SOUTH KOREA Law and Practice Contributed by: Hwansung Park, Eunwoo (Vera) Lee, Hankil D. Kang and Jung Heo, Lee & Ko
8.4 Trade Marks, Trade Dress and Industrial Designs Under Korean law, a trade mark is a mark used to distinguish one’s own goods (including service-related items, excluding geographic indications) from others’. Trade dress lacks explicit definition but gains indirect protection under UCPA, which includes under busi- ness indicia, methods of selling goods/services or overall appearance of business premises such as sig- nage, exterior, or interior decoration. Design means the shape, configuration, colour, or combination thereof of an article (including parts, fonts, images) that aesthetically appeals visually. Purely functional shapes indispensable to the article’s function are ineli- gible for registration. Trade marks protect source identification, whereas designs safeguard aesthetics and industrial applica- bility. Product shapes or packaging can enjoy concur- rent protection if criteria are met. Trade marks and designs are not mutually exclusive. Even design-eli- gible shapes qualify for trade mark rights if used to distinguish one’s goods from others’, beyond mere decoration. 8.5 Copyright and Trade Marks Logos, artistic elements, or branding can be protected under both copyright and trade mark law if they meet the respective requirements for each. Copyright and trade mark rights are not mutually exclusive. There- fore, even if a figure constitutes a trade mark under the Trademark Act, it can also be protected as a copy- righted work if it satisfies the requirements under the Copyright Act. The fact that such a work is used or intended to be used to indicate the origin of goods does not affect its eligibility for copyright protection. While copyright protection does not require registra- tion, the logo or design must qualify as a “creative work expressing human thoughts or emotions”. Con- versely, to be protected under trade mark law, the mark must be registered as a trade mark to distinguish one’s own goods. Even a registered trade mark owner cannot use their registered trade mark without the consent of a copy- right holder if the trade mark conflicts with another party’s pre-existing copyright that arose before the
trade mark’s filing date. Conversely, if a copyright owner intends to use their work to indicate the origin of goods (ie, as a trade mark), they may face trade mark infringement issues if there is an identical or similar prior registered trade mark. 8.6 Enforcement and Remedies Across Multiple IP Rights Under South Korean law, asserting multiple IP rights simultaneously within a single lawsuit is permissible. Claims based on distinct IP rights (eg, patents, trade secrets, trade marks) can be joined in one action; pro- vided they follow the same type of procedural rules. Since claims for injunctions, disposal, and damages arising from IP infringement are standard civil claims, they can generally be combined into a single suit absent special circumstances. If infringement of multiple IP rights is established, the court independently evaluates the availability of rem- edies for each right based on its specific requirements and statutory provisions. Where a rights-holder holds multiple claims against an infringer arising from the same legal act or relationship, these claims generally compete to achieve the same economic satisfaction. Consequently, once one claim is satisfied, the others are extinguished to that extent. Therefore, even if different IP rights are infringed, dou- ble recovery is not allowed if the substance of the infringement is identical. However, double recovery is not an issue if the infringing acts are distinct, such as when one part of a technology is protected by a patent and another part by a trade secret. 8.7 International and Cross-Border Considerations Intellectual property rights arise independently in each country under the principle of territoriality, so Korean- registered rights are principally governed by Korean law. However, Korea’s IP regime is harmonised with international standards like the WTO TRIPS Agree- ment, sharing significant commonalities with foreign laws. Procedurally, where international jurisdiction and choice of law issues arise in legal relationships involv- ing foreign elements, the Private International Law Act
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