Best Strategies to Acquire and Utilize Knowledge Capital

Best Strategies to Acquire and Utilize Knowledge Capital in Korea - under newly developed IP law system February 11~12, 2012 Presented by Ho-Hyun Nahm 8 th Annual International Seminar of mark. Patent. org in India

Outline I. New IP Legal Environments in Korea and Int’l Arena II. Best Strategies to Acquire Knowledge Capital III. Best Strategies to Utilize Knowledge Capital IV. Don’t Fall Asleep on Your Knowledge Capital 8 th Annual International Seminar of mark. Patent. org in India 2

I. New IP Legal Environments in Korea and Int’l Arena 1. Korea Rising 8 th Annual International Seminar of mark. Patent. org in India 3

I. New IP Legal Environments in Korea and Int’l Arena 1. Korea Rising ▶ World’s fourth-largest filer of IP Right 8 th Annual International Seminar of mark. Patent. org in India 4

I. New IP Legal Environments in Korea and Int’l Arena 1. Korea Rising - CPA Global magazine / Jan∙Feb/2012 ▶ With its relatively small population and limited resources ▶ The law and enforcement improved a great deal 8 th Annual International Seminar of mark. Patent. org in India 5

I. New IP Legal Environments in Korea and Int’l Arena 2. Enactment of Intellectual Property Framework Act, a constitutional law for IP ▶ The "Framework Act on Intellectual Property" (the "IP Framework Act") ▶ Enacted on May 19, 2011 and took effect on July 20, 2011 ▶ Basis for setting the laws, systems and policies related to intellectual property rights ("IPR") in Korea ▶ To promote the creation of superior intellectual properties, to protect IPR effectively and stably, to promote the application of IPR ▶ Implement a National IP Basic Plan (the "Basic Plan") every five years 6 8 th Annual International Seminar of mark. Patent. org in India

I. New IP Legal Environments in Korea and Int’l Arena 3. Rising Sun, India ▶ Rampant Indian Growth ▶ A population size second only to that of China (1. 15 billion) ▶ Impressive growth rates (annual average of 8. 9%) ▶ Comprehensive Economic Partnership Agreement ("CEPA") between Korea and India as of January 1, 2010 ▶ The symbolic importance of being the first free trade agreement ("FTA") ▶ Korea will purchase more Indian-manufactured goods ▶ Those companies that have production facilities in India or import raw materials from India will be able take advantage of preferential tariffs under the CEPA 8 th Annual International Seminar of mark. Patent. org in India 7

I. New IP Legal Environments in Korea and Int’l Arena 4. Korea – EU FTA ▶ The Korea-EU Free Trade Agreement ("FTA") ratified on May 4, 2011 ▶ Most of the Amendment to IP related laws became effective as of July 1, 2011 8 th Annual International Seminar of mark. Patent. org in India 8

I. New IP Legal Environments in Korea and Int’l Arena 5. Korea – USA FTA ▶ The US Congress passed the bill on executing FTA in October 2011 ▶ The Korean National Assembly ratified the motion regarding FTA in November 2011 ▶ Expected to be effective in March 2012 ▶ Amended IP related laws proclaimed on December 2, 2011 ▶ To be effective as soon as FTA takes effect 6. India will take advantages and benefits of change of IP law ▶ From both Korea-EU FTA and Korea-USA FTA 8 th Annual International Seminar of mark. Patent. org in India 9

II. Best Strategies to Acquire Knowledge Capital 1. Prevention is Best Cure ▶ Build and expand your territory by effectively securing and enforcing IPR ▶ Lace up your shoes tightly before we embark on this trip ▶ One Can With a Fortified Fence of IPR ▶ Register your IP and make it IPR ▶ Expand your territory ▶ Don’t waive your hand after the bus departs 8 th Annual International Seminar of mark. Patent. org in India 10

II. Best Strategies to Acquire Knowledge Capital 2. Trademarks ▶ First-to-Register Rule ▶ Permanent Right - Renewable every ten(10) years ▶ Conflicts with Priors Users in Good Faith ▼ Rights-to-Use vs. Right-to-Exclude - Need to resolve the conflict between the registered mark and the prior used mark in good faith - Korea has adopted the right of prior user under limited conditions after July 1, 2007 - Nature of Right: Right-to-use, not right-to-exclude 8 th Annual International Seminar of mark. Patent. org in India 11

II. Best Strategies to Acquire Knowledge Capital 2. Trademarks ▶ SAIMDANG Furniture case [Preliminary injunction order against trademark use, 98 Da 49142, 12 May 2000, Korean Supreme Court] How should a case be dealt with where a person has registered a mark pursuant to the Trademark Act which is another person’s well-known mark in Korea for unfair competition purposes? On this issue, there is a Court ruling that it is priority conferred on registered marks does not apply where the registration is obtained for the unfair competition purposes since the act of registering such a mark in itself constitutes an act of unfair competition. 8 th Annual International Seminar of mark. Patent. org in India 12

II. Best Strategies to Acquire Knowledge Capital 2. Trademarks ▶ Utilize Expedited Examination Services - Effective as of January 1, 2009 a. When it is obvious that an applicant is using or planning to use his or her trademark on all of the designated goods or services; b. When the third party(s) who is not applicant is acknowledged as using trademark filed for registration without any justifiable reason 8 th Annual International Seminar of mark. Patent. org in India 13

