Following news shared earlier in the year about the likely introduction of a letter of consent system in Korea, the relevant bill passed the National Assembly in early October and the revised Trademark Act has recently been promulgated, with an effective date of May 1, 2024.
The Act also contains several other amendments of note. Please refer to the following:
Letters of consent
In response to a refusal based on citation of a senior mark, a letter of consent from the owner of the senior mark may be submitted to KIPO in order to overcome the refusal ground.
Further, the supplementary provisions to the amended Act clarify that letters of consent will be accepted even for applications filed before the effective date of the amendment, with the new rules applying at the time a decision on trademark registration is made by the examiner. In other words, from May 1, 2024 onwards a letter of consent may be submitted to overcome a refusal ground regardless of the filing date of the application.
However, an exception is that letters of consent will not be accepted when the two marks in question are identical and both marks cover identical goods/services.
A new cancellation ground applying to trademarks registered based on a letter of consent will also be available, and may be utilized in situations where anti-competitive use of the mark causes consumer confusion or deception.
Division of International Registrations
It is fairly common practice for applicants whose trademark application has been partially refused to divide out the problematic goods/services in order to register the remaining goods/services first. While such an option has been available for national applications in Korea, it has not been possible to do so for International Registrations unless the divided goods were being partially assigned to another party.
This limitation has now been removed in the amended Act, so owners of International Registrations designating South Korea will also be able to divide their applications.
Other
The amended Act will further allow for:
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Extinguishment of rights following death of TM Owner: Currently, if the heir of a deceased trademark owner does not record the transfer of rights within three years of the date of death, the trademark rights expire. The amended Act further prescribes that if there is no known heir at the time of death, the trademark rights expire immediately.
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Automatic recognition of priority claim for converted applications: Where an application is converted from one type to another (e.g. additional goods registration to standard application, standard application to collective mark etc.), where the original application had a valid priority claim, the same will be recognized for the converted application. (This removes the current need to make the same priority claim for the converted application.)
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Easier replacement of national registration with International Registration: In cases where the Korean designation of an International Registration (IR) is for a mark identical to a national registered mark, is owned by the same party as said national registered mark, and the Korean designation of the IR mark was made after the registration date of the national mark, the application date of the IR mark will be deemed to be the application date of the national registration, with respect to any goods/services that overlap with those of the national registered mark. (This removes the current need for all goods/services of the national registered mark to be included in the specification of the IR mark.)