#Mr. A recently discarded all the signs and tableware prepared for his restaurant opening. The trouble began after he hastily finalized the restaurant name. The name Mr. A chose had already been registered by someone else as a similar trademark. Fortunately, since the two were in different regions and the restaurant menus were different, he obtained the other party's consent (permission to use the trademark). However, this did not overcome the institutional limitation that the same name cannot be registered as a trademark.
#Mr. B is also facing difficulties for the same reason. Mr. B, who runs a clothing shopping mall, recently found out that a beauty product shopping mall with a similar name was operating. Since that shopping mall had completed trademark registration, if Mr. B uses the shopping mall name as is, he could be accused of trademark infringement even though the industries differ. On the other hand, if he rashly changes the shopping mall name, he risks losing the customers he had secured so far, leaving him in a dilemma.
Like Mr. A and Mr. B, even if there is an identical or similar trademark (registration) registered earlier, from now on, it will be possible to register a trademark by another applicant with the consent of the trademark owner who registered first. The purpose is to reduce unnecessary trademark disputes and minimize losses due to trademark changes, thereby supporting management stability.
The Korean Intellectual Property Office (KIPO) announced on the 30th that it will partially amend the Trademark Act and implement the "Trademark Coexistence Consent System" with such content starting from the 1st of next month.
The Trademark Coexistence Consent System allows trademark registration when the prior registered trademark owner (prior applicant) consents to the registration of a later applied trademark with identical or similar marks and designated goods.
The system aims to resolve management difficulties where small business owners cannot register trademarks they intended to use due to identical or similar prior registered (applied) trademarks. However, this system does not apply when both the trademark and designated goods are identical.
Previously, as in the cases of Mr. A and Mr. B, if an identical or similar trademark was already registered or applied for earlier, the later applied trademark was rejected and could only be used through transfer or assignment of the trademark.
However, with the implementation of the Trademark Coexistence Consent System, the inconvenience faced by applicants like Mr. A and Mr. B will be reduced, and KIPO expects some prevention of disputes surrounding trademark rights.
It is also significant that the main beneficiaries of this system are small and medium-sized enterprises (SMEs) and small business owners. For example, as of 2022, the total number of trademark applications was 242,368, of which 198,937 applications (80% of the total) were from SMEs and small business owners.
Among these, more than 40% of the 10,000 rejected trademark applications and registrations (19,651 out of 49,733) were rejected due to identical or similar prior registered trademarks. The implementation of the Trademark Coexistence Consent System is expected to mainly benefit SMEs and small business owners.
KIPO also included safeguards in the amendment to prevent misuse of the Trademark Coexistence Consent System for improper purposes. To protect consumers, if either of the coexisting trademarks is used improperly and causes confusion or misunderstanding among consumers, the trademark registration can be canceled.
Additionally, a provision has been established to refund the registration fee already paid if the trademark right expires or is abandoned before the start of the new term, even though the renewal registration fee was paid before the expiration date.
Furthermore, KIPO included in the amendment provisions recognizing divisional applications and partial replacements for international trademark registration applications, automatic recognition of priority claims upon change applications, and considering erroneous ex officio corrections as invalid, to contribute to protecting applicants' rights and improving convenience.
Mr. Koo Young-min, Director of the Trademark and Design Examination Bureau at KIPO, stated, "We will actively collect applicants' opinions to ensure that the Trademark Coexistence Consent System is stably established in the field."
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