II. Best Strategies to Acquire Knowledge Capital 2. Trademarks ▶ Alternative solution for your other IP rights ▼ Overcome limitation of protection period ▼ Overcome limitation of acquiring right ~ (e. g. first-to-file rule vs. novelty requirement) ~ scope of protection( title of copyright work) ▶ Scope of goods and services - Need to cross class check of prior marks Goods in Class 25 (clothes, shoes) - relevant to as many as 14 classes ▼ Simply just for ‘sportswear’ - relevant to as many as 9 classes ▼ (Even without considering classes of relevant services) 8 th Annual International Seminar of mark. Patent. org in India 14

II. Best Strategies to Acquire Knowledge Capital 2. Trademarks ▶ Services vs. Goods e. g. , cars vs. car sales agency services Goods Service 8 th Annual International Seminar of mark. Patent. org in India 15

II. Best Strategies to Acquire Knowledge Capital 2. Trademarks Prior Cases 1 Goods vs. Services Trademark Electric and Electronic goods Service mark Brokerage Business 8 th Annual International Seminar of mark. Patent. org in India Specification of Services Use of another person’s trademark as a Service mark Brokerage business for consignment production or sales of electric and electronic goods 16

II. Best Strategies to Acquire Knowledge Capital 2. Trademarks Prior Cases 2 Goods vs. Services Bread or Ham & Bacon Woolen & Silk Fabrics Restaurant Business Dying Business 8 th Annual International Seminar of mark. Patent. org in India Specification of Services Restaurant and snack bar business Business of Dying and Processing of Fabrics 17

II. Best Strategies to Acquire Knowledge Capital 2. Trademarks ▶ Title of Animation, Books, etc. Lesson from the case of Tom & Jerry [Supreme Court 98 HU 843, 30 May 2000] ▼ Name of a well-known animation character ▼ Not automatically recognized as a well-known trademark ▼ Reasons : No Trademark Function ▼ Copyright expired Importance of obtaining a trademark registration 8 th Annual International Seminar of mark. Patent. org in India 18

II. Best Strategies to Acquire Knowledge Capital 2. Trademarks ▶ Design Element ▼ Use as a trademark vs. Use as a design ▼ Recognition as a use of trademark of deign nature 8 th Annual International Seminar of mark. Patent. org in India 19

II. Best Strategies to Acquire Knowledge Capital 2. Trademarks ▶ Constitution of trademark infringement act The case ‘Adidas’ in relation to slippers [Supreme Court 98 Do 2743, December 26, 2000] ▼ First Supreme Court case Recognition as a use of trademark of design nature ▼ Use of Shape or Appearance of goods (Three white vinyl stripes) ▼ Reasoning : Function of Indication of Sources 8 th Annual International Seminar of mark. Patent. org in India 20

II. Best Strategies to Acquire Knowledge Capital 2. Trademarks ▶ Constitution of trademark infringement act The case ‘LV Monogram’ in relation to bags [Seoul Appellate Court 2003 NA 57101, May 12, 2004 : affirmed by Supreme Court on September 23, 2004] Design in Use of Infringer Repeated Arrangement of below marks 8 th Annual International Seminar of mark. Patent. org in India Registered Marks 21

II. Best Strategies to Acquire Knowledge Capital 2. Trademarks The case ‘LV Monogram’ in relation to bags [Seoul Appellate Court 2003 NA 57101, May 12, 2004 : affirmed by Supreme Court on September 23, 2004] ▼ Issues : Novelty requirement ü Not in this case is trademark protection eligible? ▼ Lessons : Highlights Registration of trademark for a design nature element 8 th Annual International Seminar of mark. Patent. org in India 22

II. Best Strategies to Acquire Knowledge Capital 2. Trademarks ▶ Individual person’s name ▼ Arnold Palmer, Jimmy Choo, Hardy Amies, Pierre Cardin ▶ Company name ▼ No common name in respect of relevant goods · services ▶ Product name ▼ No descriptive name in respect of relevant goods · services ▶ Product model name ▶ Service name 8 th Annual International Seminar of mark. Patent. org in India 23

II. Best Strategies to Acquire Knowledge Capital 2. Trademarks ▶ Non-Traditional Marks Available for Protection Three Dimensional Marks ▼ Require : 1. To be distinctive : A mark comprised only of a three-dimensional shape indispensable to secure the function of the goods concerned is not registrable 2. Recognition of secondary meaning 8 th Annual International Seminar of mark. Patent. org in India 24

II. Best Strategies to Acquire Knowledge Capital 2. Trademarks ▶ 2 D-device without logo Registered as a 2 D-device mark as of November 1954 Reg. No. 40 -00543 ▶ 3 D-shape without logo Registered as a 3 D-device mark as of October 30, 2009 Reg. No. 40 -804966 8 th Annual International Seminar of mark. Patent. org in India 25

II. Best Strategies to Acquire Knowledge Capital 2. Trademarks ▶ Recent cases Shape and packages of Ferrero Rocher’s chocolate October 24, 2009 Korean Intellectual Property Tribunal (KIPT) Case No. 2007 Won 11001 No. 2007 Won 11002 recognized the distinctiveness Reg. No. 40 -774571, 40 -774572 8 th Annual International Seminar of mark. Patent. org in India 26

II. Best Strategies to Acquire Knowledge Capital 2. Trademarks ▶ 3 D-shape Accepted examples Rejected examples Case & Reg. No. (App. No. ) Known as a Viagra pill 40 -608773 40 -2002 -52922 Reg. Date (App. Date) February 17, 2005 November 16, 2002 Class & Goods 5: Pharmaceutical products Trademark 8 th Annual International Seminar of mark. Patent. org in India 27

