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.
For example, patentees can seek damages from the patent grant date regardless of whether their patent is indicated and any person that infringes a patent will be presumed negligent regarding such infringement no matter whether the patent is marked on the product or not.
Nevertheless, indicating IP rights does grant some legal benefits. Further, from a practical sense, it may be a useful advertisement or marketing tool (eg, to show the public that the company is innovative, deter competitors from copying, persuade the public that the article has government approval or even lead the public into thinking that the article is better than others).
What are the legal benefits of IP marking?
The most obvious benefit of indicating IP rights relates to proving wilfulness or allowing for a presumption of wilfulness in infringement cases.
In trademark infringement cases, wilfulness is presumed. Specifically, any party that has infringed trademark rights or an exclusive licence of another party that indicates that the trademark is registered will be presumed to have been aware that the trademark was already registered, in relation to their infringement.
In patent infringement cases, wilful infringement is found when the conduct is deliberate and intentional, and with knowledge of the patent. If so, the court may increase damages by up to three times the amount calculated or assessed (for further details please see "Patentee protection strengthened in series of revisions to patent law").
In terms of punishment, any party that wilfully infringes a patent will be punished by imprisonment with labour for not more than seven years or a fine not exceeding W100 million (approximately $85,000 at current exchange rates). To prove the wilfulness of patent infringement, the first requisite is that the infringer acknowledges the existence of IP rights. IP markings could come into play in this situation and under certain fact-specific scenarios, the indication of patent rights may be useful to prove the alleged infringer's knowledge or intention.
How should IP rights be marked on products?
Patentees or licensees may indicate that their products are patented by using the wording 'Patented' together with the patent number. For pending applications, applicants may use the wording 'Patent Pending (Under Examination)' with the application number. For inventions relating to a process for manufacturing a product, 'Process Patented' or 'Patent Pending for Process (Under Examination)' will be marked on the product. Such wordings may also be used on the product's container or package.
Design rights holders may also place wording indicating their design registration on products covered by the registered design or containers or packaging materials of such products. Acceptable wordings are 'Design Application' or 'Design Under Examination' for pending applications and 'Registered Design', 'Design', 'Design Registration' or 'Design Right' for registered designs.
Likewise, where trademark rights holders or licensees use a registered trademark, they may indicate that the trademark is registered. Examples of acceptable wordings are 'Trademark Application' or 'Trademark Under Examination' for pending applications and 'Registered Trademark', 'Trademark', 'Trademark Registration', 'Trademark Right' or the '®' symbol for registered trademarks.
The indications of patent, design or trademark rights may be expressed in English (including English abbreviations) or Chinese as well as Korean.
Indication via internet links is also allowed. For example, IP holders may mark a product with a link to a website showing a list of applicable patents, designs or trademarks. This also includes bar codes, quick response codes or other forms of electronic display means.
Should patent-marked products be identical to claimed elements of patent?
The technical composition of a product marked as being patented must be the same as that of the patented invention. However, it may not always be deemed false marking even if the composition of the product only partially corresponds to the patented invention.
Specifically, if the difference between the product and patented invention is merely an addition, deletion or modification of the technical composition that would be commonly carried out by those in the relevant technical field with ordinary knowledge, there is no practical difference in the effect of the invention and the difference is not of an extent that would mislead the public, the conduct would not be considered false marking (Supreme Court Decision 2013Do10265).
In addition, if the manufacturing of the patentee's product embodies the core technical idea of the patent, so long as the difference between the product and patented invention is not of an extent that would mislead the public by exploiting either the commercial advantages afforded by the patent or the public's trust in patents, it would not likely be deemed 'false or exaggerated labelling or advertising' prohibited under the Act on Fair Labelling and Advertising (Seoul High Court Decision 2013Nu9931).
What are the consequences of false marking?
False marking is a criminal offence.
No party should indicate 'Patented', 'Patent Pending' or any similar misleading wording on:
- any unpatented thing;
- anything for which no patent application has been filed;
- anything manufactured by any unpatented process or by any process for which no patent application has been filed; or
- any container or packaging of such thing.
Any party that violates this rule will be punished by imprisonment for no more than three years or by a fine not exceeding W30 million (approximately $25,000 at current exchange rates).
The same applies identically to false marking of design and trademark rights, with the same punishments.
If IP rights are extinguished while products remain in the market, this fact should be indicated accordingly unless there is already a clear indication of the IP term of protection.
What can be done if it is found that somebody else is falsely marking?
If any IP markings considered to be false or improper are located, this can be notified to the Centre for Prevention of False IP Marking, which operates in conjunction with the Korea IP Protection Agency (KOIPA) and the Korean IP Office (KIPO). If it is found that the markings are indeed false or improper, KOIPA or KIPO may recommend appropriate corrective measures such as deletion and modification of the markings. Should the offender not comply with the corrective measures, KOIPA or KIPO may then file a criminal complaint in accordance with the Criminal Procedure Act.
