1. The Purpose of Adopting the System

Introduced in the amended Trademark Act on October 31, 2023, and effective as of May 1, 2024, the Coexistence Agreement System aims to facilitate trademark registration by allowing the registration of a later-filed trademark if the owner of a prior existing trademark registration agrees on the registration thereof despite the two’s similarity to each other in terms of the marks themselves and their goods or services (excluding cas es where both the mark and designated goods/services are identical). This system is expected to reduce inconveniences for applicants who may resort to indirect methods such as transfer or assignment of trademarks, prevent trademark-related disputes in advance, and promote free trademark use, particularly benefiting small and medium-sized enterprises and small businesses. However, the owners of prior marks should pay attention to the potential material risks in granting the consent to the registration of a later-filed trademark as will be discussed below.

2. Relevant Provisions of the Trademark Act

*Unregistrable trademark due to prior marks: Any trademark used on goods identical or similar to the designated goods, which is identical or similar to a registered trademark of another person (excluding any registered collective mark with geographical indication) based on first to file: Provided, That where the consent of such another person has been obtained for the registration of the trademark (excluding the case where such consent has been obtained for a trademark that is the same trademark and is used on goods identical to the designated goods), trademark registration may be obtained (Article 34-1-7).

*The relevant trademark registration(s) in coexistence is subject to cancellation action where one person among the right holder of a trademark that is registered under the proviso of Article 34 (1) 7 or Article 35 (6) and the persons who have consented to the registration of the trademark causes the misunderstanding of the quality of goods or confusion with goods related to another person''s business among consumers by using his or her registered trademark for the purpose of unfair competition on goods identical or similar to the designated goods of his or her registered trade mark (Article 119-1-5-2).

3. Trademark Examination Guidelines as to the System

The Korean Intellectual Property Office (KIPO) amended the Trademark Examination Guidelines to adopt the newly introduced Coexistence Agreement System effective as of May 1, 2024.

3.1. Requirements for Submitting a Coexistence Agreement

3.1.1. Timing Requirements for Submission

The applicant may submit a coexistence agreement in the course of examination after the application is filed with the KIPO, at the time of submission of arguments in response to grounds for refusal, at the time of submission of response to opposition, or at the time of filing arguments in the course of trials at the IPTAB.

3.1.2. Substantive Requirements

The coexistence agreement should be signed by both parties and must include essential information such as name (corporate name), signature or seal, KIPO customer number, registration (application) number, designated goods for which registration is agreed upon. In addition, the owner of a prior mark as well as the applicant of later-filed application must acknowledge the inclusion of a statement indicating that registered trademarks coexist by mutual agreement on the relevant trademark registers of both parties.

If there is no KIPO customer number, the reason should be stated, and if there is no application number (international registration number), a trademark sample and product category may be provided.

4. Non-Acceptable Coexistence Agreements

4.1. Conditional Coexistence Agreements

Coexistence agreements with conditions such as time limits, geographical restrictions, or partial exclusions of legal effects will not be accepted.

4.2. Comprehensive Coexistence Agreements

In cases where there are multiple pre-registered (applied for) or later-filed trademarks, all corresponding registration (application) numbers must be provided, and consent from all rights holders must be obtained. Moreover, blanket consents such as ''agreeing to coexist for all trademarks included in Application A'' will not be accepted.

4.3. Coexistence Agreements for Identical Trademarks

Coexistence agreements for identical trademarks with identical designated goods in both pre-registered (applied) and later-filed trademarks will not be accepted.

5. Non-application of Coexistence Agreement for Trademarks

It is not applicable to Collective Marks with Geographical Indication Geographical indication.

6. Unilateral Withdrawal of the Consent Not Allowed

6.1. Prior to the registration decision of the trademark application, relevant documents related to the withdrawal or invalidation (cancellation) of coexistence agreements can be submitted by way of Arguments, Amendments, or Information Briefs, which the examiner will consider.

6.2. Since coexistence agreements are matters determined by agreement between the parties, withdrawals or invalidations (cancellations) based on mutual agreement between the parties may be recognized, but unilateral withdrawal or invalidation (cancellation) declarations is not allowed.

7. In Case of Multiple Prior Marks

If there are various pre-registered (applied for) trademarks falling under Sections 34(1)7 and 35(1) of the law, coexistence agreements must be obtained from all pre-registered (applied for) trademark owners to resolve the grounds for refusal under Sections 34(1)7 and 35(1). In cases involving multiple registration (application) matters related to coexistence agreements, multiple registration (application) numbers can be provided, and the scope of designated goods can be listed separately for each matter.

8. The Owner of A Pre-Registered (Applied) Trademark Required to Obtain the Consent Of the Owner of the Later-Filed Trademark for A Similar Trademark Registration Later-On

Trademarks registered based on coexistence agreements hold the same status as pre-registered trademarks and are recognized with the same effect as ordinary registered trademarks. Therefore, there is no need to resubmit coexistence agreements when renewing registration during the validity period. Additionally, if the owner of a pre-registered (applied) trademark wishes to register an identical or similar trademark for identical or similar designated goods after a later-filed trademark has been registered based on a coexistence agreement, the consent of the owner of the later-filed trademark is required.

9. Be Cautious Not to Be Challenged by A Cancellation Action due to the Concurrent Use of Trademarks In Coexistence

In cases where trademarks registered based on coexistence agreements and pre-registered (applied) trademarks that have agreed to coexist use their registered trademarks for the purpose of unfair competition, causing confusion among consumers regarding the quality of goods or confusion with goods related to another party''s business, the cancellation of the trademark registration can be requested (in accordance with Section 119(1)5. 2 of the law).