II. Best Strategies to Acquire Knowledge Capital 2. Trademarks ▶ 3 D-shape Accepted examples Rejected examples Trademark and Case & Reg. No. (App. No. ) Combined with device 40 -54820 40 -562164 Amlodipine tablet of Hanmi pharmaceutial 40 -2004 -26993 Reg. Date (App. Date) May 16, 2003 October 8, 2003 June 14, 2004 Class & Goods 5: Pharmaceutical products 8 th Annual International Seminar of mark. Patent. org in India 28

II. Best Strategies to Acquire Knowledge Capital 2. Trademarks ▶ Colour-3 D shape combination Accepted examples Trademark Rejected example and Reg. No. (App. No. ) 45 -23497 40 -764248 40 -748840 (Intl’ 832003) Reg. Date (App. Date) June 9, 2008 October 8, 2008 June 3, 2008 (May 6, 2004) 9: batteries Class & Goods 9: Computer software for downloading and installing other software on a personal computer, … 8 th Annual International Seminar of mark. Patent. org in India 29

II. Best Strategies to Acquire Knowledge Capital 2. Trademarks ▶ Accepted examples for various products - 3 D shape and/or colour Accepted examples Trademark and Case & Reg. No. Guylian chocolate 40 -590519 40 -590518 Hiyoko 40 -642827 Doughnut plant 45 -023575 Reg. Date August 18, 2004 December 12, 2005 June 17, 2008 Class & Goods 30; chocolates 30; Japanese pastries 30; doughnut 8 th Annual International Seminar of mark. Patent. org in India 30

II. Best Strategies to Acquire Knowledge Capital 2. Trademarks ▶ Accepted examples for various products - 3 D shape and/or Accepted examples colour Trademark Case & Reg. No. Louis Vuitton 40 -540154 Gucci IR 869616 World Cup 40 -488949 GM 40 -618705 Reg. Date January 24, 2003 April 5, 2007 March 5, 2001 May 20, 2005 18; handbags 9; eyeglasses 18; handbags, 25; shoes 14; commemorative cups made of metal 12; cars Class & Goods 8 th Annual International Seminar of mark. Patent. org in India 31

II. Best Strategies to Acquire Knowledge Capital 2. Trademarks ▶ Accepted examples for various products - 3 D shape and/or colour Accepted examples Trademark Case & Reg. No. Uniform 41 -188813 Delivery vehicle 41 -073314 Reg. Date August 12, 2009 February 1, 2002 Class & Goods 39; Air transport 39; delivery of personal property by vehicle 8 th Annual International Seminar of mark. Patent. org in India 32

II. Best Strategies to Acquire Knowledge Capital 2. Trademarks ▶ Non-Traditional Marks Available for Protection ü Marks in Movement 8 th Annual International Seminar of mark. Patent. org in India 33

II. Best Strategies to Acquire Knowledge Capital 2. Trademarks ▶ Accepted examples - Moving mark Accepted examples 1) 2) 3) Trademark 4) 5) Reg. No. 41 -186674 Reg. Date June 17, 2009 Class & Goods 42; developing game software, etc. 8 th Annual International Seminar of mark. Patent. org in India 34

II. Best Strategies to Acquire Knowledge Capital 2. Trademarks ▶ Accepted examples 1) 2) 3) Trademark 4) 5) Reg. No. 40 -779284 Reg. Date February 12, 2009 Class & Goods 5; pharmaceutical products 8 th Annual International Seminar of mark. Patent. org in India 35

II. Best Strategies to Acquire Knowledge Capital 2. Trademarks Signboard of moving crab (Kani Doraku Case) - May 27, 1987 - Osaka District Court 1981 wa 9093 - Accepted as an indication protectable under the Unfair Competition Prevention Act 8 th Annual International Seminar of mark. Patent. org in India 36

II. Best Strategies to Acquire Knowledge Capital 2. Trademarks ▶ Non-Traditional Marks Available for Protection ▼ Hologram ▼ Sound Marks, Scent Marks & Certification Marks - Adopted by the ratification of the Korea-US FTA - Ready to be effective in a couple of months 8 th Annual International Seminar of mark. Patent. org in India 37

II. Best Strategies to Acquire Knowledge Capital 2. Trademarks ▶ Non-Traditional Marks Available for Protection ▼ Package ▼ Any other distinctive elements ▼ Similar marks ▼ Korean or Latin version marks 8 th Annual International Seminar of mark. Patent. org in India 38

II. Best Strategies to Acquire Knowledge Capital 3. Designs ▶ Requirements for Protection ▼ Novelty – Make sure Apply first before disclosure ▼ Creativity (inventive step), and ▼ Industrial applicability ▶ Features of Korean Design System : Combination of Substantive Examination and Non-substantive Examination 8 th Annual International Seminar of mark. Patent. org in India 39

II. Best Strategies to Acquire Knowledge Capital 3. Designs ▶ Non-substantive Examination ▼ No Examination for Prior Art but examination for Creativity, Industrial Applicability, and Public Interests ▼ For Fashionable or short-life-cycle articles Expansion Of Items Subject To Non-substantive Examination Design Applications (effective as of April 1, 2011) A 1: Processed foods, B 1: Clothing, B 2: Fashion accessories, B 3: Personal adornment articles B 4: Bags or portable wallets, etc. B 5: Footwear B 9: General parts and accessories for clothing and personal adornment articles C 1: Bedclothes, curtains, etc. C 4: Health and sanitary articles for household purposes C 7: Articles for congratulations and condolence D 1: Indoor small organizing articles F 1: Training supplies, painting and calligraphy supplies F 2: Writing supplies, office supplies F 3: Office paper, printed matter, etc. F 4: Labels, packaging papers, packaging containers, etc. F 5: Advertising articles, indicating articles and goods displaying articles H 5: Electronic calculators, etc. M 1: Textiles, boards, strings, etc. Image designs 8 th Annual International Seminar of mark. Patent. org in India 40

