NAM & NAM

Seoul

  • Address
    KAL Building 3rd Floor
    117 Seosomun-ro Jung-gu
    Seoul 04515
  • Country
    South Korea
  • Phone ++82 2 753 5477
    Fax ++82 2 753 7315
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Updates

Intellectual Property

Trademark infringement theory – innocent or infringing?
South Korea | 12 April 2021

Where an application for a trademark which is substantially similar to a prior registered trademark is successful, does the use of the later filed trademark constitute infringement of the prior registered trademark? This situation is not explicitly addressed by the Trademark Act, but the courts have traditionally held that it does not constitute infringement. However, a recent Supreme Court ruling overturned this convention, highlighting the importance of early filing in South Korea.

Notable changes to trademark practice
South Korea | 22 March 2021

The Korean Intellectual Property Office recently updated the Trademark Examination Guidelines, the Similar Goods Examination Guidelines and the Trademark Act Enforcement Rules. The updates affect, among other things, Class 09 software descriptions and non-traditional and foreign language trademarks. This article summarises the most noteworthy changes.

Patent Court takes issue with ex officio examination of trial request validity
South Korea | 25 January 2021

If an invention subject to confirmation is identical to a later-registered patent, a request for a scope confirmation trial will be considered improper as this could result in the later-registered patent's validity being denied without it being subject to an invalidity trial. However, the Patent Court recently ruled that if the IP Trial and Appeal Board ex officio dismisses a scope confirmation trial for this reason but fails to give the parties an opportunity to submit an opinion, such decision would be a procedural violation.

KIPO measures to prevent online counterfeits
South Korea | 18 January 2021

According to a Korean Intellectual Property Office (KIPO) press release, the number of reports concerning online counterfeits has increased by 204.4% year-on-year following the increase in online shopping during the COVID-19 pandemic. In response, KIPO has devised a number of measures to more effectively combat the rapidly increasing online distribution of counterfeit products while minimising damage to consumers.

Doctrine of equivalents: recent developments
South Korea | 11 January 2021

According to the doctrine of equivalents, even when an accused invention includes a modified element in contrast with the elements in the patented claim, if they are practically equivalent, the accused invention infringes the patented invention. Despite court rulings which make it possible for patents to be protected according to the real value of the invention, there is arguably increased uncertainty about the possibility for equivalent infringement.

Relying on KIPO to combat infringement
South Korea | 16 November 2020

The Korean Intellectual Property Office (KIPO) operates a special judicial police (SJP) unit under which officials belonging to the KIPO can take charge of criminal cases relating to the infringement of IP rights. Over the past decade, the SJP has handled approximately 45,000 cases, close to 3,500 criminal charges have been made and approximately 12 million counterfeit products have been confiscated.

Treble damages now available for trademark and design infringement
South Korea | 09 November 2020

Recent amendments to the Trademark Act and the Design Protection Act have added support for treble damages in certain infringement scenarios. These amendments follow similar changes to the Patent Act and the Unfair Competition Prevention and Trade Secret Protection Act relating to wilful patent infringement and trade secret misappropriation which came into effect in July 2019. This article examines the amendments in detail.

Considerations when establishing South Korean patent portfolios
South Korea | 09 November 2020

This article compares the patent registration rates by technology field in South Korea with the other IP5 jurisdictions (ie, the United States Patent and Trademark Office, the European Patent Office, the Japan Patent Office and the State Intellectual Property Office of the People's Republic of China) and also looks at the systems which may be used to establish a patent portfolio, with a comparison with the United States in particular.

Influence of functional parts when determining design similarity
South Korea | 26 October 2020

When determining the similarity of designs, how is a court's judgment affected when a design element has commonality with a functional element? A recent Supreme Court decision allows some insight into this question. Per existing precedent, the Supreme Court ruled that where the common parts of compared designs are an intrinsic part of the product, or a basic or functional form of the design, such parts should be given low importance.

IP marking: risks and benefits
South Korea | 05 October 2020

There is no obligation to mark IP rights on products in South Korea. Whether to do so is at the discretion of the IP owner and no direct negative legal consequences arise from a failure to indicate IP rights. Nevertheless, indicating IP rights does grant some legal benefits. Further, from a practical sense, it may be a useful advertisement or marketing tool. This article examines the risks and benefits of IP marking.

Patentee protection strengthened in series of revisions to patent law
South Korea | 28 September 2020

In South Korea, the low amount of damages awarded by the courts in patent infringement cases has long been criticised. To address this, a treble damages system (implemented in July 2019) and an improved method for calculating the amount of damages (to be implemented on 10 December 2020) have been introduced. This article looks at these changes in detail, as well as a proposed law revision to improve evidence collection.

Relaxing of Enforcement Rules of the Design Protection Act from September 2020
South Korea | 21 September 2020

Continuing the trend of relaxed requirements for design applications, the Enforcement Rules of the Design Protection Act have been further eased in several aspects. This article explains the changes which affect mixed drawing formats, font designs in the TrueType font format and further categories of design which will be eligible for partial examination from 1 December 2020.