Trade Marks & Copyright 2024 Comparisons

Trade marks are governed by the Trade Mark Act (TMA) and the Unfair Competition Prevention and Trade Secret Protection Act (UCPA). The TMA governs overall matters regarding trade mark registration and the protection of registered trade marks, the UCPA governs unfair competition involving trade marks, and the Copyright Act (CA) governs copyrights.

Korea does not recognise common law.

Korea is a member of or follows the World Trade Organization (WTO), the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPs Agreement), the Paris Convention, the Madrid Protocol, the Vienna Agreement, the Berne Convention and the WIPO Copyright Treaty, among others.

The Korean Constitution recognises international treaties as having the same legal effect as domestic laws.

Trade Mark

Protection under the TMA is only available for a trade mark that is registered in Korea. However, any trade mark that is famous or widely recognised in Korea can be protected under the UCPA regardless of its registration. This also applies to foreign trade marks.

Under the TMA, when multiple parties file for registration of identical or similar trade marks, only the first filing is registered. However, there are cases where an earlier foreign filing date is deemed the filing date in Korea according to treaties.

Copyright

The CA provides that foreign authors’ copyrighted works are protected in Korea according to treaties. Works by foreign authors residing in Korea or works first published in Korea are also protected, regardless of treaties.

Trade Marks and Source Identifiers

Under the TMA, a protected trade mark is a mark distinguishing one's goods from those of others. A mark encompasses all signs used to indicate the source of the goods, and may consist of or be expressed in symbols, letters, figures, sounds, scents, 3D shapes, holograms, motions or colours.

A design (eg, industrial design) involving a product’s form or packaging can be a source indicator of goods and can qualify as a trade mark if it distinguishes the goods from those of others.

Trade dress is not clearly defined in Korea. However, the shape/configuration of goods, packaging or the appearance of a business place can indicate the source of goods, and can qualify as a trade mark if it distinguishes the goods from those of others. Moreover, the UCPA prohibits unfair competition regarding the appearance of a business place and the shape of goods, as follows:

• using an identifier that is identical or similar to a well-known identifier (eg, overall appearance) of another’s business in Korea, thereby impairing the distinctiveness or reputation of that identifier; and
• transferring, displaying, importing or exporting goods that imitate another’s goods in form/configuration, provided that three years have not yet elapsed since such form was established and it does not take the usual form of similar goods.

In addition, a design can be protected under the Design Protection Act if it meets the requirements regarding industrial applicability, novelty and creativity, and is registered. Furthermore, a design can be protected under the CA if it constitutes an applied art work that is considered to have independent creativity distinct from its function.

Special Rules Regarding Certain Marks/Indicators

Surname/name as marks

Common surnames/names cannot be registered as trade marks since they lack distinctiveness. However, a foreign surname that is common in its country of origin but uncommon in Korea can be registered. If a person’s name/surname/business name is uncommon and famous, it can be registered as a trade mark with the consent of that person.

National flags, emblems and insignia of international organisations

Trade marks cannot be registered if they consist of a national flag or the insignia of an international organisation, or are identical/similar to the name, abbreviation or emblem of a renowned international organisation (eg, the International Olympic Committee), unless they are registered by the organisation itself. The International Olympic Committee owns the “Olympic” trade mark in Korea.

Collective marks and certification marks

A collective mark is used by a collective organisation (eg, co-operative) and its members to identify goods related to the organisation’s business. A certification mark is used by an entity engaged in the business of certifying and managing the quality, origin, production method, etc, of goods to prove that another’s goods meet these criteria.

Generally, trade mark registration applications and trade mark rights are transferable. However, collective marks or certification marks can only be transferred in special circumstances (eg, mergers and business transfers), and pledges or exclusive licences cannot be established on rights related to these marks.

Geographical indications

Generally, a trade mark that only indicates the origin of goods in a common manner (ie, plain descriptions without images or symbols) or that consists solely of a highly renowned geographical name cannot be registered. However, a foregoing mark can be registered as a “collective mark of geographical indication” if it functions as a geographical indication for specific goods. A “geographical indication” identifies a good originating in a particular region or territory where a given quality, reputation or other characteristic of the good is essentially attributable to its geographical origin. A “certification mark for geographical indication” can also be registered.

Protection of Unregistered Famous Foreign Trade Marks

Famous foreign trade marks that are not registered in Korea are not protected under the TMA. However, others cannot register a foreign trade mark that is widely recognised in Korea for identical/similar goods. Moreover, under the UCPA, using a trade mark that is identical/similar to another’s famous trade mark in Korea to cause confusion with another’s goods or business, or to dilute or tarnish the distinctiveness or reputation of another’s mark, is prohibited as an act of unfair competition, except where the trade mark started to be used without unlawful intent before gaining fame in Korea.

Trade mark registration is necessary for protection under the TMA. A trade mark must have “distinctiveness” in order to qualify for registration. Therefore, a trade mark cannot be registered if it has no or weak distinctiveness, as follows:

• it commonly indicates the generic name of a good;
• it is commonly used for a good;
• it commonly indicates the origin, quality, raw materials, efficacy or production method;
• it consists solely of a renowned geographic name or map;
• it commonly indicates a common surname/name; or
• it is simple and common.

However, in exceptional cases, if a mark under the last four points above acquires distinctiveness through use as a source indicator of a specific person’s goods, it may be registered only for the goods where the mark was used.

Distinctiveness acquired through use can be evidenced by, eg, the trade mark used, the goods it was used on, the fact of use, the period and geographical scope of use, the sales figures or market share, advertising methods and content, and objective consumer awareness surveys.

Trade mark rights are granted upon registration, and a trade mark owner has the exclusive right to use the registered trade mark for designated goods. Another’s unauthorised use of the registered trade mark on designated goods constitutes trade mark infringement.

Trade marks are maintained for the term of their duration, and the term of trade mark protection is ten years from the registration, renewable every ten years, effectively rendering it indefinite. However, if the registered trade mark is not used for at least three consecutive years, the registration may be revoked or cancelled.

To establish the use of a registered trade mark, the mark should be used to indicate the source of a particular good. It does not constitute trade mark use if the mark is used merely for informational/explanatory purposes regarding a good’s contents rather than distinguishing the good from those of others.

A trade mark owner is not obliged but can choose to indicate that a mark is registered. It is not mandatory to do so, but they can choose to use symbols (eg, ®) to denote registration, and there are no rules on how to use these symbols.

If there is infringement of a mark that is indicated as having been registered, there is a presumption of intent in the infringement. Therefore, this indication is useful in claiming damages for infringement.

Trade marks can also be protected under the CA and the Design Protection Act.

If a registered trade mark use conflicts with another’s patent, utility model or design rights for which an application was filed prior to the trade mark application filing date, or with another’s copyright occurring prior to such filing date, said trade mark cannot be used without the consent of the relevant rights holders.

Trade mark rights can also be restricted. Even if a surname/name is registered as a trade mark (where it is uncommon, or where it is common but has acquired distinctiveness through use), others can use their real name if it is consistent with commercial practices, or an author can indicate their real name or pseudonym on the original and copies of their work. Such use or indication does not constitute trade mark infringement.