II. Best Strategies to Acquire Knowledge Capital 3. Designs ▶ Secret Design System ▼ Request at any time before the registration up to 3 years ▼ Required to disclosure to exercise the design right ▶ Similar Design System ▼ Good means of expansion and confirmation of the Basic Design ▼ The destiny of a similar design registration is subject to that of the basic registration 8 th Annual International Seminar of mark. Patent. org in India 41

II. Best Strategies to Acquire Knowledge Capital 3. Designs ▶ Subject Matters for Protection ▼ Shape, Structure, Outer appearance ▼ A part of an Article ▼ Typographical Designs ▼ Computer generated graphic designs ▼ Design of a Set of Articles ▼ Design in movement 8 th Annual International Seminar of mark. Patent. org in India 42

II. Best Strategies to Acquire Knowledge Capital 3. Designs : A part of an Article ◆ T-Shirts ◆ Golf Club Head ◆ Telephone Sets ◆ Automobile 8 th Annual International Seminar of mark. Patent. org in India 43

II. Best Strategies to Acquire Knowledge Capital 3. Designs : Typographical Korean English 8 th Annual International Seminar of mark. Patent. org in India Number 44

II. Best Strategies to Acquire Knowledge Capital 3. Designs : GUI ▶ Graphic User Interface ▼ Software GUI for application program - such as Hangul Program, Window Media Player, etc. ▼ Mobile GUI operated - on Mobile phone, PDA and Web Pad, etc. ▼ IT Home appliances operated - on navigator, an electric refrigerator, MP 3 CDP, Digital TV, etc. ▼ GUI screen for Website 8 th Annual International Seminar of mark. Patent. org in India 45

II. Best Strategies to Acquire Knowledge Capital 3. Designs : GUI ◆ Mobile Phones indicated GUI Design 8 th Annual International Seminar of mark. Patent. org in India 46

II. Best Strategies to Acquire Knowledge Capital 3. Designs : GUI ◆ Audio Player indicated GUI design ◆ Electric Refrigerator indicated GUI design 8 th Annual International Seminar of mark. Patent. org in India 47

II. Best Strategies to Acquire Knowledge Capital 3. Designs : GUI ◆ GUI Screen for Website 8 th Annual International Seminar of mark. Patent. org in India 48

II. Best Strategies to Acquire Knowledge Capital 3. Designs ▶ Icon ▼ Application Icon - such as Hangul icon and Internet Explorer icon, etc. 8 th Annual International Seminar of mark. Patent. org in India 49

II. Best Strategies to Acquire Knowledge Capital 3. Designs ▶ Graphic Image ▼ Graphic as Contents ▼ Screensaver on a Computer monitor ▼ Item SET comprised in a character or ‘Avatar’ ▼ Emoticon (Emotion + Icon) ▼ 3 D Animation ▼ Flash design ▶ Variations and Embodiments 8 th Annual International Seminar of mark. Patent. org in India 50

II. Best Strategies to Acquire Knowledge Capital 3. Designs : GUI ◆ Game Image 8 th Annual International Seminar of mark. Patent. org in India 51

II. Best Strategies to Acquire Knowledge Capital 3. Designs : GUI ◆ Avatar 8 th Annual International Seminar of mark. Patent. org in India 52

II. Best Strategies to Acquire Knowledge Capital 3. Designs : GUI ◆ Flash design Perspective Front 8 th Annual International Seminar of mark. Patent. org in India Details of variation 53

II. Best Strategies to Acquire Knowledge Capital 3. Designs : Design in movement ◆ Moving design (cellphone) Accepted examples 1) 2) 3) Design 4) 5) Reg. No. 30 -515935 Reg. Date December 23, 2008 8 th Annual International Seminar of mark. Patent. org in India 54

II. Best Strategies to Acquire Knowledge Capital 3. Designs Lesson from a patent infringement litigation ▼ Highlights the importance of obtaining a design registration ▼ Alternative solution for your other IP rights 8 th Annual International Seminar of mark. Patent. org in India 55

II. Best Strategies to Acquire Knowledge Capital 4. Patents & Utility Models ▶ Requirements for protection ▼ Novelty : Make sure Apply first before disclosure ▼ Creativity (inventive step), and ▼ Industrial applicability ▶ Subject matters ▼ Invention: Creation of technical idea utilizing law of nature Product, Process, Apparatus ▼ Business Method - Internet or computer related business method - Registration rate : 35% 8 th Annual International Seminar of mark. Patent. org in India 56

II. Best Strategies to Acquire Knowledge Capital 4. Patents & Utility Models ▶ Patentable Subject Matter ▼ Biotechnology field: Basically, not limited - Gene, DNA fragment, vector, protein, enzyme, cell, microorganism, plant, animal, etc. ▼ Exception: not susceptible of industrial application (1) Method of operation to human (2) Method of medical treatment practiced on human body (3) Method of diagnosing a certain disease 8 th Annual International Seminar of mark. Patent. org in India 57

