The Common Corporate Dilemma: CEO vs. Company
For many growing Korean companies, IP ownership can be messy. It is common for early-stage startups to register trademarks in the CEO’s individual name. However, as the company grows and prepares for global expansion or IPOs, new trademarks need to be filed under the Corporate (Legal Entity) Name.
This was the exact hurdle facing “Company D.” They were preparing to enter the US market and needed to file a new logo trademark under the company name. The problem? The CEO already owned several similar registered trademarks personally.
In the past, the Korean Intellectual Property Office (KIPO) would have rejected the company’s application because it was similar to the CEO’s personal mark—even though the CEO is the company owner. They were legally treated as different people.
The Solution: The New “Trademark Consent System” (2024)
Sarang IP identified the perfect solution: The Trademark Consent System, a major amendment to the Korean Trademark Act introduced in May 2024.
Unlike in the past, KIPO now allows the registration of a similar trademark if the senior rights holder (in this case, the CEO) submits a Letter of Consent agreeing to the co-existence of the mark.
We devised a two-step strategy for Company D:
- The Consent Strategy: We filed the new logo under the Company’s name but attached a “Letter of Consent” signed by the CEO. This effectively bypassed the ownership conflict rejection that would have previously blocked the application.
- The Simultaneous Launch: We filed for the trademark in both Korea and the US at the same time.
The Execution: Speed is Key
Time was of the essence for the US launch.
- In Korea: We requested Priority Examination. Thanks to the pre-submitted Consent Letter, the examination was smooth. There were no office actions regarding the ownership mismatch. The trademark was registered quickly in the company’s name.
- In the US: We utilized the Korean registration to support the US application. Having a valid home registration can significantly streamline the process with the USPTO (United States Patent and Trademark Office).
The Result: Global Rights in 10 Months
The strategy was a complete success.
- No Refusals: The ownership barrier was completely removed.
- Rapid Registration: By synchronizing the Korean and US strategies, Company D finalized trademark registration in both countries within just 10 months.
Conclusion
The introduction of the Trademark Consent System in 2024 has opened new doors for corporate branding strategy in Korea. It allows for flexible ownership structures that were previously impossible.
However, utilizing this system requires precise documentation and strategic timing, especially when international filings are involved. Sarang IP stays at the forefront of legal changes to provide the fastest, most efficient routes for our clients.
