APAA e-Newsletter (Issue No. 41, June 2024)

Korean Trademark Act: Acceptance of Letters of Consent and its Impact on Trademark Coexistence

Sang-Eun Shin, NAM IP Group (South Korea)

Background: Transition from Temporary Assignment to Letters of Consent

In the past, the Korean Trademark Act did not accommodate Letters of Consent for trademark coexistence. This resulted in parties seeking for coexistence agreements to resort to alternative methods such as “temporary assignment.” In this workaround, one party would temporarily assign their trademark to another, only to have it reassigned later once the junior application had achieved registration. While effective, this process was complex and required considerable trust.

However, with the new law revision, the acceptance of Letters of Consent has become possible, simplifying the trademark coexistence process. This change took effect on May 1, 2024, impacting not only new applications but also any pending trademark cases filed under the earlier Trademark Act.

Korean Intellectual Property Office (KIPO) Guidelines for Letters of Consent

The Korean Intellectual Property Office (KIPO) has issued preliminary guidelines detailing the requirements for Letters of Consent. The following is an overview of the key requirements:

  • Details of the Junior Application Owner:

Name, KIPO Customer Number (or reason for non-existence, such as with international registrations), application or International Registration number, and signature.

  • Details of the Senior Application/Registration Owner:

Name, KIPO Customer Number (or reason for non-existence), application/registration number, and signature.

  • Scope of Consent:

A list of goods/services for which consent is granted or consent for “all” goods/services within a specific Class.

  • Confirmation and Date of Consent:

An acknowledgment that the consent and senior coexisting trademark(s) will be recorded in the trademark register, along with the date of consent.

Limitations and Restrictions on Letters of Consent

While the new policy brings flexibility, certain restrictions still apply to Letters of Consent:

  • Notarization/Legalization:

Not generally required, but KIPO examiners may request additional documents at their discretion.

  • Situations Where Letters of Consent Are Not Accepted:

When both junior and senior marks and their respective goods/services are identical.

If the Letter of Consent includes conditional restrictions such as time limits, geographical boundaries, or partial exclusion of legal effects, which KIPO cannot enforce.

If the consent lacks specificity, such as blanket consent for “all future applications.”

  • Usage Limitations:

Letters of Consent are acceptable when addressing refusals due to a likelihood of confusion with a senior registered trademark or senior application. However, they are not accepted if the refusal is based on other grounds, such as the similarity to a “famous” mark.

Impact on Trademark Cases Post-May 1, 2024

With the new policy in place, the need for complex “temporary assignment” procedures diminishes, streamlining the trademark coexistence process. However, while the change offers clarity, it also impacts pending cases. Considering the timing of the law revision, parties must consider how this new approach affects their strategies and future coexistence agreements with respect to Korea. Those preparing coexistence agreements or dealing with trademark refusals should carefully adhere to the new guidelines and consider seeking professional guidance to ensure compliance with the updated Korean Trademark Act.