After unclear goods descriptions, the most common reason for an office action in Korea is an earlier similar mark — a registration or earlier application, owned by someone else, that the examiner considers similar to yours for similar goods or services.
This does not mean the end of your application. There are several ways to respond, from the simplest to the most strategic.
1. Delete the conflicting goods
The easiest solution. Often the earlier mark overlaps with only some of your goods or services. If those items are not important to your business, delete them, and the rest of your application can proceed to registration quickly and cheaply.
2. Wait
Sometimes the conflict resolves itself:
- the earlier mark is a pending application that may itself be refused or abandoned;
- the earlier registration is close to its renewal deadline and may not be renewed; or
- a cancellation action against the earlier mark is already pending.
In these cases it can make sense not to give up the goods but to wait for the earlier mark to fall away, keeping track of the deadlines in your own application. And if the conflicting goods are unimportant, Korea's partial refusal system means that not responding results in refusal of only those goods — although deleting them is usually faster and cleaner.
3. Obtain the earlier owner's consent
Since 2024, Korea accepts a written consent from the owner of the earlier mark, allowing similar marks to coexist on the register (identical marks for identical goods are still refused). This works well when the two businesses do not actually compete. See our guide on Korea's trademark consent system.
4. Cancel the earlier mark for non-use
If the earlier mark has not been used in Korea for 3 consecutive years, you can file a non-use cancellation action. Korea does not check use when marks are filed or registered, so unused registrations are common — and in our experience these actions succeed in most cases. When the earlier mark is cancelled, the obstacle to your application disappears. See our guide on non-use cancellation in Korea.
5. Negotiate
You can approach the earlier owner to buy (take an assignment of) the mark, or to agree on coexistence and consent. A pending non-use cancellation action often makes these negotiations much easier.
6. Argue that the marks or goods are not similar
Where the marks differ in appearance, pronunciation and meaning, or the goods are in fact unrelated, a reasoned argument with precedents can succeed. It is worth trying when the similarity finding is genuinely debatable — but it is less predictable than the options above.
How to choose
- The conflicting goods don't matter → delete them.
- The earlier mark may disappear soon → wait, and watch the deadlines.
- The goods matter and the earlier owner is not using the mark → non-use cancellation (often combined with negotiation).
- The earlier owner is active but in a different business → consent or coexistence.
- The similarity is debatable → argue, possibly alongside one of the above.
How we help
When an office action is issued, we report it to you free of charge, investigate the earlier mark (its owner, status and whether it is being used in Korea), and recommend the most efficient route. Email help@dusonlaw.com with your application number.
This guide is general information, not legal advice.