All trademark applications in Korea are examined for both absolute and relative refusal grounds, and refusals based on similarity with another party’s conflicting senior mark are commonplace. In fact, KIPO statistics indicate that approx. 40% of office actions issued against trademark applications in 2022 included a refusal ground due to conflict with a senior mark.
In such situations, if the conflicting goods/services of the pending application are important to the applicant and cannot be deleted, trademark practitioners in Korea are often asked whether it is possible to obtain and submit a letter of consent from the owner of the senior mark, expressing their agreement to the co-existence of both marks on the register. This is a topic which has been considered by the IP office in the past, but to date the answer has always been negative, with letters of consent, co-existence agreements etc. not accepted by KIPO examiners.
However, recent developments indicate that change is on the horizon.
At present, the only practical way to achieve co-existence of conflicting marks on the register is to unify the ownership of the marks via assignment (with all relevant marks being owned by the same party) until the refusal ground is withdrawn and the junior application is granted registration. At this time, the original ownership can be restored via an assignment in the reverse direction. This is often referred to as a “temporary assignment” or “assign-back” procedure. However, even if both parties are cooperative, the additional complexity in securing agreements and the documentary requirements (notarized deeds of assignment being necessary at each stage, for example) make it significantly more time- and effort-intensive than simply obtaining a letter of consent.
The complexity escalates even further if there are multiple senior marks owned by different parties, in which case unification of ownership may be a practical impossibility. Brand owners are also often unwilling to cooperate in such a procedure if it means relinquishing ownership of their marks — albeit temporarily — even in cases where they do not oppose the registration of the junior application.
In her New Year’s address, KIPO Commissioner Insil Lee
specifically mentioned the need for a letter of consent system to enable easier coexistence of trademarks. Following this, a bill with amendments to the Trademark Act was submitted before the National Assembly on March 20, 2023 (link
in Korean). The bill proposes the following changes:
Allow a refusal ground based on conflict with a senior mark to be withdrawn if consent from the owner of the senior mark is obtained, except in cases where the respective marks and goods/services are identical.
Allow for cancellation of a mark registered based on such consent, should the mark be used anti-competitively and cause consumer confusion.
While the pending bill is still at the committee review stage and several more steps must be completed before its promulgation into law, considering the current context and opinion surrounding this issue we are optimistic that the proposed changes will pass through the legislative process and eventually come into effect. We will be monitoring the progress of the bill and will report on any noticeable developments.
Written by Jonathan MASTERS