SOUTH KOREA Law and Practice Contributed by: Heejun Choi, Kyoung-Ho Kim, Sungsok Yang, Eunjee Kim and Kwang-Chun Park, Dentons Lee
If no grounds for refusal exist, the patent is registered upon payment of the registration fee. Korea also rec - ognises a statutory grace period for certain prior dis - closures made by or against the will of, the applicant. Patent infringement may arise through direct infringe - ment, the doctrine of equivalents or certain forms of indirect infringement. Direct infringement generally requires that all elements of the patented claim be present, while equivalent infringement is recognised, subject to limitations including prior art and prosecu - tion history estoppel. Patent rights may be enforced through civil proceed - ings. Available remedies include: • injunctions; • destruction of infringing products or facilities; • damages; and • measures to restore business reputation where appropriate. Damages may be assessed by reference to lost profits, the infringer’s profits, a reasonable royalty or another court-determined measure. Wilful infringe - ment may attract enhanced damages of up to five times the actual damages. Patent validity may be challenged through an invali - dation trial before the Intellectual Property Trial and Appeal Board. A finally invalidated patent is generally deemed never to have existed and courts may refuse enforcement of a clearly invalid patent on abuse-of- rights grounds. Intentional patent infringement may also give rise to criminal liability, including corporate liability where applicable. 7.2 Trade Marks Under the Korean Trademark Act, a trade mark is a sign used to distinguish one person’s goods or ser - vices from those of others. Registrable marks include words, figures, symbols, three-dimensional shapes, colours, sounds, smells, holograms and motion marks, provided they function as indicators of origin.
Korea operates a registration-based trade mark sys - tem. Rights arise upon registration with the Korean Intellectual Property Office (“KIPO”), although use remains relevant to acquired distinctiveness, non-use cancellation and enforcement. Trade mark protection lasts 10 years from registra - tion and may be renewed indefinitely for successive 10-year periods. Registration requires an application identifying the applicant, the mark, the designated goods or servic - es and relevant classes. KIPO examines formal and substantive requirements, including distinctiveness and prior conflicting rights. International registrations designating Korea are also available under the Madrid Protocol. Trade mark infringement typically occurs when an unauthorised identical or similar mark is used in con - nection with identical or similar goods or services, resulting in a likelihood of confusion. Preparatory acts (such as possessing, importing or exporting infringing goods under specified conditions) may also be con - sidered infringement. Trade mark owners and exclusive licensees may enforce their rights through civil proceedings. Avail - able remedies include: • injunctions; • destruction of infringing goods or facilities; • damages, including statutory damages in certain cases; and • measures to restore business reputation where appropriate. Damages may be assessed by reference to the infring - er’s profits, a reasonable royalty or other statutory methods, with enhanced statutory damages available in specified cases of intentional infringement. Trade mark registrations may be challenged through invalidation or cancellation proceedings before the Intellectual Property Trial and Appeal Board, including cancellation for non-use over a continuous three-year period without justifiable grounds.
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