When you file a trademark in South Korea, the filed application will be registered after going through the KIPO’s examination. If, however, registration of the filed trademark was refused by the KIPO due to citation of a similar prior registered mark and it seems difficult to overcome the refusal by arguing dissimilarities or simply deleting the conflicting goods/services, which options remain for the applicant to consider?
As one of the remaining options, there are several countries that accept “consent” by the owner of the cited mark. Unfortunately, “letter of consent” by the owner of the cited mark is not acceptable under Korean practice. Instead, the applicant can choose the alternative option of which intent is basically the same as “consent”, approval from the owner of the cited mark, and that is “temporary transfer of the filed mark”.
The applicant may transfer their trademark temporarily to the owner of the cited mark and claim registration of their trademark based on that the fact that the applicant and the owner of the cited mark are unified and thus, identical. The KIPO will then examine the fact and without any other grounds of refusal, the filed trademark will proceed to publication and then will be allowed for registration. If the trademark is transferred back to the applicant after it is allowed for registration, it will be registered under the applicant’s name.
In these two transfers, cooperation of the owner of the cited mark is very important since documents signed they signed must be submitted to the KIPO. The owner of the cite mark will not simply cooperate for the benefit of the applicant since not only they have to take their time to review the matter and prepare the required documents, but also their registered mark co-existing with the applicant’s mark in the same/similar industry may affect their business. Accordingly, the owner of the cited mark will probably claim for compensation in return for the cooperation unless the applicant and the owner of the cited mark are related (i.e. affiliated or run by the same representative). The applicant should also consider preparing a written agreement regarding the whole process of the transfers to prevent any situation such as the owner of the cited mark changes their attitude after the applicant’s mark is assigned to them or required additional compensation.