SOUTH KOREA Law and Practice Contributed by: Dongju Kwon, Chulgun Lim, Sejung Lee and Yoon Sun Kim, Yoon & Yang LLC
an infringement lawsuit if they hold registered trade marks or famous trade marks, or if they are entitled to copyright protection under a treaty. 7.6 Declaratory Judgment Proceedings and Other Protections for Potential Defendants A defendant in a registered trade mark infringement lawsuit often files an invalidation action with IPTAB. 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. If either party disagrees with the IPTAB decision, they may file a lawsuit with the court. Similarly, in copyright disputes, a party may seek a declaratory judgment from the court before an infringement lawsuit is filed. To do so, the party must demonstrate a legitimate interest in obtaining such a declaration. This interest is generally recognised if the party has received a warning letter. However, if an infringement lawsuit has already been filed, a declaratory judgment action is not permit - ted because the defendant can dispute the issue of infringement in that lawsuit and ultimately resolve the matter. 7.7 Small Claims MOIP operates an Industrial Property Rights Dis - pute 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 Sys - tem, which is almost identical to the Industrial Prop - erty Rights Dispute Mediation System. 7.8 Effect of Trade Mark and Copyright Office Decisions 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 confirma - tory judgments preceding the matter at hand. For decisions relating to opposition, revocation or invalidation, IPTAB decisions are analogous to first- instance judgments in a judicial process; see 5.5 Legal Remedies Against the Decision of the Trade Mark Office . For copyright matters, MOIP has no such procedure. 7.9 Counterfeiting and Bootlegging Counterfeiting a trade mark/copyright, the produc - tion or sale of counterfeit goods and the unauthorised reproduction of works are not separately defined in the relevant statute, nor are 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 MOIP’s special judicial police, among others. 8. Litigating Trade Mark and Copyright Claims 8.1 Special Procedural Provisions for Trade Mark or Copyright Proceedings 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 regard - ing registered IP rights except copyrights and appeals of IPTAB decisions. It employs technical examiners, and other courts employ technical research officers who provide expert insights to assist judges in com - plex technical matters. However, their findings are advisory and do not bind the court.
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