[News Terms] The 'Trademark Coexistence Consent System' That Eased Trademark Restrictions for Small Business Owners

The trademark coexistence consent system, effective from May 1, allows the registration of a later-filed trademark when the prior-registered trademark owner (prior applicant) consents to the registration of a trademark with identical or similar marks and designated goods. This system was introduced under the revised Trademark Act enacted last October. According to the amended law, the trademark coexistence consent system permits registration by submitting a coexistence consent form prepared by the prior trademark owner either at the time of trademark application or upon issuance of the examiner's notice of opinion submission, as an exception to the refusal grounds under Article 34(1)(7) or Article 35(1).

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Until now, if an identical or similar trademark was already registered or previously applied for, the later-filed trademark was refused registration. Consequently, small business owners who filed later had to bear the cost burden by using the trademark through transfer or assignment. According to statistics from the Korean Intellectual Property Office, over 40% of trademarks refused in 2022 were due to identical or similar prior trademarks. Furthermore, 82% of the applicants of these refused trademarks were small and medium-sized enterprises (SMEs) and small business owners.

However, with the enforcement of this law from May 1, the inconvenience of having to transfer the later-filed trademark to the prior (registered) trademark owner who consents to coexistence and then reclaim it after registration will be eliminated. By submitting a coexistence consent form containing details such as designated goods, registration (application) number, and reflected matters in the registration register, similar trademarks can be used. Additionally, since the prior trademark owner consents in advance to the use of similar trademarks, this system also helps prevent potential trademark disputes. Major countries overseas, such as the United States and Singapore, have already introduced and implemented similar systems.

However, if the trademark and designated goods are ‘identical,’ registration is not allowed even with consent. This measure is to prevent consumer misunderstanding or confusion. Also, if the right holder of a trademark registered by submitting a coexistence consent form uses it for unfair competition purposes causing misunderstanding or confusion, the trademark registration can be canceled through a trial request.

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