Lee International

Under the previous Trademark Act, a trademark application may be refused if it is deemed similar or identical to pre-existing trademark applications or registrations owned by third parties. This posed an inconvenience for trademark applicants, as they had to undergo an assignment process to align the owners of their application with the owners of pre-existing trademark applications or registrations in order to overcome the refusal and obtain trade mark registration.

The Trademark Act now allows the use of a Letter of Consent to address this concern. Specifically, even if a trademark application is deemed similar or identical to pre-existing trademark applications or registrations owned by others, the refusal can be overcome if the owner of the pre-existing trademark applications or registrations consents to the registration of the trademark application (Article 34 (1) 7 and A rticle 35 (6)).

With this amendment, even if a trademark application is rejected on the grounds of similarity or identicalness to a pre-existing trademark, a more straightforward method of coexistence is now available through a Letter of Consent by the existing trademark owner. The changes apply to all pending trademark applications as of the effective date.

However. it's crucial to note that while the Letter of Consent serves to address a refusal ground for a specific trademark application, its scope is limited.  A comprehensive co-existence agreement, on the other hand, will provide clarity on various aspects beyond the specific application, such as potential additional trademark filings, territorial scope, usage guidelines, and dispute resolution mechanisms. This a pproach ensures that all parties are fully aligned on their respective rights and obligations, minimizing the risk of future conflicts. Therefore, we highly advise the parties involved to consider entering into a co-existence agreement, in addition to obtaining a Letter of Consent.