Works that are eligible for copyright protection under the CA include literary works, musical works, dramatic works, artistic works, architectural works, pictorial works, audiovisual works, graphic works and software works, as well as derivative works and compilation works. However, this list is not comprehensive, and copyright protection can be awarded to any work that meets the general requirements under the CA.

Industrial designs are entitled to copyright protection if they qualify as works of applied art – ie, when they are able to be reproduced in the same shape on articles and be separable from the articles wherein they are used.

A work must have creativity and express human thoughts and emotions in order to qualify for copyright protection. “Creativity” is recognised if the work is an original expression created by the author without copying expressions of others. The copyright protection requirements apply to all works of authorship.

Fixation is not required for copyright protection, and unrecorded improvisations can be protected.

Authorship

An “author” is the person who created the work; those who assisted in or provided the driving force for the work’s creation are not authors. The authorship is presumed if a person whose real name or well-known pseudonym is commonly indicated as the author’s name on the work or public performance or transmission of the work.

Work for Hire and Corporate Authorship

A “work for hire” is created by a person engaged by an employer under the employer’s initiative. However, a work created by an employee does not qualify as a work for hire if it is created beyond the employee’s work scope without the employer’s initiative, supervision and control.

Any entity may qualify as the author if the work is a “work for hire” published in their name, and the employment agreement or rules do not provide otherwise.

Work Not Created by a Human

There are currently no explicit regulations or court precedents on whether a work created by AI software or animals may qualify as a copyrightable work. However, Korea Copyright Commission (KCC) has stated that AI outputs do not qualify as works of authorship and therefore cannot be registered.

Anonymous or Pseudonymous Works

Copyright protection may be available for anonymous or pseudonymous works. For works without a real name or well-known pseudonym, the person indicated as a publisher or public performer or the person who made the work public is presumed to be the author. The duration of the copyright of an anonymous or pseudonymous work that is not well known lasts for 70 years from the publication year.

Joint Authorship

A joint work is created when the contributions of two or more persons combine to form an inseparable work. It must meet the following requirements:

• two or more authors contributed to the creation of the work;
• the authors intended to jointly create the work (ie, joint authors); and
• the contribution of each author cannot be separately exploited.

Moral rights and economic rights in a joint work may be exercised only by the unanimous consent of all joint authors. A joint author cannot transfer or encumber their rights in the joint work without the consent of the other joint author(s), which must not be withheld in bad faith. However, a joint author may seek injunctive or precautionary remedies for the joint work without the consent of the other joint author(s).

The profit distribution from the exploitation of a joint work can be determined by the agreement of the joint authors; otherwise, profits are distributed based on the proportion of the contributions of the joint authors. If such proportion is unclear, it is presumed to be equal.

Economic Rights

The CA gives the copyright owner the economic right to:

• reproduce the copyrighted work;
• perform the copyrighted work publicly;
• publicly transmit the copyrighted work;
• publicly display originals or copies of architectural works, works of fine art or pictorial works;
• distribute originals or copies of the copyrighted work;
• lease phonograms published for commercial purposes; and
• create derivative works from the copyrighted work by means of translation, adaptation, arrangement or video production.

Moral Rights

The CA gives the copyright owner the moral right of:

• determination of whether to publish the work;
• attribution, allowing the copyright owner to be indicated as the author of the work in their real name or pseudonym in the originals or copies of the work or any publications of the work; and
• integrity, allowing the copyright owner to prevent distortions of the work or its format or title.

Synchronisation Rights

A synchronisation licence to the rights to reproduce and distribute compositions, lyrics and the sound recording is required in order to use a copyrighted music work in visual or audiovisual works (eg, music videos, movies). The collecting societies collect licence fees for the use of such synchronisation rights.

Economic Rights and Moral Rights

The economic rights generally last for the author’s life plus 70 years. However, for a joint work, the term is 70 years from the death of the last deceased author. For anonymous works, works bearing pseudonyms that are not widely known, works for hire and audiovisual works, such term is 70 years from publication; however, the term for works for hire or audiovisual works may expire 70 years from creation. Moral rights last for the life of the author.

Alienability

A copyright owner may wholly or partially transfer the economic rights. They may authorise others to exploit the economic rights and provide the economic rights as a security. Upon a copyright owner’s death, the economic rights are inherited pursuant to the Civil Code.

Moral rights are inalienable and cannot be transferred nor inherited.

Works meeting the creativity requirements are automatically awarded copyright protection upon their creation without the need for a special notice or registration.

The collective rights management system in Korea allows the existence of several collecting societies/agencies, including the Korea Music Copyright Association. The collecting societies/agencies manage rights, including economic rights, exclusive publication rights and neighbouring rights.

The collecting societies/agencies enter into licence agreements with the users on behalf of the copyright owners. They collect licence fees from the users and distribute the amount to the copyright owners, minus the administrative fees. The rates or amounts of licence fees and administrative fees must be approved by the Ministry of Culture, Sports and Tourism. The collecting societies may directly file a lawsuit against an infringer on behalf of the copyright owner.

Copyright registration is not a prerequisite for copyright protection, but it can establish a presumption of facts stated in the registration certificate (eg, identity of the copyright owner and date of creation). The registration is publicly available and anyone infringing a registered copyright is presumed to have been negligent.

Domestic and foreign entities can obtain copyright registration without needing to appoint an agent for the registration filing.

An author may apply for copyright registration for copyrightable works. The application should be submitted to KCC with the following attached:

• a copy of the work;
• a copy of the author’s ID; and
• copyright application details (eg, work type, form of reproduction, creation and publication dates).

Applications can be made both offline and online, and incur the following registration costs:

• for a single general work: KRW33,600 for offline and KRW23,600 for online; and
• for program work: KRW63,600 for offline and KRW53,600 for online.

If KCC discovers that a copyright has been registered for a non-copyrightable work or that a copyright has been registered in the name of an unauthorised person, it may revoke ex officio the registration following a hearing procedure. However, a hearing procedure is not required if the grounds for revocation are affirmed by a final court judgment.

If KCC detects errors or omissions in copyright register entries, it must inform the registrant and any interested parties. If the error/omission is due to the registration officer, KCC may correct it ex officio; otherwise, it can correct the registration after receiving an application for rectification.

KCC may refuse a registration application if:

• the subject matter is not a work of authorship or is not protectable;
• the applicant lacks authority to register; or
• the required documents are not attached.

In such case, the applicant has one month from the date of refusal to file an objection to KCC. If the objection is dismissed or rejected, the applicant may file an administrative appeal or litigation.

Copyright protection is generally not excluded by the TMA or the Design Protection Act. Even if a figure constitutes a trade mark, it can be protected as a work under the CA if it meets the requirements of a copyrightable work. Furthermore, an industrial design can be registered and protected under the Design Protection Act if it meets the requirements of industrial applicability, novelty and creativity.

Trade mark rights under the TMA arise from registration, not from use, although unregistered famous trade marks can receive certain protections under the UCPA. A mark with weak distinctiveness generally cannot be registered, but it can be registered for the specific good on which it was used if it acquires distinctiveness through use.

Korean Intellectual Property Office (KIPO) handles trade mark registration and maintains a trade mark register, which can be freely accessed at KIPO’s website. General information on registered trade marks can be freely accessed through KIPO's information search service, KIPRIS.

