Latest updates

KIPO measures to prevent online counterfeits
NAM & NAM
  • Intellectual Property
  • 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
NAM & NAM
  • Intellectual Property
  • 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
NAM & NAM
  • Intellectual Property
  • 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
NAM & NAM
  • Intellectual Property
  • 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
NAM & NAM
  • Intellectual Property
  • 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
NAM & NAM
  • Intellectual Property
  • 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
NAM & NAM
  • Intellectual Property
  • 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
NAM & NAM
  • Intellectual Property
  • 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
NAM & NAM
  • Intellectual Property
  • 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.

Greater reforms for promoting work-life balance
Lee & Ko
  • Employment & Immigration
  • South Korea
  • 06 November 2019

Significant changes to the Gender Equality Employment and Work-Life Balance Support Act, including changes to employees' rights to paternity leave and reduced working hours for child and family care, recently came into effect. Employers are strongly advised to review their existing practices and policies to ensure compliance with the act's latest amendments. Workplace disruptions are expected due to the increased benefits.

Key changes to Labour Standards Act in 2019
Lee & Ko
  • Employment & Immigration
  • South Korea
  • 06 February 2019

In 2018 there were major reforms to South Korean employment laws, including the Labour Standards Act. This resulted in many employers struggling to adjust employees' weekly working hours to comply with, for example, the new 52-hour limit. The legislative reforms and amendments proposed in 2018 will take effect in 2019. For example, a duty to prevent workplace harassment will be introduced, as will a uniform standard for termination notice exemptions.

KIPO begins policing 'idea theft' unfair competition
  • Intellectual Property
  • South Korea
  • 07 January 2019

The latest amendment to the Unfair Competition Prevention and Trade Secret Protection Act introduced a new provision prohibiting unfair competition in connection with 'idea theft' – the unfair use of the ideas of another that were acquired as part of a business negotiation or transaction. The purpose of the amendment is to provide additional protection for creative business ideas that may not be as easy to protect as typical forms of intellectual property, such as patents, copyright or trademarks.

Korea Customs Service announces amendments to IP rights protection guidelines
  • Intellectual Property
  • South Korea
  • 24 December 2018

The Korea Customs Service recently issued an announcement regarding proposed amendments to the Korea Customs Guidelines for Import and Export Customs Clearance Procedures for Intellectual Property Rights. Of note for brand owners is the fact that the customs recordation term is set to increase from three years to 10 years. Further, the process for recording patent and design rights will be simplified and the bond for small importers and exporters that challenge detainments of goods will be reduced.

Supreme Court sets rules for international panels
  • Intellectual Property
  • South Korea
  • 05 November 2018

Under the amendment to the Court Organisation Act, certain courts handling IP cases have been given authority to establish international panels of judges to review cases in languages other than Korean as a way of making South Korea a more attractive venue for foreign litigants to bring IP litigation cases. To provide further details on the implementation of the amendment, the Supreme Court promulgated its Rules on the Establishment and Operation of International Panels, which are now in effect.

Significant increase in non-use cancellation actions
  • Intellectual Property
  • South Korea
  • 08 October 2018

According to data recently published by the Korean Intellectual Property Office, the number of non-use cancellation actions filed in South Korea has significantly increased in recent years, resulting in nearly double the number of registrations being cancelled in 2017 compared with previous years. As such, trademark owners with portfolios which include marks not currently active in South Korea should seek legal advice to determine the most effective strategy for protecting their trademark rights.

Supreme Court rules that AMERICAN UNIVERSITY trademark is inherently distinctive
  • Intellectual Property
  • South Korea
  • 13 August 2018

The Supreme Court recently ruled en banc that the AMERICAN UNIVERSITY trademark was sufficiently distinctive among South Korean consumers to be registered in connection with university education services, instruction services and other designated services. The court's reasoning is notable because it appears to hold that consumer awareness evidence can be used to prove the inherent distinctiveness of a mark in South Korea.

Supreme Court broadens doctrine of equivalents to emphasise purpose over specific structures
  • Intellectual Property
  • South Korea
  • 30 July 2018

In a recent case, the Supreme Court appears to have essentially broadened the doctrine of equivalents to emphasise that structures in an accused product that are very different from claimed elements can still be 'equivalent', provided that the differences are conventional and the basic purpose of the invention is still achieved. The patent at issue related to a device for lifting a 'gang form' – a type of external scaffolding used in construction.

Recent changes to employment law affect business operations
Lee & Ko
  • Employment & Immigration
  • South Korea
  • 18 July 2018

South Korea recently overhauled its employment laws. Some of the most significant changes that may have an impact on business operations concern annual paid leave entitlements and fertility treatment leave, eligibility for childcare leave, protection for workplace sexual harassment victims, mandatory disability awareness training and the scope of the anti-discrimination statutes.

Trade dress protection for service providers and new provision on theft of ideas
  • Intellectual Property
  • South Korea
  • 04 June 2018

An important amendment to the Unfair Competition Prevention and Trade Secret Protection Act will come into effect in July 2018. This amendment specifies the protection to be given to trade dress belonging to service providers in South Korea and introduces a new type of prohibited unfair competitive activity.

Legal developments regarding patent term extensions
  • Intellectual Property
  • South Korea
  • 28 May 2018

Numerous generics have filed challenges to the validity of patent term extensions in South Korea in the past few years, raising various issues of first impression. In November 2017 the Supreme Court rejected two of the major validity issues raised by the generics. Since then, the Patent Court and Intellectual Property Trial and Appeal Board have addressed various other legal issues.