II. Best Strategies to Acquire Knowledge Capital 4. Patents & Utility Models ▶ Good news ▼ Inventions defining a method used in a diagnosis eligible ▼ No direct clinical judgment involved ※ Clinical judgment: ‘mental activity which finds disease or health condition of a subject based on medical knowledge and experiences’ All pending applications in which a first action on the merits had not been issued by January 1, 2009 8 th Annual International Seminar of mark. Patent. org in India 58

II. Best Strategies to Acquire Knowledge Capital 4. Patents & Utility Models - New Pharmacological Effect of Known Compound ▶ Swiss type claim (Use of X in the treatment of disease Y) - Not allowable in Korea ▼ EPO : Allowable ▼ USA : Allowable ▼ Korea : Should be amended to be ‘a pharmaceutical composition comprising compound X’ or ‘a method for~ using X’ Ex. A pharmaceutical composition for treating cancer comprising compound X as an active ingredient 8 th Annual International Seminar of mark. Patent. org in India 59

II. Best Strategies to Acquire Knowledge Capital 4. Patents & Utility Models - New Pharmacological Effect of Known Compound ▶ Statutory Categories ▼ Product example 1: A compound X~ example 2: A pharmaceutical composition comprising X~ ▼ Process example 3: A preparation method of a pharmaceutical composition comprising compound X or the use of compound X ~ 8 th Annual International Seminar of mark. Patent. org in India 60

II. Best Strategies to Acquire Knowledge Capital 4. Patents & Utility Models ▶ Improvement of your own invention ▶ Improvement of other person’s invention Cross-license 8 th Annual International Seminar of mark. Patent. org in India 61

II. Best Strategies to Acquire Knowledge Capital 4. Patents & Utility Models - Court Precedents relating to Patent Korean Supreme Court used a TSM Test to Its Analysis in terms of Combination of Prior Art References [Supreme Court Case 2010 Hu 2698, decided on February 10, 2011] ▶ The Supreme Court reversed the Patent Court’s combination of prior art references as improper hindsight bias ▶ The Supreme Court used a TSM (Teaching, Suggestion, and Motivation) for the first time ▶ The prior art references lacked any suggestion or motivation to support the combination 8 th Annual International Seminar of mark. Patent. org in India 62

II. Best Strategies to Acquire Knowledge Capital 5. Copyright ▶ Established upon creation of copyright work ▶ Duration of copyright: extended from 50 years to 70 years ▶ Registration is not mandatory but recommendable ▼ For easier establishing copyright in infringement litigation ▼ To enjoy an award by statutory damages: maximum 50 million Korean Won (approximately US$45, 000. 00) per a copyrighted work ▼ The infringed can select to seek actual damages or statutory damages 8 th Annual International Seminar of mark. Patent. org in India 63

II. Best Strategies to Acquire Knowledge Capital 5. Copyright Law and Practice ▶ Setting Up an Administrative Guideline for a Copyright Authentication System Guaranteed by the Government ▶ On November 8, 2010 ▶ To protect the rights of the copyright holders and to promote safe utilization and transaction of copyrighted works ▶ The copyright holder will obtain a public certificate from the authentication authorities and shall attach the certificate at the time of transaction of the copyrighted works 8 th Annual International Seminar of mark. Patent. org in India 64

III. Best Strategies to Utilize Knowledge Capital 1. Watch out Boarders - Record Your IP Rights at Customs Authorities Inform Im/Exporter of Possible Infringement of IPR (2) (1) Request Trademarks Registration Trademarks Holder Customs Decision of Suspension (3) Request of Suspension of Release 8 th Annual International Seminar of mark. Patent. org in India 65 Appeal To Court

III. Best Strategies to Utilize Knowledge Capital 1. Watch out Boarders - Record Your IP Rights at customs Authorities Scope of IPR protected by Customs ▶ Previously focused on ‘Trademarks and Copyright’ of Im/Ex Goods ▶ Now Expanded to “Geographical Indications” (GI) and Seed Variety Registration as of July 1, 2011 ▶ Will be expanded to “Patent and Design” as of July 1, 2013 8 th Annual International Seminar of mark. Patent. org in India 66

III. Best Strategies to Utilize Knowledge Capital 1. Watch out Boarders - Record Your IP Rights at customs Authorities Highly Recommended to Register IPR with Customs by Right Holders ▶ Subject rights : Trademark, Copyright, GI, Seed Variety Registration ▶ Require : To record the trademark right at the Customs Office ※ Tips for recording the trademark right at the Customs Office - Application for recording the trademark right - A copy of trademark register - Providing an information on how to distinguish genuine goods and counterfeit - Providing suspected importer/exporter 8 th Annual International Seminar of mark. Patent. org in India 67

III. Best Strategies to Utilize Knowledge Capital 1. Watch out Boarders - Record Your IP Rights at customs Authorities ▶ Implementing measures - Request for suspension (of export/import of infringing goods) - Customs Office, can act, ex officio 8 th Annual International Seminar of mark. Patent. org in India 68

III. Best Strategies to Utilize Knowledge Capital 1. Watch out Boarders - Record Your IP Rights at customs Authorities Can We Control Goods in Transit ? ▶ The detainment or the suspension of the goods in transit infringing on IPR Available The types of transit as provided in the Customs Act i) Transshipped or combined transshipped goods ii) Unloaded goods onto bonded area iii) Bonded and transported goods iv) Unloaded goods temporarily or to be transshipped to another ship 8 th Annual International Seminar of mark. Patent. org in India 69

