A revision to the Korean Trademark Act (“KTA”), adopting partial rejection and re-examination, went into effect on February 4, 2023.

▶Partial Rejection System

When examining a trademark application designating multiple goods, KIPO examiners are required to specifically identify the refusal ground for each good. Prior to the revision, if a preliminary rejection was issued against only some of the goods and the applicant did not take any action, a final rejection was issued against the entire application. If the applicant wished to move forward to register the mark only for the non-rejected goods, it was necessary to delete the rejected goods in order to avoid a final rejection for the entire application. Once the final rejection was issued, such deletion was allowed only after filing an appeal against the final rejection before the KIPO Tribunal.

With the introduction of the partial rejection system, a final rejection will be issued only against the goods that are preliminarily rejected, obviating any need for the applicant to take any additional step. The other non-rejected goods will be put on track for publication, but the actual publication in the Official Gazette will be made only after the final rejection against the rejected goods becomes final and conclusive. Therefore, if the applicant voluntarily deletes the rejected goods, it would have the effect of expediting the prosecution by approximately 6~8 months.

It is also possible under the revised law to file an appeal against the rejection of some or all of the rejected goods/services and likewise withdraw an appeal with respect to some or all of the rejected goods/services.

▶Re-Examination System

The re-examination system has been introduced to help overcome a final rejection by filing a simple amendment, such as limiting the scope of goods/services.

Under the old law, once an application was finally rejected, the applicant was required to lodge an appeal before the KIPO Tribunal, even to make a simple amendment to the goods/services. With the adoption of the re-examination system, the applicant has the option of submitting an amendment with a request for re-examination, without having to go through the appeal procedure.

The re-examination request may be submitted during the same period, when the applicant is allowed to file an appeal against a final rejection (i.e., three months from the date of receipt of the final rejection), and may be made only once. Further, the request cannot be made if the applicant has already filed an appeal against the final rejection.

The re-examination system, unlike the partial rejection system, is applicable to national filings only, and does not apply to trademark applications filed through the Madrid system.