Responding to a Korean Trademark Office Action
A Korean trademark refusal notice identifies the examiner's objections and provides an opportunity to submit an opinion, evidence, or an amendment. For an international registration under the Madrid Protocol, the same communication may be issued as a notification of provisional refusal.
The response should address the notice under Korean law and examination practice. The complete notice, service date, cited records, and stated deadline should be confirmed before preparing the submission.
Response period
The period stated in the notice controls the response. Under Article 55 of the Trademark Act, an applicant may submit a written opinion within the period prescribed by ministerial rule. If that period is missed, Article 55(3) permits the applicant to apply to continue the procedure and submit the opinion within two months after the original period expires.
Extension and restoration rules depend on the type of notice and filing route. Counsel should confirm the available procedure before the stated deadline, particularly for Madrid designations.
Earlier-mark citation
An examiner may cite an earlier application or registration if the marks and the relevant goods or services are considered identical or similar. The response should compare the marks in appearance, sound, and meaning and address the commercial relationship between the goods or services.
Available measures may include argument, deletion or limitation of goods or services, division, acquisition of the cited right, or a separate challenge to the cited registration. A consent or coexistence agreement may support the response, but it does not bind MOIP if the examiner still finds a statutory conflict.
Distinctiveness and descriptiveness
A refusal may be based on a finding that the mark is generic, descriptive, geographical, customary, or otherwise non-distinctive. The response should explain how relevant Korean consumers would understand the mark in relation to the specified goods or services.
A claim of acquired distinctiveness should be supported by evidence directed to the Korean market. Relevant material may include the duration and extent of Korean use, sales, advertising expenditure, market share, press coverage, and consumer-recognition evidence. Evidence of use or reputation in other countries may be relevant, but it does not by itself establish recognition in Korea.
Goods and services
MOIP may object to vague wording, incorrect classification, or an identification that does not conform to accepted Korean terminology. These objections are often addressed by adopting a precise identification within the scope of the original application. An amendment may clarify or limit the original goods or services but may not add new matter or broaden the filing.
Before deleting an item, the applicant should compare the proposed amendment with its Korean product plan, licensing arrangements, and adjacent classes. A divisional application or a separate filing may preserve coverage that would otherwise be lost.
Other statutory grounds
Other objections may concern deceptive meaning, protected emblems, well-known names, geographical indications, public order, or bad-faith filing. The required response depends on the cited statutory provision and the facts established in the record.
Response and evidence
The submission should address each stated ground separately and identify the supporting provision, argument, amendment, and evidence. Foreign-language evidence should be accompanied by Korean translations or explanations of the relevant portions. Online evidence should identify its date, source, and relevance to Korea. Evidence of ownership, corporate affiliation, or authorization should show the relationship between the entities concerned.
Communication with the examiner may clarify a narrow objection or a proposed amendment, but it does not replace the written response or extend the filing period.
Refusal, re-examination, and appeal
After review of the response, MOIP may allow the application to proceed, issue a further notice, or issue a final refusal. Under Article 55-2 of the Trademark Act, an applicant that amends the designated goods or the mark may request re-examination within three months after service of the refusal, subject to the statutory conditions. Re-examination is unavailable after a re-examination refusal or after an appeal under Article 116 has been filed.
An appeal from a refusal may be filed with the Intellectual Property Trial and Appeal Board within three months after service of the certified decision. The appeal may concern all or only some of the refused goods or services. Further judicial review proceeds to the Intellectual Property High Court and, where permitted, the Supreme Court.
The choice among amendment, re-examination, appeal, and a new application depends on the scope required by the business, the evidence already in the record, and the legal basis for the refusal.
Official references
Related guidance
- Trademark Registration in South Korea: Cost, Timeline and Requirements
- Trademark Clearance Searches in Korea: A Guide for Foreign Brand Owners
- Trademark Opposition and Non-Use Cancellation in South Korea
This article provides general information and does not constitute legal advice. The applicable deadline and available remedy should be confirmed from the specific notice.