III. Best Strategies to Utilize Knowledge Capital 2. Watch out Cyberspace ▶ Secure your domain names first ▶ g. TLD, cc. TLD such as. kr, . 한국, Korean language domain names ▶ Recover your domain names ▶ UDRP Oriented Korean Internet Address Resources Act ▶ Keep monitoring cyberspace 8 th Annual International Seminar of mark. Patent. org in India 70

III. Best Strategies to Utilize Knowledge Capital 2. Watch out Cyberspace - Counterfeiting on Internet Two major types of Internet Trading ▶ Internet Open Market Place Open Market Operator Seller 8 th Annual International Seminar of mark. Patent. org in India Buyer 71

III. Best Strategies to Utilize Knowledge Capital 2. Watch out Cyberspace - Counterfeiting on Internet ‘Adidas’ Case [Seoul High Court Decision 2009 Ra 1941, May 10, 2010 pending before the Supreme Court] 1) Fact ▶ Trademark right holder (owner and its exclusive licensee) in the “Adidas” mark sought an injunctive action against Open Market Operator Gmarket by claiming (a) Gmarket was an accessory to trademark infringement by sellers in the mall who allegedly offered counterfeit “Adidas”-branded goods (b) Gmarket to disclose its information on the vendors of the offending goods, including their identities and sales records 8 th Annual International Seminar of mark. Patent. org in India 72

III. Best Strategies to Utilize Knowledge Capital 2. Watch out Cyberspace - Counterfeiting on Internet ▶ Gmarket had procedures in place to monitor for infringing products + Gmarket suspended the particular sellers in question once the plaintiffs complained of them ▶ Nevertheless Plaintiffs sought an injunctive relief on Gmarket to find any similar sellers in general ▶ Plaintiffs relied on a statute, the Law on Promotion of Use of Telecommunications Network and Protection of Information (LPUTNPI) requiring ▶ Telecom service providers to try to prevent circulation of information that infringes privacy, damages reputation or otherwise infringes “rights of other persons” 8 th Annual International Seminar of mark. Patent. org in India 73

III. Best Strategies to Utilize Knowledge Capital 2. Watch out Cyberspace - Counterfeiting on Internet ‘Adidas’ Case [Seoul High Court Decision 2009 Ra 1941, May 10, 2010 pending before the Supreme Court] 2) Judgment of court – Finding No joint liabilities ▶ Rights covered by the statute do not include trademark rights ▶ Gmarket’s duty under the statute was then to take concrete preventative steps on a case-by-case basis ▶ Gmarket was in fact diligent in instituting safeguards against infringement ▶ Hard for an operator to tell a listed product being genuine or counterfeited ▶ Any attempt at scrutiny of the goods offered on the mall, item by item, was virtualy impossible 8 th Annual International Seminar of mark. Patent. org in India 74

III. Best Strategies to Utilize Knowledge Capital 2. Watch out Cyberspace - Counterfeiting on Internet 2) Judgment of court – Finding No joint liabilities ▶ So far as technically and commercially feasible, obliged to take steps, to prevent further sales of the goods in the mall ▶ Case even absent a specific warning from the trademark right holders ▶ Gmarket’s policing and monitoring systems appear Gmarket complied faithfully with the duty 3) Judgment of court – Finding No obligation To Disclose Info on vendors ▶ Gmarket also not obligated to disclose seller information to plaintiff trademark right holders ▶ Confidentiality rules under LPUTNPI and the Law on Use and Protection of Credit Information 8 th Annual International Seminar of mark. Patent. org in India 75

III. Best Strategies to Utilize Knowledge Capital 2. Watch out Cyberspace - Counterfeiting on Internet To Right Holders ▶ Keep an eye in the Market on/off line and take actions ▶ Request Mall operator to delete/block listing by providing specific information on fakes ▶ Register IPR at Customs Authorities ▶ Register Design Element as a Trademark 8 th Annual International Seminar of mark. Patent. org in India 76

III. Best Strategies to Utilize Knowledge Capital 2. Watch out Cyberspace - Copyright On Internet No Copyright Infringement As To Act Of Providing Deep Link – Supreme Court Decision [Supreme Court 2008 Da 77405; Nov 26, 2009] The Supreme Court clearly ruled that an act of providing a 'deep link' or a 'direct link', among other types of 'Internet links' which makes it easier for users to easily move to another website, does not constitute an infringement of one's reproduction and transmission rights stipulated in the Copyright Act. The Supreme Court reasoned that even if it may be considered as a preparatory act to instruct or request transmission of the copyrighted work, it does not constitute an act of reproduction and transmission as defined under the Copyright Act. 8 th Annual International Seminar of mark. Patent. org in India 77

III. Best Strategies to Utilize Knowledge Capital 2. Watch out Cyberspace - Copyright On Internet Finding No Copyright Liabilities on the part of Online Service Providers [Supreme Court 2009 Da 4343, March 11, 2010] ▶ A portal site, namely Yahoo! Korea (Yahoo), where copyrighted materials were uploaded ▶ The presence of infringing copies on the website did not in itself constitute infringement ▶ No showing of negligence or other fault on the part of the site owner ▶ A service provider may be responsible for taking remedial steps (e. g. , deleting posts or blocking access) ▶ Liable for failing to do so, if the infringing character of the postings was manifest ▶ Liability depends on whether it was “technically and commercially possible to control and restrict” such posts 8 th Annual International Seminar of mark. Patent. org in India 78

