Q. Can provisional refusal based on a citation be overcome by the submission of co-existence consents from the owner of the prior-applied and prior-registered trademark?

A. 

The provisional refusal based on the citation CANNOT be overcome by the submission of the co-existence consent (or agreement) from the owner of the prior-applied and prior-registered mark that is identical or similar to the applied mark. It is because Korean Trademark Act does NOT state such co-existence consent (agreement) as a ground to allow the registration of a identical/similar mark in the name of different person/entity in relation to the identical/similar goods/services. 

Article 34 (Trademarks Ineligible for Trademark Registration)(1) Notwithstanding Article 33, none of the following trademarks shall be registered:

7. Any trademark used for goods identical or similar to the designated goods, which is identical or similar to the registered trademark of another person (excluding any registered collective mark with geographical indication) based on first to file;

(2) Paragraph (1) and whether an applicant for trademark registration (hereinafter referred to as "applicant") correspond to another person under the relevant provisions shall be determined based on the time a decision corresponding to any of the following is made (hereinafter referred to as "decision on whether to grant trademark registration"): 

1. Decision to reject trademark registration under Article 54;

2. Decision to grant trademark registration under Article 68.

Article 35 (First to File)(1) Where at least two applications for trademark registration are filed on different days with respect to the same or similar trademark to be used on the same or similar goods, only the first person who files an application may obtain registration of such trademark.

Article 54 (Decision to Reject Trademark Registration)Where an application for trademark registration falls under any of the following, an examiner shall decide to reject trademark registration:

3. Where a trademark cannot be registered pursuant to Articles 3, 27, 33 through 35, 38 (1), the latter part of Article 48 (2), Article 48 (4) or (6) through (8);

Article 68 (Decision to Grant Trademark Registration)Where an examiner fails to discover grounds for rejection of an application for trademark registration, he or she shall decide to grant trademark registration.

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