Lee International

A Partial Rejection and a Request for Continued Examination (RCE) are introduced into the Trademark Act to aid trademark applicants in securing their rights.  The newly introduced procedures apply to trademark applications filed on or after February 4, 2023. 

Under the pre-amended Trademark Act, even if the grounds for rejection are not overcome for only some of the designated goods/services in a trademark application, the entire trademark application, including the goods/services that do not have the grounds for rejection, was finally rejected. 

Under Article 54 of the revised Trademark Act, if the grounds for rejection are not overcome for only some of the designated goods/services in a trademark application, only such goods/services with grounds for rejection are partially rejected.  As a result, a Decision of Final Rejection (“Final Rejection”) will be issued only with respect to goods/services, for which a rejection has not been resolved, while suspending the publication for the remaining goods/services that have not been rejected.  Furthermore, an appeal can be filed with the Intellectual Property Trial and Appeal Board (IPTAB) for only the rejected goods/services.

Article 55(2) of the revised Trademark Act also introduced an RCE.  Under the pre-amended Trademark Act, if the Final Rejection is issued, an applicant should file an appeal for all designated goods/services with the IPTAB in order to obtain an opportunity to amend the goods/services, even if the grounds for rejection can easily be resolved by a simple amendment.  However, under the revised Act, an applicant can choose either an appeal or an RCE in response to the Final Rejection.  Therefore, if the Final Rejection can be overcome by simply amending/deleting the designated goods/services, an RCE can be filed along with an amendment on the goods/services rejected with the Korean Intellectual Property Office (KIPO), without the need for filing an appeal.  However, this RCE procedure does not apply to an international trademark registration via Madrid Protocol. 

The revised Trademark Act provided applicants with more options for responding to a Final Rejection. However, the publication of non-rejected goods/services will be suspended until the Final Rejection for the rejected goods/services is overcome.  Therefore, in order to expedite trademark registration for the non-rejected goods/services, it would be preferable to file a divisional application for such goods/services.