Considering the first-to-file rule for trade mark registration, it is normal practice to search through KIPRIS or WIPS (paid service) for prior registered trade marks and prior filings before applying for registration.

Korea does not separately provide for the registration of series marks, where several similar trade marks are filed together under one application. Each trade mark requires a separate application (“one trade mark per application”).

Trade Mark Term and Renewal

See 2.3 Trade Mark Rights regarding the term of trade marks.

An application to renew the term can be made from one year before the expiration of the term to within six months after its expiration. If the renewal application is not filed within this period, the trade mark right expires and cannot be revived. No additional requirements are needed for the renewal registration, other than the application submission and fee payment.

Updating Registration

Trade mark owners can file to add designated goods to their trade mark. If the addition is granted, the term of the trade mark for the additionally registered goods is the same as that of the existing trade mark. If the owner so wishes, designated goods can be excluded by specifying them in and during the renewal application.

Trade Mark Registration Requirements

A trade mark must have distinctiveness and no other ground for non-registration to qualify for registration.

The following trade marks cannot be registered:

• marks that are identical/similar to:

1. national flags or emblems of international organisations;
2. another’s previously registered trade mark for identical/similar designated goods;
3. another’s famous trade mark for identical/similar goods; or
4. a famous geographical indication for identical/similar goods;
• marks that are likely to:
1. defame or insult a nation, race, religion or a famous deceased person;
2. contravene good morals or harm public order;
3. cause confusion or to impair the distinctiveness or reputation of a famous person’s goods or business; or
4. mislead as to the quality of goods or deceive consumers;
• marks that include a famous person’s name or portrait without their consent; or
• marks that consist solely of a three-dimensional shape, colour, sound or scent that is necessary to secure the function of the goods or packaging.

It is possible and common to apply for trade mark registration by selecting multiple classifications of goods.

Registration Application

The following should be submitted to KIPO for registration:

• an application form with the name and address of the applicant, designated goods and services, etc; and
• the following attachments:
1. a specimen of the mark;
2. an explanation of the mark; and
3. for marks with non-visual elements (such as sound or scent), sound files, olfactory samples or videos for motion marks.

Registration Costs

Registration applications can be made both offline and online. The basic fee for a single trade mark application is approximately KRW62,000 per class of goods plus additional fees for designated goods (KRW2,000 added for each designated good if more than ten items) for offline, and KRW10,000 less for online applications.

Registration Applicants

Any entity using or intending to use a trade mark in Korea can register their trade mark. Foreign individuals and corporations can also apply. A patent attorney does not necessarily need to be appointed as an agent.

The use of a trade mark in commerce prior to its application or registration is not required for trade mark registration. However, the registration may be revoked if the trade mark owner or the licensee does not use the trade mark on the designated goods for at least three consecutive years after registration.

When examining a trade mark application, the examiner should investigate the existence of a prior registered trade mark. A trade mark that is identical/similar to another’s previously filed or registered one for identical/similar designated goods cannot be registered, and the examiner will reject the application. There is currently no procedure for the owner of a prior registered trade mark to participate in the registration of an identical/similar subsequent trade mark.

However, under the amended Trade Mark Act to take effect from 1 May 2024, one can register a subsequent trade mark with the consent of the owner of the prior registered trade mark for similar goods. If any of the coexisting trade marks are subsequently used in bad faith, thereby causing misunderstanding or confusion amongst consumers, the registration may be revoked.

During KIPO’s examination of the application before publication, anyone can freely provide grounds for refusing a trade mark registration at the KIPO website, either anonymously or in their own name.

If the examiner decides there are no grounds for refusal, the application is published in KIPO’s official gazette. Any person can file an opposition within two months from the publication. The grounds for opposition are the same as the grounds for refusal of trade mark registration (see 4.12 Refusal of Registration).

Trade mark applications can be withdrawn or abandoned, and there are procedures for amending and changing an application.

Amendment refers to an applicant correcting procedural or substantive defects in the application voluntarily or upon KIPO’s order within the following scope without altering the essence of the initial application:

• reducing the scope of designated goods;
• correcting errors;
• clarifying unclear entries; or
• deleting non-essential parts of the trade mark.

Change refers to changing the type of right (eg, trade mark or collective mark) without changing the contents of the application. When an application is changed, the initial application is considered withdrawn.

An applicant can divide a trade mark application after filing, whereby the application is divided into two or more applications if the initial application was filed for at least two kinds of goods as designated goods. That is, a divisional application only entails a division of the designated goods.

A new application should be filed stating the purpose of the division, and the initial application should be amended to remove the designated goods intended for division.

An application with incorrect information can be amended. The examiner has the authority to amend the application ex officio when deciding to publish the application if there is clearly incorrect information in the application (eg, duplicate entries). In such a case, the examiner must notify the applicant of such amendment.

If the applicant cannot accept all or part of the amendment, they should submit an opinion to KIPO, whereby the correction is deemed not to have been made from the onset and KIPO’s decision to publish the application is also deemed to have been revoked.

The grounds for KIPO refusing a trade mark registration are as follows:

• not meeting the legal definition of a trade mark;
• lack of distinctiveness;
• falling under the grounds for non-registration;
• identical/similar to a prior application;
• treaty violation;
• violating the one trade mark per application rule; and
• application is filed by ineligible applicants – eg, KIPO employees.

If a ground for refusal is found, the examiner must notify the applicant thereof. The applicant is granted two months to submit their written opinion on such ground and amendment. If “lack of distinctiveness” is the ground for refusal, the applicant typically must prove that the mark is not a generic name or a customary sign, or that it has acquired secondary meaning.

If the ground for refusal is unresolved even after submitting these documents, KIPO issues a refusal decision, against which the applicant can request a re-examination or file an appeal.

If a trade mark registration is refused, the applicant can file an appeal against KIPO’s refusal decision with the Intellectual Property Trial and Appeal Board (IPTAB) within three months of receiving the copy of the decision.

Within the appeal period, the applicant can request a re-examination by amending the designated goods or trade mark. In such case, the original refusal decision is deemed to have been revoked, and the re-examination request cannot be withdrawn.

Korea participates in the Madrid System, whereby an international application can be filed in Madrid Agreement member states at once, based on a domestic trade mark application or registration.

An international application must be prepared in English based on the domestic trade mark application or registration and submitted to KIPO. Following KIPO’s examination, the application is forwarded to WIPO’s International Bureau.

When the examiner determines that there are no grounds for refusal, the application is published in KIPO’s official gazette. Anyone can file an opposition within two months of such publication, and can amend the grounds and evidence for the opposition within two months and 30 days of filing such opposition.

The deadline for filing an opposition cannot be extended, but the period for amending the grounds and evidence for the opposition can be extended once or twice, for up to 30 days.

The grounds for opposition are the same as the grounds for refusal of registration.

Anyone can file an opposition to the application, and appointing an attorney is not mandatory. The cost of filing an opposition is KRW50,000 per class of goods. Attorney fees, if applicable, can vary based on the complexity of proving the grounds for opposition, etc.

