From: www.buyusa.gov/korea/en/protectingyouripr.html
Protecting Your Intellectual Property
intellectual property laws exist in Korea. However, protection of intellectual property and the laws governing enforcement of these protections are not necessarily extra-territorial. What is understood and practiced in the United States is not always practiced in Korea. U.S. companies wishing to sell their products or services in Korea should first and foremost find out if they have to register their intellectual property rights (copyright, trademark or patents) in Korea. The speediest means to enforce the right-holder’s claim is to have their intellectual property recognized by the Korean authorities and government.
One of the most frequent IPR problems facing U.S. businesses in Korea is trademark protection. Unlike the trademark registration system in the United States, which is based on "first commercial use" or "first intent to use," the trademark registration system in Korea is based on "first-to-file," or more accurately, first to successfully register with the Korea Intellectual Property Office (KIPO). If a U.S. company is considering entering the Korean market it is highly advisable that the U.S. company register their trademark first before an unauthorized party has the opportunity to register the trademark. The company will save much time, energy, resources and legal fees in the long run. Since registration of trademarks is in Korean, in order to successfully register a trademark, the U.S. company should hire a qualified local attorney who is familiar with registration procedures. To have maximum effect, a company should be prepared to register its trademark in every applicable product class category for the product(s). Should the trademark be challenged, protection is not generally provided under the Korean legal system if the company has not registered in the relevant product class category.
During the course of trademark registration, information on pending applications initially becomes available in publications of the Korea Invention and Patent Association two to three months after the initial application. Official announcements of pending applications are published for comment by KIPO in its Official Gazette. Generally, U.S. companies hire a local attorney and ask the firm to look into the status of the company’s trademark in Korea. Sometimes, the U.S. company discovers from the aforementioned publications that an unauthorized party has already filed the trademark and is awaiting registration. In this case the company is eligible to file an Opposition Action Petition within a 30-day period of official publication. In an opposition action petition, the company states their case as to why the unauthorized party's application should be rejected during the course of initial review. After reviewing the opposition action petition, KIPO can decide either to proceed with registering the unauthorized trademark application or to reject the trademark application, clearing the path for the U.S. company to register at a later date.
At a minimum, American companies that plan to enter the Korean market in the future should monitor KIPO public notices to ensure that their trademark has not been registered. Since the public notices are only in Korean, if the U.S. company cannot monitor the situation from America, the company should consider hiring someone in Korea, such as an attorney, who can.
The 1998 Trademark Act provides KIPO with grounds to reject third-party applications of the same or similar trademarks if KIPO is convinced that the registration is done in "bad faith." As capable as trademark examiners can be, some trademark registrations by unauthorized registrants have slipped through the cracks and have been successfully registered. Registration by an unauthorized party can include "predatory registration" (i.e., knowing that the mark belongs to another company, the unauthorized applicant registers the mark, with no intention of using it but rather to sell the trademark registration when the legitimate trademark owner tries to enter the Korean market).
In such cases, because the Korean legal system is based on "first to file", and because the unauthorized registrant successfully registered with KIPO, the unauthorized registrant is the legal owner of the trademark in Korea—even if it is the U.S. company’s mark and the American company has been using it in international business for several years. Provided that the mark was not used commercially by the successful but unauthorized registrant in Korea for the previous three years, the U.S. company can file a Cancellation Action petition to cancel the existing mark. If the cancellation action is successful and there is no appeal, the U.S. company can immediately file to register the trademark with KIPO, thereby reclaiming the trademark.
The most contentious scenario takes place when an unauthorized trademark application has been successfully registered with KIPO, and the party is actually using the U.S. company’s trademark commercially in Korea. In this case, the legal remedy available is an Invalidation Action. An invalidation action petition can be filed anytime during the course of the 10-year life of a trademark, provided the unauthorized registrant is actually using the trademark. The American company's petition should outline why the unauthorized trademark owner’s registration should be voided (invalidated), i.e. that the American company is the legitimate and original trademark owner, and that consumers know the trademark to be associated with the U.S. company.
If the company follows either the invalidation or cancellation action routes, the burden of proof lies with the petitioner. U.S. companies should be prepared to provide documentation showing commercial use (include samples of the product and illustrating the uniqueness of the trademark and product), to substantiate financial investment in advertisements (include all examples of actual advertisements or promotional materials that appeared in the media), even to provide results of any surveys that show that the brand name is publicly recognized in Korea and that the company is the source of the legitimate goods promoting the trademark.
