SOUTH KOREA Law and Practice Contributed by: Dongju Kwon, Chulgun Lim, Sejung Lee and Yoon Sun Kim, Yoon & Yang LLC
Dilution of Trade Mark The UCPA prohibits acts that dilute the distinc - tiveness or reputation of a famous trade mark, and, in cases of violation, allows for a request for injunction, damages claim, restoration of a trade owner’s reputation and criminal sanctions. How - ever, continuous use of a trade mark before it becomes famous, without unlawful intent, does not constitute an act of unfair competition, nor does non-commercial use or use in news report - ing. Cyber-Squatting In the case of cyber-squatting, the UCPA pro - hibits acts such as registering or using a domain name that is identical/similar to a famous trade mark for the purpose of: • selling or leasing the domain name; • interfering with the registration and use of the domain name by the rights holder; or • other commercial profit. Available remedies include injunction, compen - satory damages and restoration of a trade mark owner’s reputation. Copyright Infringement A copyrighted work is considered infringed when any of the exclusive rights granted to a copyright owner is exercised without the owner’s permis - sion, unless an exception applies. Korean law does not distinguish between direct infringe - ment, vicarious infringement and contributory infringement in cases of copyright infringement. The following acts are considered copyright infringement: • importing, for distribution within Korea, prod - ucts that would infringe copyright if they had been made in Korea;
To claim trade mark infringement, all the follow - ing must be asserted and established: • the registered trade mark validly exists; • infringement is within the scope of registered trade mark protection; • the use is without legitimate authority; • the use qualifies as a registered trade mark use; and • the registered trade mark rights are not restricted, such as where the use of one’s own trade name is merely consistent with commercial practices. Korean law does not distinguish between direct infringement, vicarious infringement and con - tributory infringement in cases of trade mark infringement. For a damages claim, aside from the aforemen - tioned requirements, all the following must also be asserted and established: • the infringer acted intentionally or negligently; • there is a causal relationship between the infringement and the injury; and • the amount of actual damages. Furthermore, criminal liability arises when the infringer’s intent is proven. Unregistered Trade Mark Infringement An unregistered trade mark generally lacks the legal basis for the above remedies. However, an unregistered trade mark that is widely rec - ognised in Korea can still be protected under the UCPA through an injunction, damages claim, restoration of a trade mark owner’s reputation and criminal sanctions. The protection for unreg - istered trade marks differs from registered trade marks as it specifically requires the mark to be well known or famous.
588 CHAMBERS.COM
Powered by FlippingBook