III. Best Strategies to Utilize Knowledge Capital 3. Mobilize All Possible Means ▶ Mix of various types of IPR ▶ Combination of various legal remedies ▶ Enjoy Protection Under Unfair Competition Prevention and Trade Secret Protection Act 1) Require To be well-known on relevant goods · services, ▼ As an indication of goods · services, and ▼ In Korea ▼ 8 th Annual International Seminar of mark. Patent. org in India 79

III. Best Strategies to Utilize Knowledge Capital 3. Mobilize All Possible Means 2) Major types of unfair acts ▼ act of causing confusion with another person’s goods · services ▼ act of doing damage to distinctiveness or reputation attached to another person’s sign ▼ cyber-squatting : act of registering, securing, transferring or using others' trademarks or brands as domain names: compensation of loss and credit restoration caused by cyber-squatting 8 th Annual International Seminar of mark. Patent. org in India 80

III. Best Strategies to Utilize Knowledge Capital 3. Mobilize All Possible Means ▼ Prohibition of ‘dead copying’ ü Imitation of another person’s the appearances of another party’s products ü Not applicable where: ▼ After 3 years have lapsed from the day when the appearance of the product ▼ Appearances that are common to the products of the same kind 8 th Annual International Seminar of mark. Patent. org in India 81

III. Best Strategies to Utilize Knowledge Capital 3. Mobilize All Possible Means 3) Subject matters of protection ▼ A person’s name, trademark, ▼ Container or package of goods, business emblem, or ▼ Any other sign widely known in the Republic of Korea 8 th Annual International Seminar of mark. Patent. org in India 82

III. Best Strategies to Utilize Knowledge Capital 3. Mobilize All Possible Means 4) Remedies ▼ Injunctive relief, ▼ Monetary damage, ▼ Restoration of injured business reputation or goodwill, and/or ▼ Criminal remedies (not available for an act of registering, securing, transferring or using others' trademarks or brands as domain names) 8 th Annual International Seminar of mark. Patent. org in India 83

III. Best Strategies to Utilize Knowledge Capital 3. Mobilize All Possible Means ▶ Consider Seeking first Scope Trial ▼ Korean Intellectual Property Tribunal, Patent Court The Decision by A Civil Court In A Trademark Infringement Case Does Not Preclude The Patent Court From Hearing A Scope Confirmation Action [Supreme Court Case No. 2008 Hu 4486, decided on February 24, 2011] 8 th Annual International Seminar of mark. Patent. org in India 84

III. Best Strategies to Utilize Knowledge Capital 3. Mobilize All Possible Means ▶ Utilize All Possible Authorities ▼ Courts ▼ Police, Public Prosecutors’ Office ▼ Customs Authorities ▼ Korean Trade Commission ▼ Industrial Property Protection Division of KIPO launched A Special Judicial Police Squad for TM Protection ▶ Since September 2010 ▶ Lead to stronger crackdowns on infringement ▶ Set up in 15 officers across three major city branches (Seoul, Busan, and Daejeon) ▼ Local Autonomous Authorities 8 th Annual International Seminar of mark. Patent. org in India 85

III. Best Strategies to Utilize Knowledge Capital 3. Mobilize All Possible Means ▶ Injunctive relief ▼ Provisional or permanent injunction: ▼ Usually takes four (4) months for Provisional injunction ▶ Monetary relief ▼ Losses suffered by the owner of IPR ▼ Profits gained by the infringer from the infringement ▼ Royalties: the amount of money that the owner or exclusive licensee would normally be entitled to receive ▼ Court’s discretion: based on an examination of the evidence and on a review of all the arguments 8 th Annual International Seminar of mark. Patent. org in India 86

III. Best Strategies to Utilize Knowledge Capital 3. Mobilize All Possible Means Yes, it is for wilful conduct!! Given no punitive damage relief available ▶ Criminal remedies are available for the infringement of patent, utility model, design, trademark, unfair competition, and copyright ▶ Criminal remedies (in case of Trademark infringement) ▼ liable to imprisonment with labor not exceeding 7 years or to a fine not exceeding 100 million won (EUR 70 thousand) ▼ The legal entity (company) is also liable to a fine of up to 300 million won (EUR 200 thousand) 8 th Annual International Seminar of mark. Patent. org in India 87

III. Best Strategies to Utilize Knowledge Capital 3. Mobilize All Possible Means ▶ In practice : sentenced to imprisonment with labor for a year for a severe infringement case or to a fine of 3 million Korean won (EUR 2 thousand) for a lighter case ▶ In case of the first commitment: normally sentenced to a fine around 3, 000 US Dollars ▶ In case of the second commitment: sentenced to imprisonment with labor for a period of less than one year 8 th Annual International Seminar of mark. Patent. org in India 88

III. Best Strategies to Utilize Knowledge Capital 3. Mobilize All Possible Means ▶ Effective way of enforcing trademark rights : recording on criminal records ▶ Effectiveness of Cease and Desist Letter ▼ Not mandatory ▼ The recipient is no longer able to claim that the infringing actions are either unknowing or negligent by doing so ▼ Advantages : easier to prove wilfulness on the part of the infringer ▼ A higher damage award than in the case of innocent infringement Caution 1 to preserve the evidence of infringement first Caution 2 to send via contents-certified and registered mail 8 th Annual International Seminar of mark. Patent. org in India 89