Provided that the company and their attorneys put forth a convincing argument with meticulously documented details as to why the company is the legitimate trademark owner, the company has a good chance of winning the case before the KIPO Trial Board. However that may not be the final hurdle since there is an appeals process for cancellation and invalidation actions from the KIPO Tribunal Board to the Korean Patent Court and finally to the Supreme Court of Korea. The rule of thumb for a trial date is first come, first served --- petitions are filed by date with the trial dates occurring in order of the date of petition.
Unlike successful cancellation actions where the company may file for the trademark immediately with KIPO, successful invalidation actions have a one-year moratorium from the invalidation action date before a U.S. company can officially register a trademark. However, US companies can seek enforcement measures from the date of invalidation of the Korean registration.
An alternative approach is to settle out of court. Due to the length of time it takes to go from the KIPO Tribunal Board to the Korean Patent Court and all the way up to the Korean Supreme Court, some companies decide not to wait to reclaim their trademark. Four years or more is not unheard of for a final decision using the legal process and even then there is no guarantee that the U.S. company will be successful. Because the opportunity cost of not entering the Korean market can be considerable, some companies have opted to settle out of court, i.e., to buy their own trademark back from the unauthorized (but legal) registrant for use in the Korean market. Regardless of the approach taken, good legal counsel is essential.
How and Where to Register Your Intellectual Property in KoreaBoth the United States and Korea are members of the Madrid Protocol, which allows companies from the member nations to apply for trademark ownership in several member nation countries simultaneously. In Korea, a U.S. company can register their trademark and patents with the Korea Industrial Property Office (KIPO). Foreign applicants are required to retain a licensed local attorney in order to prepare applications in Korean and to conduct necessary follow-up correspondence locally. Under international law, copyrights do not have to be registered in order to be protected; however, similar to the U.S., registration is also possible in Korea with the Ministry of Culture and Tourism. Enforcement of legally registered copyrights, trademarks, and patents are under the jurisdiction of the Prosecutor's Office in Korea.
Type of Intellectual Property Where to Register
Trademark:
Patent Korea Industrial Property Office (KIPO)
http://www.kipo.go.kr1
Copyright:
Ministry of Culture and Tourism (MOCT)
http://www.moct.go.kr2
Copyright Registration Division: Copyright Deliberation and Conciliation Committee
http://www.copyright.or.kr3
When registering a copyright, trademark, or patent, US companies should maintain control of their intellectual property even if they request their Korean agent to do the processing. This control is particularly important should the relationship dissolve. In previous cases where the Korean agent maintained control of the intellectual property, long, costly legal battles ensued in order for the U.S. company to register their trademark.
Need for a Local AttorneyA large number of Korean law firms focus on international business. Most experts advise engaging a local attorney before making major business decisions in dealing with Korean companies. In addition to advice on structuring deals or arranging contracts, Korean law firms are usually well connected into the power structure and have extensive contacts in government ministries.
Although it is important to have legal representation when a business in Korea reaches even a modest level of complexity, it is important to remember two things. First, as a matter of legal culture, Korean lawyers do not see themselves as businessmen and try to avoid intruding on business judgments. It is rare for Korean lawyers to venture far from recitation of applicable statutes. This is one reason why it is a good idea to seek a Korean firm employing foreign legal consultants who tend to provide a proactive, commercial-oriented philosophy. Although major Korean legal firms have extensive and excellent contacts with the Korean bureaucracy, for anyone planning long-term business in Korea, it is useful to establish direct contacts with officials who oversee any given industry.
Under Article 307of the Criminal Law of Korea, publication of any facts that may bring another person into disrepute is a criminal act, but, under Article 310 of the Criminal Law, such publication may not be a punishable act, if the facts published are true and that the purpose of the publication is to promote public interest.
Relying on Article 310 of the Criminal Law, the Supreme Court of Korea recently ruled that publication of the facts on Internet concerning sexual harassment by a national university professor of a female student is not a punishable act, thereby reversing the district court’s guilty decision (2003 Do 2137; Decision rendered on 04/29/05). In rendering its decision, the Court stated that while Article 307 is intended to protect reputation of individuals, Article 310 is intended to balance such rights of individuals against the rights to freedom to express since the freedom to express is one of the essential basic rights in democratic society that guarantees free exchange of ideas ad opinions and the right to know possessed by the citizens. The Court also stated that although the injury to the reputation of the person concerned may be grave, the publication appeared to be intended for calling for a thorough investigation of the alleged sexual harassment act and elimination of sexual violence occurring within school campus, so the said publication may have been necessary for promotion of public interest.
Because of the Court’s decision, debate and criticism over social issues through Internet would likely be further expanded.