Korea Introduces Trademark Co-Existence Consent System

A bill to amend the Korean Trademark Act was submitted to the Korean National Assembly on 20 March 2023. The amendment aims to introduce a trademark co-existence consent system to overcome the prior trademark barrier, which is a long-awaited system to the trademark industry.

Traditionally, the Korean Intellectual Property Office (“KIPO”) has taken a strict approach to trademark registration, requiring trademarks to be completely unique from existing trademarks. Even if the applicant submits a letter of consent for co-existence from the owner of the cited mark to the KIPO, the KIPO will not accept the late application for registration. Therefore, apart from signing a co-existence agreement, both parties have to use convoluted tools such as the “assigning back” strategy to overcome prior registered trademarks. This means that the late application that has been preliminary refused is assigned temporarily to another party so that the mark is under the same owner, and then the temporarily assigned mark will be re-assigned to the original owner once the grounds of refusal have been overcome and the late application can be successfully registered.

The current practice is not just only very inefficient in terms of cost, time and procedure, but also inconsistent with other countries' systems. Some countries, while also examining conflicting trademarks, will also consider co-existing consents (if submitted) during the examination. Due to the above reasons, the need to introduce a co-existing consent system has been under debate in Korea for years. The amendment still needs to go through several procedures before it is finally adopted, but is expected to be enacted by the end of this year. This amendment is intended to improve Korea’s trademark law to be more adaptable to the new market conditions.