To file an opposition, the opponent must submit a written application providing the following information to KIPO:

• contact information for the opponent and attorney (if any);
• the application subject to the opposition;
• the designated goods or class thereof subject to the opposition; and
• the grounds and evidence for the opposition.

The opposition is examined and decided by a panel of three KIPO examiners. Upon receipt of the opposition, the examiner in charge must send a copy to the applicant and set a period for them to submit a response. The applicant can amend the designated goods and trade mark within such a response period, provided that the essence of the initial application remains unchanged. The panel of examiners can also consider grounds raised by neither the applicant nor the opponent, in which case both can present their opinions.

The opposition decision must be in writing and must include the relevant grounds, and the copy thereof must be sent to both the applicant and the opponent.

If KIPO accepts the opposition, it simultaneously renders a refusal decision on the application. In such cases, the applicant may appeal against the refusal decision to IPTAB within three months from the date of receiving a copy thereof.

Conversely, if KIPO rejects the opposition, it renders a registration decision. In such cases, the opponent may apply to IPTAB for the invalidation of the registration. Direct appeals against the opposition decision itself are not permitted.

Revocation

The revocation system intends to induce the proper use of registered trade marks.

The timeframe for filing a revocation varies depending on the grounds for revocation, as follows:

• using a registered trade mark by the owner or licensee beyond the scope of the licence – eg, using a similar mark that deviates from its identity;
• non-use of a registered trade mark domestically for at least three consecutive years without just cause;
• violating restrictions on trade mark transfer – eg, transferring a registered trade mark without transferring similar designated goods en bloc, transferring a share of a jointly owned registered trade mark without the consent of all co-owners, or transferring a collective mark without a merger or without KIPO’s approval;
• transferring a registered trade mark leading to multiple parties owning similar trade marks, where one of them uses such registered trade mark for the purpose of unfair competition, causing confusion or misunderstanding;
• using a registered trade mark constituting unfair competition by the unauthorised use of another’s achievements; and
• improperly using a collective mark or certification mark in violation of the articles of incorporation.

For the first, fourth and sixth grounds above, a revocation action cannot be filed after three years from the date the relevant grounds ceased to exist. For the fifth ground, a revocation must be filed within five years, but a revocation can be filed at any time for the third ground. For the second ground, the trade mark must have been unused for at least three consecutive years up to the date of filing the revocation.

Invalidation

An interested party or an examiner can file for invalidation if a trade mark is registered despite lacking distinctiveness, having grounds for non-registration, having another prior application for an identical/similar mark, etc. All of the grounds for a refusal of trade mark registration (except for the violation of the one trade mark per application rule) constitute grounds for invalidation.

An invalidation action can be raised at any time while the grounds for invalidation exist. However, an invalidation may only be filed within five years from the date of registration for the following grounds for invalidation:

• trade marks including the name, title or portrait of a famous person;
• trade marks identical/similar to another’s prior registered trade mark, another’s prior application, another’s collective mark with geographical indication, or a widely recognised trade mark or geographical indication;
• trade marks for geographical indications for wines or spirits in WTO member states;
• applications filed after the period for the renewal registration elapsed; and
• failure to apply for classification conversion registration within the application period.

Annulment of Copyright Registration

There is no procedure for third parties to seek revocation of a registered copyright. However, the copyright registrant can apply for annulment with KCC, and KCC can annul the registration ex officio in cases where copyright protection should not have been permitted – eg, if the item is not a copyrightable work. There is no statutory limitation for such annulment.

Trade Mark

Please see 6.1 Timeframes for Filing Revocation/Cancellation Proceedings for the grounds to revoke or invalidate a trade mark registration.

When a revocation decision becomes final, the registered trade mark right is extinguished at that point. However, if revocation is due to non-use, such trade mark right is deemed extinguished as of the date of filing the revocation.

When an invalidation decision becomes final, the registered trade mark right is deemed to have never existed. However, if theregistered trade mark later loses distinctiveness, such trade mark right is considered non-existent from such point onwards.

When a revocation or invalidation decision becomes final, KIPO will annul the trade mark registration ex officio.

Reapplication is possible three years after the registered trade mark right is extinguished due to a revocation, unless the revocation was for a violation of a restriction on trade mark transfer. In contrast, if a trade mark registration becomes invalid, reapplication for the same trade mark is impossible unless the ground for invalidation is resolved.

Copyright

There is no procedure for the revocation or cancellation of a copyright registration. Therefore, any discussion of copyright is hereinafter omitted, unless there is a noteworthy issue.

Revocation

Anyone may file a revocation action against a registered trade mark if a ground for revocation exists; however, only an interested party may file for revocation where there is a violation of certain trade mark transfer restrictions or where the use of a registered trade mark constitutes unfair competition. An “interested party” here is a person likely to suffer damage because they cannot use an identical/similar trade mark due to the existing trade mark that should be revoked (eg, the recipient of a cease-and-desist letter from the registered trade mark owner).

Invalidation

Only an interested party or an examiner may file an invalidation action. An “interested party” here is a person who has used, is currently using or is likely to use a trade mark that is identical/similar to the registered trade mark on identical/similar designated goods, or is manufacturing/selling goods of the same type as the designated goods of the registered trade mark. It also includes a person who has not used a similar trade mark but has registered it prior to the registered trade mark at issue. The determination regarding an interested party depends on the timing of the decision.

Revocation or invalidation actions for trade marks are filed with IPTAB.

Trade marks may be partially revoked or invalidated. If there are two or more designated goods covered by the registered trade mark, a revocation/invalidation action may be requested for each designated good.

The contents of a registered trade mark cannot be amended during revocation/invalidation proceedings.

Trade Mark

Infringement suits and revocation/invalidation proceedings are bifurcated: civil courts handle infringement actions, while IPTAB handles revocation/invalidation actions. Both procedures may occur concurrently, but courts handling infringement lawsuits often wait for revocation/invalidation outcomes. An expedited revocation/invalidation proceeding may be requested during an ongoing infringement lawsuit, which, if accepted, can result in the judgment being issued within three months from the date of the decision to expedite.

Appeals for both revocation/invalidation decisions and infringement suits are directed to the IP High Court, although each appeal case is handled separately. However, if appeal cases involving the same trade mark between the same parties occur at the IP High Court around the same time, they may be concurrently heard by the same panel of judges.

Copyright

If a non-rights holder obtains copyright registration, the rightful copyright owner can file for annulment of the registration with a civil court. As a registered copyright holder is merely presumed to be the author, the copyright owner can argue and prove their rightful ownership in an infringement lawsuit. In such cases, claims for both annulment of registration and infringement can be consolidated within a single lawsuit.

Trade Mark

If an applicant submits false documents to register a trade mark with weak distinctiveness, the registration will be refused; if registered, it will be subject to an invalidation decision once the falsehood is revealed. Furthermore, anyone who obtains trade mark registration through fraudulent or improper conduct may be punished with imprisonment of no more than three years or a criminal fine not exceeding KRW30 million.

There is no regulation for suspending the examination of the application when the investigation is pending. In practice, if such misconduct is detected during the examination and an investigation ensues, the application will be suspended.

Copyright

No specific revocation or cancellation procedures exist, although one can apply to KCC for ex officio annulment upon obtaining a civil court judgment. A person who fraudulently registers a copyright may be punished with imprisonment of no more than three years or a criminal fine not exceeding KRW30 million, or both.

