APAA e-Newsletter (Issue No. 33, February 2023)

Amendments to the Korean Trademark Act – Adoption of Partial Refusal System and Re-Examination System

Sunmi Lee, Y.P. Lee, Mock & Partners (Korea)


The recently revised Korean Trademark Act has adopted the “Partial Refusal” and “Re-examination” systems to give applicants more opportunity to amend goods and help reduce the cost of dealing with refusals.

The key features of these changes are summarized below.

1. Partial Refusal System

Under the Partial Refusal system, the Examiner will issue the Final Refusal only with respect to the goods directly related to the maintained refusal grounds among those raised in the Provisional Refusal(s).

That is, the mark will be granted for the non-refused goods even if no steps are taken to try to overcome the Final Refusal. Further, the grant of the non-refused goods will be deferred until the final disposition of the refused goods.

Therefore, if an applicant desires to register the mark covering only the non-refused goods, the applicant can do so at less cost compared to the Total Refusal system. This would be particularly beneficial if the mark has been refused only with respect to the goods of minor interest to the applicant.

In addition, it will be possible to file an Appeal with regard to only some of the refused goods and withdraw the Appeal on a goods-by-goods basis. It is anticipated that the latter would save the applicant time and cost in a case where the applicant filed a non-use cancellation action against a conflicting prior mark but valid use evidence was submitted at a later stage of the action, or where the applicant tried to negotiate an assignment with the cited mark owner but the negotiation later failed.

This Partial Refusal system will be applied to marks filed on or after February 4, 2023, and will be applied not only to local trademark applications but also to International Trademark Registrations.

As a side note, considering the anticipated increase in the Examiner’s workload due to issuing Partial Refusals, the examination backlog at the KIPO may become larger next year. To shorten the wait time to receive the examination results, fast-track examination can be requested. Also, if the applicant wishes to avoid the deferment of the grant of the non-refused goods of a local trademark application, filing a divisional application for the non-refused goods can be considered.

2. Re-examination System

The revised Act also provides re-examination of an application where the goods have been amended after the Final Refusal and for which the applicant has requested re-examination.

Re-examination must be requested within 3 months from the receipt of the Notice of Final Refusal, and may be requested only once.

When re-examination is requested, the Final Refusal will be automatically revoked. If the application is again finally refused even after re-examination, the applicant can contest the Final Refusal by filing an Appeal.

Under the previous Act, an Appeal had to be filed even in the case that the refusal grounds can be overcome just by appropriately amending the goods. Through re-examination, the applicant in such a case can avoid lengthy and costly appeal proceedings.

Re-examination will be available to Korean local trademark applications filed on or after February 4, 2023. However, it will be unavailable to International Trademark Registrations designating Korea. Also, re-examination will be unavailable to an application that has been refused as a result of an opposition proceeding.