Q. When receiving a Provisional Refusal that is raised against the International Registration in South Korea under Madrid Protocol based on the earlier marks, what would be the general methods that can be taken to overcome it?

A. In order to overcome the provisional refusal based on the citations, the applicant may consider taking the following general measures to each cited earlier mark.

i) Deleting conflicting goods/services from the applicant’s application;

ii) Filing mark dissimilarity argument; or

iii) For the cited mark registered more than three (3) years ago, filing non-use cancellation action against it on the ground of three consecutive years of non-use after its registration date in an attempt to have the cited mark canceled & filing the response to request the examiner to suspend the examination of the subject application based on the said cancellation action(s)

In case of ii), it should be noted that if the mark dissimilarity argument is not accepted by the examiner, then the entirety of the application will be refused.

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;

8. Any trademark used on goods recognized as identical to the designated goods, which is identical or similar to a registered collective mark with geographical indication of another person based on first to file;

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.

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