Trade Mark

Trade marks are freely transferable, but there are restrictions to prevent confusion and misunderstanding. Jointly owned registered trade marks require the consent of all co-owners for assignment. Although a registered trade mark can be divided and transferred for each designated good, similar designated goods must be transferred together. Violating these provisions can lead to revocation.

Trade mark transfer can occur through contractual arrangement or the comprehensive succession of rights/obligations in inheritance or mergers. In the former, the transfer becomes effective upon registering the transfer; in the latter, a trade mark is transferred to the successor even without registering the transfer, but a report to KIPO must be filed promptly. Furthermore, if an inherited trade mark is not registered within three years of the owner’s death, the trade mark right extinguishes on the day following the three-year anniversary of the owner's death.

Copyright

While moral rights are not assignable, the economic rights may be wholly or partially assigned without special procedures. Collaborative works require consent from all authors for assignment. Registration of copyright and the assignment of economic rights allow the assertion of assignment against third parties.

Upon the copyright owner’s death, economic rights are inherited in accordance with the Civil Code, but moral rights cannot be inherited.

Trade Mark

Trade mark owners can permit third parties to use a registered trade mark on designated goods within the agreed scope. Jointly owned registered trade marks can only be licensed with the consent of all co-owners. Types of licences include an exclusive licence, a non-exclusive licence and a sole licence. Exclusive licensees have protection equal to the registered trade mark owner, with an exclusive usage right. Meanwhile, non-exclusive licences allows multiple licensees for the same registered trade mark, but the registered trade mark owner can agree not to grant a non-exclusive licence to third parties, which is referred to as a sole licence.

Trade mark licensing can be granted without any formal requirements, and even unregistered licences have effects between the parties. However, the licensee cannot assert its right against third parties without registration.

Trade marks can effectively be protected indefinitely through renewal of their duration, and can also be licensed perpetually.

Copyright

No special form or procedure is required for copyright licensing. Collaborative works need consent from all authors for licensing. Parties are free to determine licence details, including the type – eg, an exclusive, non-exclusive or sole licence. There is no prohibition on granting licences without a specified term, and licences can encompass archival rights with agreement between the parties.

An applicant’s status in a pending trade mark application can be assigned. However, except in cases of inheritance or general succession, the succession to a trade mark application requires the filing of a report on the change of the applicant in order to become effective. A trade mark application or registration can be assigned regardless of whether or not the trade mark is currently in use.

A trade mark can be licensed during the application process, but only contractual effects arise between the parties before registration.

Assignments of or licences to exercise economic rights in copyrighted works are possible during the copyright registration process.

Except in cases of inheritance or general succession, the transfer of trade mark rights becomes effective only upon registration. Granting a licence is effective between the parties even without registration but, if registered, the right to use can be asserted against anyone.

The transfer of economic rights in copyrighted work, exclusive publication rights and publication rights can be registered. Although registration is not mandatory, failure to register means that the rights cannot be asserted against third parties, such as other transferees. The licence to exercise economic rights is not subject to registration.

There is no rule regarding the recapture of transferred rights for copyrighted works. However, one may rescind or terminate the transfer agreement if certain conditions are met, pursuant to contractual provisions on the copyright transfer or the Civil Code. These conditions include cases where the transfer of economic rights was made under duress or fraud by the other party, or where the other party fails to fulfil material obligations – eg, the payment of transfer fees.

Trade Mark

Trade mark rights and licences can serve as security, subject to seizure or execution. A pledge can be established on registered trade mark rights or licences, but consent from all co-owners is necessary for jointly owned registered trade marks. To establish a pledge on a registered trade mark licence, the registered trade mark owner’s consent is also required.

Establishing a pledge on a trade mark right becomes effective only upon registration, whereas establishing a pledge on a trade mark licence becomes effective even without registration. However, in the latter case, this cannot be asserted against third parties. The holder of such security rights can enforce them by seizing, selling or assigning the trade mark and licence to creditors.

Copyright

Economic rights can also be provided as security. For a joint work, the consent of all rights owners is required. While the registration of a pledge is not mandatory, the pledge cannot be asserted against third parties without registration.

The primary civil remedies for trade mark or copyright infringement are injunctions against infringement and claims for damages. For an injunction request, the statute of limitations does not apply if the infringement continues. For a damages claim, the limitations period expires three years after the date the victim becomes aware of the injury and the infringer, or ten years from the date of the infringement.

Korea does not generally recognise defences such as laches, other than express statutory limitation periods for the exercise of rights. However, there have been instances where a similar argument has been accepted as an “abuse of rights” defence in trade mark infringement cases.

Trade Mark Infringement

The following actions are stipulated as registered trade mark infringement:

• using a trade mark that is identical/similar to another’s registered trade mark on goods that are identical/similar to the designated goods;
• delivering, selling, forging, imitating or possessing a trade mark that is identical/similar to another’s registered trade mark to use or cause a third party to use the trade mark on goods that are identical/similar to the designated goods;
• manufacturing, delivering, selling or possessing equipment to forge or imitate another’s registered trade mark or causing a third party to forge or imitate such trade mark; and
• possessing goods that are identical/similar to the designated goods bearing another’s registered trade mark or any other same or similar trade mark to transfer or deliver such goods.

Available remedies for registered trade mark infringement include an injunction against the infringement, the prevention of infringement, the removal of the infringing goods, compensatory damages, the restoration of a registered trade mark owner’s reputation, and criminal sanctions. In addition, one can file a proactive trial to IPTAB (similar to a declaratory judgment) to confirm that the use of a trade mark falls within the scope of one’s registered trade mark rights.

To claim trade mark infringement, all the following must be asserted and established:

• the registered trade mark validly exists;
• infringement is within the scope of registered trade mark protection;
• the use is without legitimate authority;
• the use qualifies as a registered trade mark use; and
• the registered trade mark rights are not restricted, such as where the use of one's own trade name is merely consistent with commercial practices.

For a damages claim, aside from the aforementioned requirements, all the following must also be asserted and established:

• the infringer acted intentionally or negligently;
• there is a causal relationship between the infringement and the injury; and
• the amount of actual damages.

Furthermore, criminal liability arises when the infringer's intent is proven.

Unregistered Trade Mark Infringement

An unregistered trade mark generally lacks the legal basis for the above remedies. However, an unregistered trade mark that is widely recognised in Korea can still be protected under the UCPA through an injunction, damages claim, restoration of a trade mark owner’s reputation and criminal sanctions. The protection for unregistered trade marks differs from registered trade marks as it specifically requires fame.

Dilution of Trade Mark by Blurring or Tarnishment, and Cyber-Squatting

The UCPA prohibits acts that dilute the distinctiveness or reputation of a famous trade mark, and, in cases of violation, allows for a request for injunction, damages claim, restoration of a trade owner’s reputation and criminal sanctions. However, continuous use of a trade mark before it becomes famous, without unlawful intent, does not constitute an act of unfair competition, nor does non-commercial use or use in news reporting.

