amendment to the Trademark Act, which allows the Coexistence Agreement for
trademarks, was passed by the National Assembly on October 6, 2023.
Under the current Trademark Act, a trademark application may be refused if it is deemed similar or identical to pre-existing trademark applications or registrations owned by third parties. This posed an inconvenience for trademark applicants, as they had to undergo an assignment process to align the owners of their application with the owners of pre-existing trademark applications or registrations in order to overcome the refusal and obtain trademark registration.
To address this concern, the amended Trademark Act aims to enhance the convenience of trademark applicants based on the actual trade situation. Even if a trademark application is deemed similar or identical to pre-existing trademark applications or registrations owned by others, the refusal can be overcome if the owner of the pre-existing trademark applications or registrations consents to the registration of the trademark application. This is achieved through the introduction of the Coexistence Agreement (Article 34 (1) 7 and Article 35 (6)).
However, with the introduction of the Coexistence Agreement, the potential for marketplace confusion cannot be completely eliminated. To address this concern, an exception is outlined, specifying that the agreement does not apply to identical trademarks used on identical goods (Article 34 (1) 7, parentheses). Additionally, in cases where trademarks registered through the Coexistence Agreement are employed in unfair competition, new provisions have been established to facilitate the cancellation of such registrations through cancellation trials (Article 119, Paragraph 1, Clause 5-2).
With this amendment, even if a trademark application is rejected on the grounds of similarity or identicalness to a pre-existing trademark, a more straightforward method of coexistence is now available through the agreement of the pre-existing trademark owner. The changes are set to take effect around April 2024, approximately six (6) months from the announcement date (which will likely be in October 2023), and will also apply to all pending trademark applications as of the effective date.