Legal Nature of Consent to Coexistence under theTrademark Law: Focusing on the Revised Trademark Law Promulgated on October 31, 2023

Abstract

The revised Trademark Law allows an applicant to obtain trademark registration even if the applied-for trademark is identical or similar to a prior registered trademark, provided that a coexistence agreement is submitted from the rightholder of the prior registration. Revealing the rightholder’s intent for coexistence to the Intellectual Property Office through the agreement should be considered a public legal act because the intent is expressed to an administrative body for the purpose of an administrative action, namely, the registration of the trademark. If there are defects in the declaration of intent between private parties, civil law provisions are applicable, allowing for cancellation. However, the provisions of civil law regarding defects are not applicable to the declaration of coexistence consent by the rightholder due to its legal nature and specific relationship with the administrative body. The effectiveness of the coexistence agreement is determined on externally and objectively manifested indications. Nevertheless, if the defects are substantial and externally clear, they may serve as grounds for registration refusal or as a basis for a trial to invalidate the registration.

Keywords

• coexistence agreement
• 2023 trademark law amendments
• legal nature of coexistence agreement
• legal effect of defective coexistence agreement
• private acts in public law
• international examples of coexistence agreement