Lee International

Revisions to the Korean Trademark Act (“KTA”), passed by the Korean National Assembly on October 6, 2023 and promulgated on October 31, 2023, will take effect on May 1, 2024.  

The notable amendments are provided below.

1.      Introduction of coexistence agreement for trademarks

Under the current KTA, a letter of consent or coexistence agreement is not accepted as a means of overcoming the refusal based on prior marks.  Thus, if a later-filed mark is rejected for being identical or similar to a prior mark, the applicant of the later-filed mark must inconveniently undergo an assignment process to align the owners of the conflicting marks or filing of a non-use cancellation action against the prior mark.  According to KIPO’s statistics, more than 40% of all official action relating to trademarks were based on conflicting prior marks.

The revisions include a provision allowing a coexistence agreement.  Under the new rule, even if a later-filed mark is rejected based on a prior mark, the refusal can be easily overcome if the owner of the prior mark consents to the registration of the later-filed mark.  [Article 34(1)(vii) parentheses and Article 35(6) newly established].

This revision will significantly streamline the registration process by allowing the applicants to seek co-existence consent from the prior mark owners, making it easier to overcome the refusals based on prior marks.  Further, it is expected to prevent unnecessary trademark disputes by establishing agreements on the designated goods and the regional scope within co-existence agreements between the parties in advance.

2.      Allowance of divisional application for International Trademark Registrations or Basic Application for International Trademark Registration

Under the current KTA, an applicant of a national trademark application or registration can partially divide or transfer by separating some of the goods from its existing application or registration and file it as a divisional application.  However, for an International Trademark Registration or Basic Application for an International Registration, a divisional application is allowed only when accompanied by a partial assignment.  As such, even if an office action is issued for an international trademark registration concerning only some goods, since any divisional application is not allowed, the applicant must either appeal the final refusal for the entire goods or file a new application for the refused goods.

The revised KTA reflects the amendments to the Madrid Protocol Rules (Article 27-2) revised in 2019, allowing division of an international trademark registration and basic application for the international trademark registration (Amended Articles 187 and 200).

This revision has a significant impact in that if an international trademark registration is refused based on a conflict with a prior mark only for some goods, the refusal can be easily overcome by dividing or deleting the objected goods to expedite the registration for the non-refused goods.

The revisions will come into effect on May 1, 2024, six months after their promulgation on October 31, 2023.  These changes will apply to all trademark applications that are pending at that time.  For currently pending trademark applications, especially those refused based on conflicts with prior marks, it is recommended to consider coexistence agreements or divisional applications starting May 1, 2024.