On 1 May 2024, Korea’s letter of consent system for similar trademarks will come into force. This is an amendment to the Korean Trademark Act enacted on 31 October that will allow a new trademark to be registered despite the existence of an older similar trademark, provided it is accompanied by a letter of consent.
This letter of consent will act as an authorisation and must be provided by the owner of the previously registered trademark. However, this system will not apply in cases where there is identity between the distinctive signs and the goods or services covered.
This novelty will also apply to trademark applications filed after the entry into force of the above-mentioned law, as well as to trademark applications that were filed during the previous law and are still pending on 1 May.
In case of receiving a refusal decision from the Korean Intellectual Property Office (KIPO) based on a ground of similarity with an earlier trademark, a good strategy would be to file an appeal against that decision with the Korean Intellectual Property Court (KIPT) and obtain the letter of consent from the owner of the earlier trademark.
Another strategy may be to try to gain time by requesting extensions. It is possible to request 4 such extensions of one month each after the response period, which is 2 months. In the case of an international registration of a trademark through the Madrid Protocol, such extension could only be requested twice. In this case, it would be possible to delay the examination by a separate reply and then submit the letter of consent through a procedure for the provision of information.
Further details on the amendment are expected in March or April 2024. When this happens, these details will be set out in the Examination Guidelines.
And a new provision against illicit use.
In addition to the amendment, a provision has also been added to the Trademark Act stipulating that, in the event that a trademark registered on the basis of a letter of consent is subsequently used for an unlawful purpose, causing confusion among consumers, the trademark may be cancelled through a cancellation lawsuit. Consequently, it is necessary to include information on the prevention of confusion among consumers in the letter of consent.