Under the theme “Availability of a letter of consent and potential risks of concurrent use of similar trade marks under a co-existence agreement”, the session convened leading trade mark experts from around the globe to dissect the nuances of consent mechanisms and explore the legal frameworks across key jurisdictions.
Moderated by Ho-Hyun Nahm, Lead Partner at BARUN IP & LAW (KR), the session opened with a call to examine the strategic use — and potential consequences — of granting consent or entering into coexistence arrangements. While such agreements often serve as tools to overcome refusals and facilitate brand expansion, they simultaneously introduce risks such as consumer confusion, mark dilution, and the possible cancellation of registrations.
The panel featured four distinguished speakers:
- Ms Esther Seow (SG) – Partner, Donaldson & Burkinshaw LLP
- Professor Won-oh Kim (KR) – Director, Law Research Institute and AI·Data Law Center, Inha University
- Ms Anna King (US) – Partner, Banner & Witcoff
- Ms Ana de Sampaio (PT) – Partner, J.E. Dias Costa, Lda.
Together, they delivered an in-depth exploration of consent-based mechanisms in trade mark practice across Asia-Pacific, Korea, the Americas, and Europe.
Regional highlights and takeaways
Asia-Pacific:
Esther Seow illustrated the uneven acceptance of letters of consent across jurisdictions in the region. While countries like Singapore and Australia permit their use under specific conditions, others—including China and Japan—may impose stricter scrutiny or reject them outright. Esther emphasised the importance of distinguishing between standalone letters of consent and broader coexistence agreements, urging practitioners to assess not only admissibility but also the potential consequences of disclosure and enforceability.
Korea:
Professor Won-oh Kim provided a comprehensive overview of Korea’s recently implemented Trademark Coexistence Consent System, effective since May 2024. With over 800 submissions already filed, the system reflects a policy shift toward post-registration control rather than pre-registration scrutiny. He clarified that the Korean Intellectual Property Office (KIPO) applies the system narrowly, excluding identical marks for identical goods and preserving examiner discretion for marks deemed to violate public interest or consumer protection standards. While conditional or partial agreements are not accepted by KIPO, practitioners were advised to draft parallel civil agreements containing such conditions.
The Americas and Canada:
Anna King analysed the nuanced application of consent agreements in North and South America. In the U.S., while letters of consent are recognized, they must avoid imposing geographic or use-based limitations inconsistent with federal trademark rights. Instead, such terms should be addressed in a separate agreement. Mexico shows more flexibility, while Brazil and Canada remain cautious—evaluating each case independently and weighing consumer impact heavily.
Europe:
Ana de Sampaio’s presentation traced the legal divergences across European jurisdictions. She distinguished between countries that conduct ex officio examination of relative grounds (e.g. Germany) and those that do not (e.g., the UK). She outlined various forms of consent—open, conditional, territorial—and emphasised the importance of clarity in drafting. Ana cautioned that letters of consent could be a double-edged sword, potentially weakening a mark or backfiring in enforcement scenarios if not meticulously structured.
Interactive discussion highlights
The discussion segment yielded lively engagement from attendees. A notable inquiry from Lena Shen (CN) questioned the absence of a letter of consent mechanism in China. All four panellists agreed that China could benefit from adopting such a system, citing its potential to facilitate brand growth while managing conflict amicably.
Another question from Jordan Kim (KR) centred on the legal enforceability of damages clauses in coexistence agreements. The panel unanimously affirmed that while national contract law would typically support such claims, careful drafting—particularly for cross-border enforceability—remains paramount.
Conclusion
This session delivered compelling insights into the evolving terrain of trade mark coexistence and consent. As demonstrated, while these mechanisms offer pragmatic pathways to brand coexistence, they come with real risks—chief among them, dilution of rights, consumer confusion, and loss of exclusivity.
Practitioners are advised to weigh the benefits against the potential liabilities before entering into such arrangements. Clear drafting, jurisdiction-specific knowledge, and strategic foresight are indispensable in navigating this legal labyrinth.
FICPI’s view and involvement
FICPI continues to foster international dialogue and best practices among IP professionals. Its symposia, congresses, and committee initiatives serve as vital platforms for professional growth and cross-jurisdictional collaboration.
Next steps
- To become involved in FICPI’s trade mark committees or learn more about its ongoing work in this field, visit: https://ficpi.org/organisation/committees
- Join us at the upcoming FICPI World Congress in Naples, Italy, from 12–17 October 2025, where trademark strategy in the age of global expansion will continue to be a central theme.
