Statutory Damage to TM Infringement in Korea

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.

 

Example - FTO Opinion Work

Freedom To Operate Opinion

 

l  Purpose

 

This is a proposal for conducting a full FTO search and analysis for the technology a bottle with a "juicer" lid of provided by the client in Korea market.

 

l  Search Scope

 

The scope for searching the prior arts is limited to the registered Korean Designs, Patents and Utility Models, which still exist valid.

 

l  Delivery Schedule

 

Our work starts when the client’s assent to our proposal reaches us, and completes after 14 consecutive days from our start as long as there is no further discussion in terms of due date.

 

l  Working Procedure

    

Our working procedure consists of three steps as follows.

Step1: Preparing for searching the prior art – 3 days

 

1-1: Grasping client’s technology

1-2: Identifying sub-elements of the technology

1-3: Summarizing the technical features for each sub-element

1-4: Determining the searching method considering keyword, design and patent classification, patentee, etc.

 

Step2: Narrowing down the searched prior art – 5 days

 

2-1: Searching the prior arts based on the respective technical features

2-2: Excluding inappropriate prior arts from the searched prior arts in terms of the client’s technology

2-3: Excluding the expired prior arts from the searched prior arts by examining the database operated by Korean Intellectual Patent Office (KIPO)

2-4: Analyzing the rest of the searched prior arts and classifying them by technology

 

Step3: Performing infringement analysis and Finalizing – 6 days

 

3-1: Deciding relevance between the client’s technology and the prior arts which are narrowed down to through Step2

3-2: Establishing a group of prior arts (“essential prior arts”) which have high relevance as a result of 3-1

3-2: Analyzing infringement and design-around issues by comparing the claims of the essential prior arts with the client’s technology

3-3: Making a final report

 

l  Cost Estimate

    

If you accept our proposal, we would assign a Korean patent attorney who has expertise in FTO area. When it comes to the billing rate for our patent attorney who is fit for above conditions in our firm, at least 200 USD per hour is normally charged.

 

 

Selling "Dead Copy" Products of Unregistered Design of a New Product Punished by Criminal Penalties in addition to Civil Remedies

From July 18, 2017, under the Unfair Competition Prevention and Trade Secret Protection Act ("UCPA") infringers who violate the "dead copy" provision of the UCPA may be subject to imprisonment for up to three years or a fine of up to 30 million Korean Won (approximately USD 24,000).

Under the Korean Unfair Competition Prevention Act, the "dead copy" provision prevents selling, leasing, displaying, or importing or exporting a product which imitates the appearance of another's product (i.e., the shape, pattern, color, or combination of such attributes), even though the product is not covered by any design registration.

However, (i) the original imitated product shall be sold, leased, displayed for sale or lease, or imported or exported within three years of the date the original product was first created; and (ii) the appearance of the imitation product shall not be common to products of the same type.

This provision has been a key to protect unregistered designs. However, under the old law, infringers who sell "dead copy" products of unregistered design are liable for civil remedies including damages and injunction. The old provision allowed for only civil remedies, which have not been a sufficient deterrent in some cases, and require a party to engage in costly civil litigation to enforce its rights.

Under the new law, by criminal sanctions to "dead copy" infringers, the first makers protect their rights against knockoffs of their products more effectively.

On the other hand, KIPO has power to investigate potential "dead copy" violations cases on their own initiative, even in the absence of a complaint from a competitor.

Partner, Yong-Tae Lee

Partner / Foreign Attorney (Admitted in NY, USA)

Practice Areas:
- Contracts, Litigations, Arbitrations and Other Dispute Resolutions related to Cross-Boarder       
  Transactions
- IPR Licensing and Litigations
- Legal Compliance including Anti-Trust, Trade Regulations and Other Regulatory Affairs

QUALIFICATION SUMMARY

• Over twenty five years of legal experiences as in-house counsel and licensing executive in the various practice areas of (a) local and international business transactions and claims/litigations covering procurement, supply, development, strategic alliance, tax, finance, joint venture and M&A, (b) legal compliance including anti-trust, trade regulations and other regulatory affairs required under various jurisdictions and (c) intellectual properties involving patent prosecution, patent portfolio management, and IPR infringement claim/litigation with a focus on licensing .
• Over thirteen years of management experiences as General Counsel, Chief Compliance Officer, Chief IP Officer and Chief Licensing Executive, managing over 100 claims/ litigations and over thousands business transactions including multi hundred million dollar deals, and supervising more than 100 counsels and staff.

PROFESSIONAL EXPERIENCE

KASAN IP & Law Firm                                                                                                             2017 ~ Present

Ministry of National Planning & Economic Development, Myanmar                   2015 ~ 2016
- Legal Advisor

Samsung SDI Co, Ltd.                                                                                                                   2011 ~ 2016
- General Counsel & Chief Compliance Officer)

Samsung Electronics Co., Ltd.                                                                                                   1992 ~ 2011
- Chief Licensing Executive ( IPR Center)
- Chief IP Officer & Head of IP Department (Digital Media IP Department)
- Senior Counsel (Legal Department)

EDUCATION

Juris Doctor                                                                                                                                         May. 1992
West Virginia University College of Law, Morgantown, West Virginia, U.S.A.

Bachelor of Laws                                                                                                                         Feb. 1985
Kyungpook National University College of Law, Taegu, Korea

 

BAR ADMISSION & QUALIFICATION

Admitted to New York Bar                                                                                                             Jan. 1992
Member of American Bar Association and New York State Bar Association
 

Certified Korean Technology Transfer Agent                                                                      July.2003
Member of Korean Technology Transfer Agent Association

OTHER ACTIVITIES & SKILLS

- Lectured International Trade Laws at the Graduate School of Administration & Development for Myanmar government officials

- Member of Expert Advisory Committee for:
World Intellectual Property Office (WIPO), Korean Intellectual Property Office (KIPO) and
Korean Invention Promotion Association (KIPA)

- Expert Committee Member for Gyeonggi-Do International Business Center

- Lectured at professional associations, colleges and seminars on topics of international business transactions, licensing and intellectual property laws, and patent management strategies

PUBLICATIONS

- Contract Guide to International Business Transactions, Sechang Publish, June 2016
- Legal & Tax Guide to Myanmar Foreign Investment, Sechang Publish, June 2016

 

Final Appeal to the Supreme Court