Use It or Lose It: Navigating 3-Year Non-Use Cancellations (Article 119)

South Korea’s trade mark system operates on a first-to-file basis without a pre-registration use requirement. Applicants need not prove that they have used the mark in commerce before filing, and use evidence is not required at registration or renewal. However, this liberal approach to registration is balanced by a powerful post-registration safeguard: Article 119(1)(3) of the Korean Trademark Act (KTA), which allows any person to seek the cancellation of a registered mark that has not been used in Korea for three consecutive years.

The Legal Framework: Article 119(1)(3)

Under Article 119(1)(3), any registered trade mark that has not been used by its owner, an exclusive licensee, or a non-exclusive licensee in Korea for a continuous period of three years is vulnerable to cancellation through an administrative trial before the Intellectual Property Trial and Appeal Board (IPTAB).

The key features of this provision are:

• Three-year continuous period: The relevant period is the three years immediately preceding the date the cancellation trial is filed. Any use within that three-year window is sufficient to defeat the cancellation — provided the use qualifies as genuine, bona fide commercial use.
• Standing: Any person: Following the 2016 amendment (Article 119(5)), any person may file a non-use cancellation trial, regardless of whether they have a direct material interest in the cancellation. There is no requirement to demonstrate legal standing or to prove that the registration causes them harm.
• Burden of proof on the registrant: Once the cancellation is filed, the burden shifts to the trade mark owner to prove that the mark has been used in Korea during the relevant three-year period. The petitioner does not need to submit evidence of non-use or an investigation report.
• Retroactive effect: Under Article 119(6), when a non-use cancellation becomes final, the trade mark rights are deemed to have been extinguished from the filing date of the cancellation trial, not from the date the decision becomes final. This retroactive date is significant for priority and intervening applications.

What Constitutes Bona Fide Use?

The trade mark owner must prove use of the mark in the form as registered, in the ordinary course of trade in Korea. The following principles apply:

• Substantially identical use: The mark must have been used in a form that is substantially identical to the registered mark. Korean courts have interpreted this to include minor modifications that do not impair the identity of the mark — for example, a registered English mark used alongside its Korean transliteration, or a mark with minor font variations. However, significant alterations to the mark’s dominant elements can render the use insufficient.
• Use in commerce in Korea: The use must occur within South Korea. Export-only activities, use on websites not targeted at Korean consumers, and use in other countries do not satisfy the requirement.
• Genuine commercial use: The use must be genuine and in the ordinary course of business. Token use — such as a single nominal sale arranged solely to preserve the registration — may be challenged as insufficient. The use must be consistent with the nature and scale of the business.
• Use for the designated goods or services: The use must be in connection with the specific goods or services for which the mark is registered. Use on different goods, even if related, does not protect the registration for the designated goods.

The High Success Rate for Challengers

Non-use cancellation actions in Korea have a remarkably high success rate. Statistics show that over 80% of challenged marks have been cancelled over recent years. This reflects several factors: the broad standing to file (any person can challenge), the burden of proof falling on the registrant, and the strict standard for what constitutes qualifying use. For challengers, this makes non-use cancellation one of the most effective tools for clearing the register.

The Re-Filing Strategy

Given the vulnerability of unused registrations, some Korean trade mark owners adopt a “re-filing strategy”: periodically filing a new application for the same mark on the same goods to reset the three-year vulnerability clock. When the new application is filed and registered, the three-year period begins anew from the date of the new registration.

This strategy has limits. If the original registration is cancelled, the former registrant is prohibited from filing an identical or similar mark for identical or similar goods for three years from the date the cancellation trial was filed (Article 34(3)). Additionally, if a third party has already filed for a conflicting mark, the re-filing strategy may not succeed due to the prior application.

Suspension of Examination

A powerful tactical use of the non-use cancellation is the suspension of examination request. When an applicant’s mark is cited against an earlier registration, the applicant can file a non-use cancellation trial against the cited mark and simultaneously request KIPO to suspend examination of their application pending the outcome of the cancellation. If the earlier registration is cancelled, the similarity citation falls away, and the applicant’s mark can proceed to registration.

Types of Evidence for Proving Use

When defending a non-use cancellation, the registrant should compile a comprehensive evidence package, which may include:

• Sales invoices and shipping records: Demonstrating commercial transactions in Korea under the mark.
• Product photographs and packaging: Showing the mark as used on actual goods sold in Korea.
• Advertising materials: Print ads, online campaigns, social media posts, and promotional materials directed at Korean consumers.
• Retail and distribution records: Evidence of the mark’s presence in Korean retail channels, both physical and online.
• Licence agreements: If the mark is used by a licensee, the licence agreement and evidence of the licensee’s use.

Strategic Recommendations

• Use your mark in Korea: The most fundamental advice. If you hold a Korean registration, ensure the mark is being used in genuine commerce in Korea for the designated goods or services.
• Maintain evidence of use: Systematically collect and archive evidence of use in Korea — invoices, product images, advertising, distribution records — on an ongoing basis. When a cancellation trial is filed, the evidence must be readily available.
• Audit your portfolio: Periodically review your Korean registrations to identify marks that are not being used. Consider whether to commence use, surrender the registration, or accept the risk of cancellation.
• Use non-use cancellation offensively: If your application is blocked by a prior registration that appears to be unused, file a cancellation trial and request suspension of examination. The high success rate makes this a cost-effective strategy.
• Act on the three-year deadline: If your mark has been unused for close to three years, take steps to resume genuine use before the vulnerability window opens.

Common Mistakes

• Relying on re-filing alone: The re-filing strategy has limits, particularly the three-year bar after cancellation. It is not a substitute for genuine use.
• Failing to keep use evidence: Many registrants who are using their marks lose cancellation trials because they did not maintain organised evidence of use. Retroactive evidence gathering is often insufficient.
• Assuming token use is sufficient: A single sale or a nominal advertisement arranged to preserve the registration may be challenged. Use must be genuine and in the ordinary course of trade.
• Ignoring licensee use: Use by a properly authorised licensee counts as use by the registrant, but the licence arrangement must be documented.
• Forgetting the retroactive effect: Cancellation takes effect from the filing date of the trial, not the decision date. This affects priority calculations for subsequent applications.

Key Takeaway

The three-year non-use cancellation under Article 119 is one of the most powerful and frequently used tools in Korean trade mark practice. With any person able to file, the burden of proof on the registrant, and over 80% of challenged marks being cancelled, unused registrations are genuinely vulnerable. For trade mark owners, the lesson is clear: maintain genuine use and organised evidence. For challengers, the lesson is equally clear: if a blocking registration appears unused, a non-use cancellation trial is a highly effective, low-risk strategy for clearing the way.