New Trademark Procedures in Korea – Essential Considerations for Businesses

In October 2023, South Korea enacted a new trademark law aimed at introducing greater flexibility to its stringent trademark registration process, which historically mandated complete uniqueness for later-filed marks compared to existing marks. The existing law in Korea dictated that a later-filed mark, resembling a senior mark already registered with the Korean Intellectual Property Office (KIPO), would face rejection. This necessitated the implementation of the “assign back” system.

Under the “assign back” system, the rejected later-filed-similar mark, referred to as the “Similar Mark,” is temporarily assigned to the owner of the existing senior mark. Subsequently, once the grounds for rejection due to similarity are resolved, the Similar Mark is re-assigned to its original owner. However, this system is complicated, inefficient in terms of cost and time, and diverges from registration practices in various other countries, such as the United States and many European nations, where a Similar Mark can be registered with the submission of a letter of consent from the owner of the senior mark.

A letter of consent is an agreement by the owner of a senior mark allowing the coexistence of a Similar Mark. The new trademark law in Korea, effective from April or May 2024, permits the submission of a letter of consent to the KIPO to overcome the rejection of a Similar Mark based on similarity. This provision applies retroactively to applications filed before the law’s implementation and pending registrations. However, it does not apply when the marks are identical and used for identical goods or services. Additionally, as a protective measure, if a Similar Mark, registered based on the letter of consent, is later employed for unlawful purposes causing consumer confusion, its registration may be canceled. In such cases, the KIPO will not approve the registration of another similar mark for three years from the date of cancellation.

The primary objective of the new law is to streamline the trademark registration process, fostering the coexistence of similar marks, provided they do not generate consumer confusion. The aim is to support small to medium-sized enterprises and small business owners in optimizing their intellectual property.

Anticipated outcomes include a surge in new trademark registrations and cancellation proceedings against existing registrations due to the revised law. Both existing trademark owners and prospective applicants in Korea will be affected. Existing owners need to ensure that Similar Marks registered with their consent are not being misused or causing confusion among consumers. Meanwhile, prospective applicants, especially those contending with conflicting senior marks, should take precautions to prevent future unlawful use or consumer confusion.

Most crucially, business owners with trademark registrations in Korea not actively used in commerce should brace themselves for potential challenges to their registrations. Trademark registrations are susceptible to cancellation based on non-use if not utilized in commerce for three consecutive years. Expect an increase in non-use cancellations as practitioners may resort to this tactic to draw attention to current trademark holders and gain leverage in obtaining a letter of consent.

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– You could visit here to see the Procedure of Trademark in South Korea.

– You can also check the Required documents of filing trademark in South Korea.

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