Received a "Notification of Ex Officio Provisional Refusal" from KIPO for Your Madrid Trademark? Don't Panic. Here’s Your Guide.

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You’ve successfully filed a Madrid Protocol application to extend your trademark protection to the Republic of Korea. Everything seems to be on track. Then, an official-looking document arrives from WIPO, forwarded from the Korean Intellectual Property Office (KIPO). The title is "NOTIFICATION OF EX OFFICIO PROVISIONAL REFUSAL."

For many international brand owners, this document can be a source of immediate concern. The words "Refusal," "Grounds for Decision," and a strict deadline can seem intimidating.

First, take a deep breath. This is a very common step in the Korean trademark registration process and, in most cases, it is entirely manageable.

As a leading IP firm in Korea, we at Pine IP Firm handle these notifications daily. This column is designed to help you understand exactly what this notification means, decode the common reasons for refusal, and outline the critical next steps to secure your trademark rights in Korea.

What Exactly is a "Notification of Ex Officio Provisional Refusal"?

Let's break down the term:

• Notification: This is simply an official communication.
• Provisional Refusal: This is the key part. It is provisional, not final. The KIPO examiner has found potential issues with your application, but they are giving you an opportunity to respond, argue, and amend before they make a final decision.
• Ex Officio: This means the examiner raised these issues on their own initiative, based on their review of your application against Korean Trademark Law. It was not prompted by an objection from a third party.

In short, a Provisional Refusal is a standard office action. It’s KIPO’s way of starting a dialogue with you about your application's registrability in Korea.

Decoding the Common Grounds for Refusal Cited by KIPO

Your notification will list one or more grounds for the refusal under section 7 and provide details in section 9. Let's look at the most frequent issues for Madrid applicants.

1. Vagueness and/or Broadness of the Designated Goods and/or Services

This is, by far, one of the most common reasons for an initial refusal for international applicants. KIPO has very specific standards for how goods and services must be described.

• The Semicolon Rule: KIPO requires different items in a list of goods or services to be separated by a semicolon (;), not a comma (,). The notification you received likely points this out specifically.
  • Incorrect Example: [Class 35] Advertising, business management, market research.
  • Correct KIPO Format: [Class 35] Advertising; business management; market research.
• Lack of Specificity: Broad terms that are acceptable in other jurisdictions might be considered too vague by KIPO. For example, "business services" is too broad. You must specify the exact nature of the services, such as "business management consulting" or "business data analysis."

Solution: This is often the easiest issue to fix. Responding with an amendment that correctly formats the list and specifies any vague terms can often resolve the refusal.

2. Lack of Distinctiveness (Article 33(1) of the Korean Trademark Act)

Your trademark may be refused if KIPO believes it is not distinctive enough to function as a source identifier. This happens if the mark is:

• Descriptive: It merely describes a quality, feature, or purpose of the goods/services (e.g., "COLD & REFRESHING" for beer).
• Generic: It is the common name for the goods/services themselves (e.g., "SMARTPHONE" for a phone).
• A Simple Geographical Name or Shape: For instance, the name "Seoul" for clothing.

Solution: Overcoming this requires submitting a legal argument. We would need to prove that your trademark has acquired "secondary meaning" in Korea through extensive use, or that the mark is merely suggestive rather than directly descriptive.

3. Likelihood of Confusion with Others' Earlier Marks (Article 34(1)(vii) of the Korean Trademark Act)

KIPO will refuse your trademark if it is identical or similar to a previously registered or applied-for trademark for identical or similar goods/services. The examiner will have cited the conflicting mark in the notification.

Solution: This is a more complex refusal. The response strategy could involve:

• Arguing against similarity: Submitting a detailed legal brief arguing that the marks or the goods/services are, in fact, different enough to avoid consumer confusion.
• Negotiating with the owner of the cited mark: Seeking a letter of consent or an assignment.
• Canceling the cited mark: If the earlier mark is not in use, it may be possible to initiate a non-use cancellation action against it.
• Amending your goods/services: Limiting your list of goods/services to avoid overlap with the cited mark.

The Deadline is Crucial

The notification will clearly state a Time Limit . This is typically two months from the date the refusal was issued. This deadline is absolute.

If you fail to respond within this time limit, your application will be deemed abandoned in Korea. An extension is possible, but it must be requested before the deadline expires.

Why You Must Appoint a Local Korean Representative

This is the most critical takeaway for any international applicant. As a foreign entity without a domicile or place of business in Korea, you cannot respond to the KIPO office action directly.

You are required by law to appoint a local, qualified representative—an IP attorney or law firm in Korea—to file the response on your behalf. This representative will:

1. Communicate in Korean: All responses to KIPO must be in Korean.
2. Understand KIPO Practice: A Korean firm understands the nuances of an examiner's arguments and how to craft the most effective response.
3. Manage Deadlines: We will docket your deadline and ensure all responses and extensions are filed correctly and on time.
4. Provide Strategic Advice: We can advise you on the best course of action, whether it's a simple amendment, a complex legal argument, or a combination of both.

Your Next Steps with Pine IP Firm

Receiving a "Notification of Ex Officio Provisional Refusal" is a hurdle, not a roadblock. With the right strategy and expert local representation, you can overcome the examiner's objections and secure your valuable brand rights in the dynamic Korean market.

If you have received this notification, the clock is ticking.

Contact Pine IP Firm today. Send us a copy of your notification, and our team of expert trademark attorneys will provide a complimentary initial analysis and a clear, actionable strategy for moving forward. Let us turn this challenge into a success.

email: info@pinepat.com