In the case of cybersquatting, the UCPA prohibits acts such as registering or using a domain name that is identical/similar to a famous trade mark for the purpose of:

• selling or leasing the domain name;
• interfering with the registration and use of the domain name by the rights holder; or
• other commercial profit.

Available remedies include injunction, compensatory damages and restoration of a trade mark owner’s reputation.

Copyright Infringement

A copyrighted work is considered infringed when any of the exclusive rights granted to a copyright owner is exercised without the owner’s permission, unless an exception applies.

The following acts are considered copyright infringement:

• importing, for distribution within Korea, products that would infringe copyright if they had been made in Korea;
• possessing products for distribution, knowing that they were produced by infringement;
• using copies of software for business, knowing that the copies were made by infringing the software copyright; and
• using the copyrighted work in a manner defaming the author’s reputation.

The moral rights of the copyright owner are considered infringed when a person publishes unpublished works without the permission of the copyright owner, does not indicate the name of the author against the owner's will, or alters the copyrighted work without the owner’s permission.

Claims for copyright infringement include an injunction against infringement, the destruction of infringing materials, compensatory damages and criminal sanctions.

Prohibition on Removal or Alteration of Copyright Management Information

“Rights management information” is information attached to original works or copies to identify the work and the copyright owner. Removing or altering such information, either knowing or being negligently unaware that it would lead to infringement, is prohibited. Copyright owners can claim an injunction or compensatory damages against violators.

Trade Mark

The main factor in determining infringement is the similarity of the trade marks, which is assessed based on the overall appearance, appellation and concept of the trade mark from the standpoint of ordinary consumers, in a holistic, objective and detached manner, to determine whether there is a likelihood of confusion or misunderstanding about the source of the goods.

Copyright

To establish copyright infringement, substantial similarity and a relationship of dependence are required. A relationship of dependence is presumed if the accessibility to the original work and the similarity between the work in question and the original work can be found.

Trade Mark

Only the registered trade mark owner and the registered exclusive licensee can file an infringement lawsuit. A third party with an interest in the outcome of the lawsuit (eg, non-exclusive licensee) may intervene in an ongoing lawsuit in support of a party. For unregistered trade marks, only the owner of a famous trade mark may file an infringement lawsuit.

Copyright

A copyright owner may file an infringement lawsuit, and registration is not required for such action.

An exclusive licensee or non-exclusive licensee cannot file an infringement lawsuit. However, an exclusive licensee may raise an infringement action on behalf of the copyright owner if the copyright owner does not file such action. Similar to a non-exclusive licensee of a trade mark, a licensee of a copyright may intervene in a lawsuit initiated by the copyright owner as an interested third party in support of the copyright owner.

Korea does not specifically stipulate representative actions or collective actions for trade mark or copyright proceedings.

There is no prerequisite to filing a lawsuit for trade mark/copyright holders.

However, the rights holder’s exercise of an exclusive registered trade mark right/copyright where infringement is not established and they know of such fact or such fact is objectively clear may constitute an improper exercise of IP rights in violation of Korean competition law, particularly if such an exercise potentially restricts competition in the relevant market. In addition, a rights holder may be deemed to have committed a tort and/or criminal interference with business for sending, without adequate review, a warning letter to the business partners of another party claiming that the party’s goods infringe on the holder’s IP rights.

Registered Trade Mark

For a registered trade mark infringement lawsuit, exclusive jurisdiction at first instance lies with the Seoul Central District Court or other district courts, depending on the plaintiff's or defendant's address or the location of the infringement. However, such suit may be filed with the Seoul Central District Court regardless of the foregoing locations. The second instance court is the IP High Court, and the third instance court is the Supreme Court.

Unregistered Trade Mark and Copyright

For unregistered trade mark infringement (if applicable) or copyright infringement, a lawsuit can be filed at any district court governing the plaintiff's or defendant's address or the location of the infringement, or other relevant district courts. The appellate court is either the high court governing the respective first instance court or the collegiate division of the respective district court. The final appeal court is the Supreme Court.

Lawsuits for Trade Mark and Copyright

Prior to filing a lawsuit, it is common to request an attorney to review whether an infringement occurred, to send warning letters or to attempt dispute resolution through negotiation. While litigation can be conducted pro se, it is typically conducted with legal counsel. Foreigners can also file an infringement lawsuit if they hold registered trade marks or famous trade marks, or if they are entitled to copyright protection under a treaty.

The initial pleading standards for a complaint or other document filed to initiate a trade mark or copyright lawsuit are not specifically defined; it suffices to submit well-organised claims with appropriate causes of action and evidence. Claims can be amended up to the end of the fact-finding proceedings – ie, up to the second instance, to the extent the fundamental facts of the claim remain unchanged.

A defendant can initiate a lawsuit in response to the plaintiff’s action. A defendant in a registered trade mark infringement lawsuit often files an invalidation action with IPTAB. Furthermore, an alleged infringer who has received a warning letter can also initiate declaratory judgment actions by arguing that there is no infringement, and can request IPTAB to confirm that their use of the trade mark does not fall within the scope of the registered trade mark rights (“passive confirmation of the scope of rights”).

Please see 8.8 Initial Pleading Standards regarding potential defendants seeking declaratory judgment or passive confirmation of the scope of rights, and please see 8.6 Prerequisites and Restrictions to Filing a Lawsuit for IP holders’ liability.

However, if an infringement lawsuit has already been filed, a declaratory judgment action is not permitted because the defendant can dispute the issue of infringement in that lawsuit and ultimately resolve the matter.

KIPO operates an Industrial Property Rights Dispute Mediation System. The Mediation Committee resolves disputes regarding trade marks by inducing settlement. The mediation process is confidential and can be promptly completed within only three months; there is no application fee. However, if the mediation is unsuccessful, the dispute must ultimately be resolved through litigation.

KCC operates the Copyright Dispute Mediation System, which is almost identical to the Industrial Property Rights Dispute Mediation System.

IPTAB can issue a confirmatory judgment determining whether a particular use of a trade mark falls within the scope of a certain trade mark’s rights. The IPTAB judgment does not have binding legal force in court, although the courts generally defer to IPTAB confirmatory judgments preceding the matter at hand.

For copyright matters, KIPO has no such procedure.

Counterfeiting a trade mark/copyright, the production or sale of counterfeit goods or the unauthorised reproduction of works are not separately defined in the relevant statute, nor are there specific procedures or legal remedies defined for such purposes. However, protection is available under the TMA, UCPA, CA or Design Protection Act if the elements for protection and infringement are met.

Depending on the case, available remedies include an injunction, compensatory damages, restoration of a trade mark owner’s reputation and criminal sanctions. IP-related crimes can be reported to the police or to KIPO's special judicial police, among others.

There are no special procedural provisions for trade mark or copyright proceedings, and there are no jury trials in Korea.

However, Korea has a specialised IP court and an IP High Court, the latter of which handles appeals regarding registered IP rights and appeals of IPTAB decisions. It employs technical examiners and other courts employ technical research officers who provide expert insights to assist judges in complex technical matters. However, their findings are advisory and do not bind the court.

See 3.8 Copyright Registration, 4.1 Trade Mark Registration and 8.2 Legal Claims for Infringement Lawsuits and Their Standards.

