Under the Trademark Act,
the TM owner may recover damages for trademark infringement, which generally
are limited to one of 1) the registrant's profit but-for the infringement
(calculated by multiplying the registrant's profit margin by the number of
additional articles the registrant would have sold in the absence of
infringement), 2) the infringer's profits from the infringement, 3) a
reasonable royalty, or 4) an amount of actual damages the court determines is
reasonable in light of the available evidence, if the other methods are not
feasible.
In litigation practice, it
is difficult to prove damage amount with specific number because infringers refuse
to submit critical evidence regarding the accused infringer's sales and
profits.
In 2012, the Trademark Act
adopted statutory damage clause up to KRW 50,000,000 (approximately USD 44,000).
This statutory damage provision may reduce the burden of proving trademark
infringement damages.
However, the statutory
damage provision, Article 111 requires that both the registered mark and the
infringing mark and their associated goods, services be "identical or
substantially indistinguishable," and additionally, that there be actual
use of the registered mark at the time of infringement (as opposed to the
actual damages provisions, which do not require use (though use has been
required by courts regardless)).
Recently the Korean Supreme
Court upheld the lower appellate ruling denying the plaintiff's statutory
damages claim, both for lack of use and lack of exact similarity between the
registered and accused marks. The lack of use ruling in particular may have
depended in part on the complicated ownership and use history of the registered
mark – the party that registered the mark sold the mark to another party, and
the successor's subsidiary actually used the mark, but the Supreme Court
essentially determined that that use did not accrue to the mark owner for
purposes of qualifying for statutory damages.
In summary, the statutory
damage is only applied to TM infringement case that strictly meet the
requirements of the provision.
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