A Foreign Business's Guide to IP Protection in Korea: Trademarks, Patents, and Disputes

South Korea presents a vibrant and lucrative market for foreign businesses. However, this opportunity comes with the critical need for robust intellectual property (IP) protection. At Pine IP Firm, we frequently guide international clients through the unique challenges of the Korean IP landscape, from proactive registration to aggressive enforcement.

Navigating a foreign legal system can be daunting. You may encounter issues like a local partner attempting to register your brand, accusations of patent infringement, or counterfeit goods. This guide addresses the most common questions we receive, providing a clear roadmap for protecting your assets in Korea.

Help! My Korean Distributor Registered My Trademark. What Now?

This is one of the most common and urgent problems foreign brand owners face. You trust a local distributor to sell your product, only to discover they have filed for your trademark in their own name at the Korean Intellectual Property Office (KIPO).

If this happens, you must act quickly.

Under Article 25 of the Korean Trademark Act, you have a limited window to act. Any person can file an opposition to a trademark application within two months of its publication date.

To be successful, you must file a formal written opposition that includes:

• Clear reasons for the opposition.
• Strong supporting evidence.

If your brand is already well-known (either in Korea or internationally), this can be a powerful argument against the distributor's "bad faith" application. The KIPO examiner will review your evidence and decide whether to block the distributor's registration.

Key Action: This two-month window is strict. If you do not have a business address in Korea, you must appoint a local representative, such as a Korean patent attorney, to handle the process. Contacting an IP firm like Pine immediately is crucial to ensure you don't miss this critical deadline.

Navigating Patent Disputes in Korea: A Two-Sided Guide

Patent disputes are complex, whether you are the one being infringed upon or the one being accused.

What to Do if Someone is Infringing Your Korean Patent

Discovering that someone is using your patented invention without permission is frustrating. The first step is often to send a formal warning letter.

This letter, preferably sent by your Korean IP attorney, notifies the infringer of your patent right and demands they cease their activities. This warning should be supported by official documents, such as a copy of your patent certificate or the gazette publication.

If the infringer does not comply, you must be prepared for legal action. The penalties for patent infringement in Korea are severe. Under Article 225(1) of the Patent Act, an infringer can face:

• Imprisonment with labor for up to seven years; or
• A fine not exceeding 100 million won (approx. $75,000 USD).

A complaint must be filed within six months of you becoming aware of the infringement.

What to Do if You Are Accused of Patent Infringement

Receiving a warning letter can be alarming. However, you have several strategic options under Korean law:

1. Challenge the Patent's Validity: You can file for an invalidation trial against the patent you are allegedly infringing. If you are successful, the patent right is nullified, and the claim against you disappears.
2. Confirm the Scope: You can request a trial to confirm the scope of the patent right. This proceeding asks KIPO to determine if your product or process actually falls within the claims of their patent. A favorable ruling can be submitted to the court.
3. Claim Prior Use Rights: Were you already using the invention (or preparing to) in Korea before the patent application was even filed? If so, you may be able to claim a nonexclusive license based on prior use under Article 103 of the Patent Act.

If you are infringing, the best course of action is often to stop the infringing activity immediately. Alternatively, you can attempt to negotiate a license or an assignment of the patent right from the owner.

Beyond the Courtroom: Dispute Resolution and Enforcement

Litigation isn't the only path. Korea offers several other mechanisms for resolving IP issues.

IP Dispute Mediation

The Korean Intellectual Property Office (KIPO) operates an Intellectual Property Rights Dispute Committee. This body of experts can mediate disputes related to patents, trademarks, and designs. You can apply by submitting a mediation form (available on the KIPO website). If mediation is successful, the committee draws up a protocol that is considered as binding as an irrevocable judgment, offering a faster and more cost-effective solution than a full trial.

Reporting Counterfeit Goods

If you find counterfeit versions of your products, you can report them directly to several Korean agencies, including:

• The Korean Intellectual Property Office (KIPO)
• The Supreme Prosecutor's Office of the Republic of Korea
• Cyber112 (for online counterfeits)

Handling Domain Name Disputes

Disputes over ".kr" domain names or "cybersquatting" are handled outside of KIPO. Your primary recourse is to contact:

1. Korea's Internet & Security Agency (KISA) Domain Name Dispute Resolution Committee.
2. The World Intellectual Property Organization (WIPO) Arbitration and Mediation Center.

WIPO, in particular, has well-established procedures (like the UDRP) for resolving disputes where a domain name has been registered in bad faith to profit from your trademark.

Your Expert Partner in Korea

Protecting your intellectual property in Korea requires proactive registration and decisive action against infringement. From filing oppositions against bad-faith trademark applications to navigating complex patent litigation and mediation, the rules are specific and the deadlines are strict.

Don't navigate these challenges alone. Pine IP Firm is your dedicated partner on the ground in Korea. Our team of experienced patent and trademark attorneys is here to protect your most valuable assets.

Contact us today for a consultation on your Korean IP strategy.