Korea lacks a discovery procedure but employs mechanisms like evidence preservation and document production orders. Evidence preservation involves an advance evidentiary examination separate from the main proceedings upon a party’s request, and is used when the evidence might be rendered unusable if a standard evidence investigation is waited for. Evidence with a short retention period at risk of destruction can be secured and stored by the court.

In civil litigation, parties can request the court to make an order to produce documents held by the opposing party or a third party. Non-compliance with this order, without a valid reason, may lead the court to accept the requesting party's assertions about the document contents as being true. Moreover, in trade mark infringement lawsuits, the plaintiff can seek a document production order to compute damages caused by the defendant's infringement.

Parties can apply for expert appraisals or submit survey findings as necessary, and these are considered forms of evidence in court. In trade mark cases, consumer survey findings demonstrating a trade mark’s distinctiveness can be submitted in proceedings to revoke a refusal of registration. In copyright cases, expert appraisal can help determine substantial similarity. Judges determine their evidentiary value at their discretion following the principle of the free evaluation of evidence.

Infringement litigation costs can vary significantly based on various factors, including the case complexity, the volume and scale of the infringements, etc.

For a description of misconduct subject to criminal sanctions, see 8.2 Legal Claims for Infringement Lawsuits and Their Standards.

Intentional infringement of a registered trade mark may be punished with imprisonment of no more than seven years or a criminal fine not exceeding KRW100 million. If subject to such criminal sanction, any trade marks, packaging or goods that were provided for or resulted from the infringement are confiscated, as are any manufacturing tools or materials primarily supplied for the production of these infringing items.

Infringement of a famous unregistered trade mark may be punished with imprisonment of no more than three years or a criminal fine not exceeding KRW30 million. KIPO or the municipal government can investigate potential infringement and, upon finding a violation, can issue corrective measures to cease the violation, remove or modify marks or prevent recurrence within 30 days. If the violator fails to comply, the violation details and the imposed corrective measures will be publicly announced.

The infringement of economic, moral or neighbouring rights in copyrighted works as well as damaging the reputation of the author or performer through such infringement can incur criminal liability. Penalties for various criminal activities range from a maximum fine of no more than KRW5 million to up to five years' imprisonment. Prosecution typically requires a complaint, but punishment can proceed without one in cases of profit-driven or habitual crimes. However, exceptions exist – eg, using pirated programs for business, where punishment cannot be imposed against the infringed party’s explicit wishes.

Defendants typically counter plaintiffs’ trade mark infringement claims with the following defence arguments:

• statute of limitations for a damages claim;
• the contested mark or goods are not identical/similar;
• the defendant’s use does not constitute registered trade mark use;
• the plaintiff’s trade mark registration is clearly invalid or the plaintiff has not used the registered trade mark for an extended period unlike the defendant, thereby constituting an abuse of rights;
• the defendant’s trade mark use constitutes use of its own name consistent with commercial practices or use of a customary mark, and thus is outside the scope of the trade mark right; or
• the defendant is entitled to continue using the mark as they have done so without any unlawful intent before the plaintiff’s trade mark registration or before the plaintiff’s trade mark became famous.

If these defences are accepted, the plaintiff’s claim will be entirely dismissed. However, if the last defence concerning the continued use is accepted, the trade mark owner can request the defendant to make indications necessary to prevent confusion or misunderstanding.

Fair Use

There are certain restrictions on economic rights in that copyrighted works can be used without the copyright owner’s consent for educational purposes, news reports, the citation of published works, or incidental reproduction during filming.

In addition, a copyrighted work can be used without the copyright owner’s consent if the use does not conflict with the normal exploitation of the work and does not unreasonably prejudice the author’s legitimate interests. Factors for determining fair use include:

• the purpose or character of the use;
• the nature of the work;
• the amount and substantiality of the portion used in relation to the work as a whole; and
• the effect of the use upon the current and potential market for the work or the value of the work.

Satire and Parody

Published works can be quoted for certain purposes, such as criticism, education and research within a proper range in compliance with fair practices. Satire or parody may fall within the scope of criticism, and would more likely qualify for the exception if:

• it is for non-commercial purposes;
• the original work is well known and thus it is easy to note that it is a satire or parody of the original work;
• only a small portion of the original work is used in the satire or parody; and
• there is less concern that the satire or parody may replace the original work.

Contrary to a direct satire/parody that criticises the original itself, a vehicle satire/parody that uses the original to criticise other subjects may not qualify for the exception.

Freedom of Speech/Right of Information

The following are exceptions to copyright infringement in relation to freedom of speech and the right of information:

• political speeches and public statements in courts, parliaments or local councils may be used in any manner;
• works that are incidentally seen or heard in the course of news reporting may be reproduced, distributed, performed or communicated to the public within a reasonable scope;
• articles and editorials published in newspapers or other news media may be reproduced, distributed or broadcast by other media organisations, unless such use is explicitly prohibited; and
• published works may be cited for certain purposes – including criticism, education or research – within a reasonable range and consistent with fair practice.

There is an exception to copyright for private or family use of published works for non-commercial purposes. This exception does not permit reproductions using photocopies or publicly installed cameras. Essentially, the exception is limited to using copyrighted works in a private and closed domain only.

Software has a narrower scope of permitted use. Software reproduction is permissible for personal, non-commercial use, limited to settings like a home, provided that it does not unreasonably harm the copyright owner’s interests.

When copyright infringement occurs online, the direct infringement is attributable to the end user, so even if the online service was used to facilitate the infringement, the online service providers (OSP) are exempt from liability under certain conditions. The requirements for immunity vary depending on the extent of the service, such as whether the OSP is merely connecting, temporarily storing or archiving, or providing a search service.

For example, storing/search service providers can qualify for the exception if they:

• did not initiate the transmission of the copyrighted work;
• did not select the copyrighted work or the recipients thereof;
• have adopted and reasonably implemented a policy to terminate accounts of repeat copyright infringers;
• did not interfere with technical protection measures adopted by the copyright owner to identify and protect the work;
• did not benefit from infringing activities when they have the authority and ability to control such activities;
• immediately stopped reproducing or transmitting the work upon becoming aware of the infringement; and
• designated a person to handle requests to cease the reproduction or transmission of the work.

There are no provisions similar to those limiting the liability of OSPs for trade mark infringement.

Trade Mark

The concept of the exhaustion of registered trade mark rights is established in case law with the following requirements:

• a legitimate registered trade mark owner should transfer goods bearing the registered trade mark in Korea; and
• the transferee should not process or repair the goods in a way that impairs the identity of the original goods.

Copyright

The CA recognises the exhaustion doctrine, stating that the copyright owner’s right to distribute the work is exhausted once the originals or copies of the work are first provided for sale with the owner’s authorisation. However, there is no established precedent for the exhaustion of digital reproductions.

There are exceptions for libraries and non-profit archives in that they may reproduce materials, like books, for investigatory or research purposes in response to user requests, or provide copies of out-of-print books to other libraries or non-profit archives for preservation. However, digital reproduction in these cases is not permitted. In addition, libraries may reproduce books and other materials for their own preservation needs.

