Effective May 1, 2024, the Korean Trademark Act (“KTA”) has been revised to allow the use of a consent letter of coexistence issued by a prior mark holder to overcome a rejection based on the prior mark citation.

This change aligns Korean trademark law and practice more closely with global standards.

▶Key Features of the New Consent System

Binding Nature of Letter of Consent

The letter of consent may be submitted upon filing, or when there is a rejection from the examiner based on citation of a similar prior mark. Once the letter of consent is submitted in the format requested by the KIPO, the examiner is mandated to accept it, obviating a further citation of the same mark.

Requirement for Specificity

The KIPO regulation requires that the letter of consent must clearly specify the cited mark on which the consent is based, and the scope of consent for the use of the later-filed mark. Broad or general consent, such as those covering all trademarks filed or to be filed by the applicant, are not permissible. If the rejection pertains only to certain goods designated in the later-filed mark, the consent may be limited to those specific goods.

Recordation in Trademark Registers

Upon registration of a mark based on a letter of consent, the particulars regarding the consent are recorded in the Trademark Registers of not only the later-filed mark registered with the consent but also the prior mark cited thereagainst.

The Same Legal Status

Marks registered with consent hold the same legal status as those registered without consent. Consequently, it is possible that a mark registered with consent may be cited as a conflicting prior mark against any of the consenter’s later-filed trademarks, if the marks are viewed similar to each other by the examiners.

Limitation of Withdrawal

Withdrawal of consent requires the consentee's agreement and is not possible once the later-filed mark is allowed for registration.

Grounds for Cancellation

The KTA provides grounds for canceling a registration if the mark is used for unfair competition purposes, misleads the quality of goods, or causes consumer confusion regarding the source of goods. If the owner of a later-filed mark registered with the consent misuses his mark in violation of this provision, the owner may run the risk of having his mark revoked through a cancellation action. Once the registration is canceled on this ground, the registrant will be prohibited for three years from filing any mark identical or similar to the canceled mark with respect to any identical or similar goods.