III. Best Strategies to Utilize Knowledge Capital 3. Mobilize All Possible Means Caution 3 Be prudent to establish and collect, before sending a cease-anddesist letter to a third party, its reasoning/supporting documents for patent validity and infringement (for example, an expert analysis opinion letter from a patent attorney) so as to be prepared for unwanted criminal defamation and business interference activity claims cf. Korean Supreme Court Decision On Criminal Liability Involving A Cease-and-Desist Letter Sent To Clients Of An Accused Patent infringer [Supreme Court Case 2009 DO 4949, decided on October 28, 2010] ▶ This Supreme Court Decision teaches that if a patentee has a legitimate belief that the patent is infringed and valid, the patentee will not likely be found guilty of criminal defamation and interference in business activity 8 th Annual International Seminar of mark. Patent. org in India 90

IV. Don’t Fall Asleep on Your knowledge Capital Recent Precedent in Korea [Supreme Court Decision 2007 DA 22514, 22521 delivered on October 29, 2009] ▶No Use, No Damage Facts: The designated goods of the registered trademark are soaps and detergents. The plaintiff, the registrant of the trademark, has used the registered trademark on cosmetics, which are not identical to the designated goods thereof. However, the plaintiff filed a lawsuit seeking monetary remedy against the accused on account that the latter had used a similar trademark to the registered trademark on cosmetics. 8 th Annual International Seminar of mark. Patent. org in India 91

IV. Don’t Fall Asleep on Your knowledge Capital Recent Precedent in Korea [Supreme Court Decision 2007 DA 22514, 22521 delivered on October 29, 2009] ▶No Use, No Damage Summary of Decision: A profit loss cannot be said to have occurred in the wake of the trademark right infringement since the registrant has used the mark only on some similar goods or items to the designated goods and since no identical goods in the course of trade have been used also to engage in business activities including manufacturing and sales. 8 th Annual International Seminar of mark. Patent. org in India 92

IV. Don’t Fall Asleep on Your knowledge Capital ▶ Working A Patented Invention To Obtain Pharmaceutical Approval Falls Under Research And Experiment Exemption It has been explicitly stipulated that working a patented invention to obtain pharmaceutical approval falls under research and experiment exemption (Article 96 of the Patent Act). 8 th Annual International Seminar of mark. Patent. org in India 93

IV. Don’t Fall Asleep on Your knowledge Capital ▶ Obtain proper registration of trademark on relevant goods and services ▶ Expand the scope of protection in terms of marks and goods and services ▶ Mark ‘Registered Mark’ in local language and/or ‘ ’ – presumption of willfulness and negligence ▶ Avoid false marking : serious consequence ▼ Caution : Avoid marking of ‘registered mark’ on unregistered similar goods and services 8 th Annual International Seminar of mark. Patent. org in India 94

IV. Don’t Fall Asleep on Your knowledge Capital ▶ Record license ▼ Not Mandatory, but Recommendable ▶ Use the mark as registered ▼ to defend non-use cancellation action ▼ to avoid cancellation due to the alteration of the mark ▶ Update registration of goods and services ▶ Record Assignment in time : failure may lead to the loss of right ▶ Record Change of name and address in time : failure may lead to the loss of right 8 th Annual International Seminar of mark. Patent. org in India 95

IV. Don’t Fall Asleep on Your knowledge Capital ▶ Supervise licensee ▼ before entering the market, negotiate with its local partner and make it a contractual obligation for the local partner to maintain the validity of a registered trademark and prevent it from being misused; ▼ put similar provision and restriction in the contract with any licensee and distributor; ▼ indicate licensee on the products 8 th Annual International Seminar of mark. Patent. org in India 96

IV. Don’t Fall Asleep on Your knowledge Capital Alert To Brand Owners Neglecting To Strictly Supervise Licensees Will Result in Loss Of Trademark Rights in Korea [Korean Supreme Court decision 2009 HU 3329, April 15, 2010] ▶ Brand owner’s requested correction of licensee’s violation are not enough ▶ To recognize the fact that the brand owner had put its licensee under its substantial control and supervision ▶ Brand owner’s to get feedback on whether the licensees in fact corrected the violation by means of establishing ‘reasonable care’ ▶ To avoid the cancellation of the trademark registration under the provision (Paragraph 1, Sub-paragraph 8 of Article 73 of the Trademark Act) ▶ The burden of proof for establishing ‘reasonable care’ is on the defendant, the brand owner, not on the plaintiff 8 th Annual International Seminar of mark. Patent. org in India 97

IV. Don’t Fall Asleep on Your knowledge Capital Defendant’s registered trademark at issue Marks in actual use by Defendant’s licensee , , and etc. (The above marks are comprised of the colored word ‘crocodile’ with a device. ) Petitioner’s relevant registered mark Defendant’s relevant registered mark 8 th Annual International Seminar of mark. Patent. org in India 98

IV. Don’t Fall Asleep on Your knowledge Capital Supreme Court 2010 HU 937, June 10, 2010 in support of the Patent Court’s decision [Patent Court Decision 2009 Huh 7314 delivered on February 12, 2010] requiring a strict due diligence of the brand owner: A (assignor)’s registered mark B (assignee)’s registered mark [comprising of the words ‘SUPERIOR’ with a device] C (Licensee of A)’s mark in actual use D (Petitioner)’s relevant registered marks (1) (2) 8 th Annual International Seminar of mark. Patent. org in India (3) 99

IV. Don’t Fall Asleep on Your knowledge Capital ▶ Set up an educational program for managers and employees ▶ Use a local IP law firm or trademark agency to help monitor possible infringement cases 8 th Annual International Seminar of mark. Patent. org in India 100

Thank you very much! Presented by Ho-Hyun Nahm Website http: //www. barunip. com E-mail hh-nahm@barunip. com 8 th Annual International Seminar of mark. Patent. org in India