A trade mark owner can request actions beyond prohibiting the infringement, including the destruction of infringing goods and the removal of facilities used for infringement. Similarly, a copyright owner can request the destruction of infringing goods and other actions when filing a claim to halt or prevent infringement. The court typically issues orders to stop infringement and destroy infringing goods held by the infringer if infringement is proven and the defences and exceptions are not upheld.

For registered trade mark/copyright infringement, the rights holder can apply for a preliminary injunction, which may be granted if it is necessary to prevent significant harm that is likely to occur while waiting for the final judgment or to avert imminent danger. The court determines whether a preliminary injunction is necessary, weighing factors such as the interests and potential losses of both parties and the likely outcome of a lawsuit. When granting a preliminary injunction, the court can require a security provision in the form of a cash deposit or deposit guarantee insurance certificate, the amount of which depends on the subject of the preliminary injunction.

Generally, damages from a tort are the difference between the injured party’s total assets absent the infringement and such assets after the infringement. However, proving this difference is challenging in cases of trade mark or copyright infringement. Consequently, the TMA, UCPA and CA all include provisions for estimating such damages.

The damages amount can be presumed as follows:

• the volume of the infringer’s goods transferred or sold x the claimant’s profit per unit of its own goods;
• the infringer’s profits gained by the infringement; or
• a reasonable royalty (ie, the objective amount that would have been paid had the infringer entered into a licensing agreement with the claimant).

If the court finds that proving the exact amount of damages from the infringement is challenging due to the nature of the case, it can determine a reasonable amount based on the entirety of the proceedings and the outcome of evidence examination.

The TMA and UCPA provide for punitive or treble damages.

The TMA and CA provide for statutory damages, setting a limit for compensation claims. The TMA caps statutory damages at KRW100 million (up to KRW300 million for intentional infringement), whereas the CA caps it at KRW10 million per work (up to KRW50 million for intentional infringement for profit). However, statutory damages are unavailable for unregistered trade marks.

Typically, the losing party is responsible for paying litigation costs, including attorneys' fees. However, since attorneys' fees can vary, the court regulates the amount to be included in litigation costs through its rules. These rules set the attorneys’ fees as a percentage of the claim amount, which varies depending on the size of the claim.

An application for provisional attachment or seizure is carried out solely by the creditor, without notifying the debtor. It can be initiated concurrently with, immediately before or after filing a lawsuit. The aim is to prevent the debtor from concealing assets, and the debtor remains uninformed until a decision is made. This procedure, however, is not exclusive to trade mark or copyright owners, but is a generally recognised enforcement procedure.

Customs Seizures of Counterfeits

Korea Customs Service offers a procedure to detain goods infringing on IP rights. To protect these rights at the customs level, rights holders must file a “rights protection report” with the Customs Service. Following this, they can submit a request for customs detention and provide security.

Parallel Imports

Parallel imports are permitted in the following cases:

• the imported good must be authentic, with the trade mark legally affixed by the overseas trade mark owner;
• the identity of the source must be satisfied, such as the domestic and foreign trade mark owners are the same person; and
• there should be no significant quality difference between the imported and the domestic trade mark owner’s goods.

In addition, parallel importers must not falsely represent themselves as official dealers of the good.

However, for copyright, there is no explicit regulation on international exhaustion, leaving the legality of parallel imports unclear.

Parties can settle cases at any time during litigation.

The court can facilitate settlement between parties via a “settlement recommendation decision” or a “mediation referral decision”. In a settlement recommendation decision, the court proactively proposes a fair resolution within the scope of a claim. The parties are not obliged to accept this recommendation, but the decision holds the same effect as a final judgment if they do not object within two weeks of receiving it.

Through a mediation referral decision, the court assists parties to voluntarily resolve their dispute through compromise. While the parties are not obliged to reach an agreement, the court may issue a decision in lieu of mediation if they fail to agree. Parties have the option to object to this decision within two weeks. If an agreement is reached, or if there is no objection to the decision in lieu of mediation, the mediation is considered successful and carries the same effect as a final judgment.

See 8.10 Small Claims and 12.1 Options for Settlement for dispute mediation systems.

Trade mark infringement lawsuits and cancellation/invalidation trials may occur concurrently. The court handling the infringement lawsuit usually waits for the outcome of the cancellation/invalidation trial. While it is not bound by IPTAB’s decision, the court may rule that there is no infringement if an invalidation/cancellation decision is made.

Regarding copyright infringement, civil infringement lawsuits may be conducted separately from investigations or criminal proceedings. However, the result of an investigation does not influence the civil trial judgment. Civil trials are not bound by the fact-finding of criminal trials, but the facts established in the finding of guilt in a final criminal judgment on the same set of facts constitute strong evidence for the civil trial.

The appellate court for a registered trade mark infringement lawsuit is the IP High Court, while for unregistered trade mark or copyright infringement lawsuits the appeal is heard by high courts with jurisdiction over the first instance court or the collegiate panel of the respective district court.

The deadline for filing an appeal is within two weeks from the date the written decision has been delivered. The losing party in the first instance court must submit an appeal to such court within that period, stating the identity of the parties and legal counsel (if any), the court’s verdict and the grounds for the appeal. Subsequently, the respective case records are submitted to the responsible appellate court.

The deadline to appeal a trial court decision is within two weeks from the date the written decision is delivered. However, an appeal can be made before the decision is delivered.

The average processing time for cases at the IP High Court is about a year but has been continuously increasing.

There are no special provisions concerning the appellate procedures for trade mark or copyright proceedings.

The second instance court adjudicates issues of both fact and law, and parties can submit new evidence and assert new facts at the court. The third instance court (ie, the Supreme Court) adjudicates only legal issues.

Trade marks that include the name, title or likeness of a famous person cannot be registered without the consent of that person. Meanwhile, “unfair use, without permission, of the name, likeness, voice, signature, or any other mark identifying another, which is widely recognised and has economic value in the country, in a manner that infringes the economic interests of others and is contrary to fair trade practices and sound competitive order” is an act of unfair competition. Such acts can be subject to claims for injunction, compensatory damages and the restoration of reputation, but not criminal sanctions.

The UCPA governs unfair competition involving trade marks.

The Seoul Administrative Court recently ruled that AI cannot be recognised as an inventor in a patent application. Although there is not yet any precedent, there could be liability issues if AI outputs are identical/similar to another’s registered trade mark. Currently, it appears that the person using such output as a source indicator may bear liability as the infringer.

There are no explicit regulations or court precedents on whether works by AI or animals are copyrightable, but KCC has opined that AI output is not copyrightable.

The act of “displaying” a trade mark on goods is included as a registered trade mark use, where “displaying” includes electronically displaying. Therefore, posting another’s registered trade mark displayed on one’s own goods online may constitute an infringement. The same legal principle applies to trade mark and copyright infringement as to other types of infringement.

online See 10.4 Intermediaries regarding the liability of OSPs.

Trade mark registration is highly recommended for protection. If a trade mark is used without registration, unless the business is successful and the trade mark, products and business operator thereby become widely recognised, it cannot continue to be used even if it was used before another's registered trade mark. Furthermore, if another imitates the trade mark, protection cannot be provided.

Copyright protection does not require registration. However, if registration is completed, the author and date of creation are presumed. Therefore, registering immediately after creating a work can be helpful in asserting and proving rights in the event of copyright disputes in the future.