SOUTH KOREA Law and Practice Contributed by: Dongju Kwon, Chulgun Lim, Sejung Lee and Yoon Sun Kim, Yoon & Yang LLC
7.2 Legal Claims for Infringement Lawsuits and Their Standards 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 pos - sessing 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 desig - nated goods; • manufacturing, delivering, selling or possess - ing 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.
or a licence with registration based on a sub - sequently dated agreement, the transferee or licensee without registration cannot become a valid trade mark owner or licensee. The transfer of economic rights in copyrighted work, exclusive publication rights and publica - tion rights can be registered. Although registra - tion 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. 7. Initiating Trade Mark and Copyright Lawsuits 7.1 Timeframes for Filing Infringement Lawsuits 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 IP right holder 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. How - ever, there have been instances where a simi - lar argument has been accepted as an “abuse of rights” defence in trade mark infringement cases.
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