On October 31, 2023, the amendments to the Korean Trademark Act ("KTA") which introduce the long awaited letter of consent system, among others, were promulgated. The amendments will take effect on May 1, 2024. We highlight the notable amendments below.

1. Introduction of a letter of consent system

Under the current KTA, letters of consent cannot be accepted as a means of overcoming office actions citing senior marks. As a result, parties who agree to co-exist have been utilizing an assignment/assignment back strategy to temporarily place the application and the senior mark under the ownership of one of the parties until the application is registered. Once the new amendments come into effect, consent letters can be used to overcome such rejections instead, as long as the parties do not intend to register identical marks for the same goods. The amendments further specify that consents can be submitted for applications which are still pending when the amended KTA comes into effect, making it possible to start using the new system immediately. 

According to KIPO's statistics, about 40% of all trademark-related office actions issued by KIPO in 2022 involved a rejection based on conflict with a senior mark. As consent letters are not currently accepted even if the applicant and cited mark owner are related entities, the adoption of the consent system will reflect actual trade practices and significantly ease the process of obtaining a registration where the parties are willing to co-exist. 

The amendments also introduce a protective measure that allows for the cancellation of a mark that was registered based on a letter of consent, if it is used for unfair competitive purposes and causes consumer confusion and/or deception. If a registration is cancelled based on the above ground, the registrant will be prohibited from registering a mark that is identical or similar to the cancelled mark for goods which are identical or similar to the goods of the cancelled mark, if the application is filed before three years pass from the date the cancellation decision becomes final and conclusive. 

2. Automatic recognition of priority for converted applications

Under the KTA, applications can be converted in several instances. That is, collective mark and certification mark applications can be converted into general trademark applications, and vice versa. Certification mark and collective mark applications can be converted into the other, and a goods-addition application can be converted into a general trademark application. However, under current practice, even if the original application claimed priority, such priority must be specifically claimed also for the converted application, and the priority documents must also be separately submitted. 

The amended KTA will provide that as long as priority was properly claimed in the original application, the same priority claim will automatically be recognized for the converted application. Furthermore, if the priority documents were submitted for the original application, such documents will be considered to have been submitted for the converted application as well.

This amendment will eliminate unnecessary rejections based on an inadvertent omission of the priority claim and/or the documents for converted applications.

3. Extinguishment of trademark rights

The current KTA stipulates that if an heir has failed to record the transfer of a trademark registration within three years of the death of the trademark registrant, the trademark rights will expire the day after the three year period ends. However, there is no provision that addresses the case where there is no heir. 

Accordingly, the amended KTA includes a clause specifying that trademark rights will immediately expire if the deceased registrant has no known heirs at the time of death. 

4. Allowance of divisional applications for International Registrations 

Under the KTA, the owner of a trademark application or registration can partially assign some of the goods in their application or registration. Additionally, any designated good can be divided out of an application or a registration. However, for extension applications and registrations obtained through the Madrid Protocol, a divisional application of goods is allowed only when accompanied by a partial assignment. The most significant effect of this is that the option of filing a divisional application when only a portion of the goods is preliminarily rejected, which is available for national applications, is not available for Madrid Protocol applications. 

The amended KTA removes such limitations, so that applicants using the Madrid Protocol system can also divide their application or registration for any of the designated goods. 

5. Relaxation of the requirements for replacement of a national registration by an International Registration

When filing an application for an international trademark registration ("IR") designating Korea, the current KTA provides that if the holder of a Korean national registration satisfies the following requirements, the extension application will be deemed to have been filed on the application date of the Korean national registration, to the extent that the designated goods overlap: (i) the compared marks are identical; (ii) the holder of the IR and that of the Korean national registration are identical; (iii) all the goods listed in the national registration are also listed in the IR; and (iv) the territory extension of the IR takes effect after the date of the national registration.

To reflect the recent revision of the corresponding clause in the Regulations under the Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks, the amended KTA removes the above requirement (iii).