableware not of precious metal” from the product classification of the 21th class, the 7th type (G1802B), those are deemed to be belonged to the same class and the same type.
2. The 21th class: glassware
We have corrected above indicated product as following.
(1) Figurines made of glass
This product is one sort of “sculpture made of glass” from the product classification of the 21th class of the 41th type (G5203), it is deemed to be belonged to the same class and the same type.
(2) Vases made of glass
This product is one sort of “vase not of precious metal” from the product classification of the 21th class of the 27th type (G2603), it is deemed to be belonged to the same class and the same type.
(3) Drinking glasses made of glass
This product is one sort of “tableware not of precious metal” from the product classification of the 21th class of the 7th type (G1802B), it is deemed to be belonged to the same class and the same type.
3. The 21th class: tableware other than knives, forks, spoons, not of precious metals
We have corrected above indicated products to “cooking dishes not of precious metal; serving dishes not of precious metal
This product is one sort of “tableware not of precious metal” from the product classification of the 21th class of the 7th type (G1802B), it is deemed to be belonged to the same class and the same type.
4. The 21th class: pepper grinders
Although there was not the indication of the examiner, it is regarded as the comprehensive name, so we corrected to “the hand-operated pepper grinders”
This product is shown as one of sample in the product classification of the 21th class of the 8th type (G1803), it is obviously belonged to the same class and the same type.
5. The 21th class: serving trays
Although there was not the indication of the examiner, it is regarded as the comprehensive name, so we corrected to “serving trays not of precious metal”
“Serving trays not of precious metal” is shown as a sample in the product classification of the 21th class of the 8th type (G1803), this product is obviously belonged to the same class and the same type.
6. The 21th class: jugs
Although there was not the indication of the examiner, it is regarded as the comprehensive name, so we corrected to “jugs not of precious metal”
This product is shown as one of sample in the product classification of the 21th class of the 6th type (G1801), it is obviously belonged to the same class and the same type.
7. The 21th class: pots
Although there was not the indication of the examiner, it is regarded as the comprehensive name, so we corrected as following
(1) Non-electronic pots made not of precious metals; non-electronic teapots made not of precious metals; non-electronic coffeepots made not of precious metal
This product is one sort of “pots not of precious metal (excluding electronic type” from the product classification of the 21th class of the 6th type (G1801), it is deemed to be belonged to the same class and the same type.
(2) Flower pots
This product is shown as one of sample in the product classification of the 21th class of the 15th type (G1815), it is obviously belonged to the same class and the same type.
8. The 21th class: accessories for the bathroom such as soap dishes, cosmetic utensils
We have deleted indicated products from the application.
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