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| PATENT |
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| Jurisdiction over Intellectual Property Infringement Cases to be Consolidated |
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| On November 12, 2015, the Korean National Assembly passed amendments to the Korean Civil Procedure Act and Court Organization Act (i) to consolidate jurisdiction over infringement cases involving certain intellectual property rights (i.e., patents, utility models, trademarks, designs, and plant variety rights) (hereinafter "IP Infringement Cases") with five district courts, and also (ii) to reorganize intermediate appeals of IP Infringement Cases which will now be heard exclusively by the Patent Court.
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| Generic's Argument Against Patent Term Extension Validity Thwarted |
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| What does "registered" mean? More precisely, does "registration" have to occur within a certain timeframe? This was one of the main issues disputed in a recent preliminary injunction (PI) action between Bristol-Myers Squibb (BMS), the maker of Baraclude®, the top grossing drug in Korea, and Dong-A ST, a generic company that had sold its generic version of Baraclude® prior to the expiration of the extended term of BMS's patent covering the active ingredient. Previously, both the Intellectual Property Tribunal (IPT), an administrative tribunal within the Korea Intellectual Property Office (KIPO), and the Patent Court had upheld the validity of the patent.
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| Patent Court Clarifies that Inventiveness Requires Consideration of the Problem Solved by the Patent |
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| Korean courts reviewing patentability and validity in patent cases typically have not given much weight to the specific technical "problem" the patent-in-suit is intended to solve. But this trend may be changing, in favor of patentees.
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| Expedited IPT Proceedings Now Faster, Easier to Obtain |
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| The Korean Intellectual Property Office (KIPO) recently announced amendments to the Regulations for Trial Procedure (effective November 1, 2015), which make expedited actions before the Intellectual Property Tribunal (IPT) faster and easier to initiate in certain circumstances.
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| KIPO Implements New Collaborative Search Pilot Program |
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| In cooperation with the U.S. Patent & Trademark Office (USPTO), the Korean Intellectual Property Office (KIPO) implemented the Collaborative Search Pilot Program (CSP) on September 1, 2015. The purpose of the CSP is to provide applicants with search results from two offices early in the examination process so that the applicants may better map out their prosecution strategies. KIPO plans to accept up to 200 CSP applications per year for two years, starting from September 1.
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| Employee's Relative Contribution Rate to Employee Invention Lowered in View of Company's Efforts Making Invention the Technology Standard |
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| Korean law requires that employees be paid a reasonable compensation for employee inventions. In determining the reasonableness of the inventor compensation, the courts will look at (1) the employer's profits from the invention; (2) the contribution of the employee to the value of the invention (versus the inventor's contribution); (3) and the inventor's contribution relative to the other inventors.
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| Korean Patent-Approval Linkage System – Initial Statistics |
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| Korea fully implemented the new patent-approval linkage system in March of this year, and there has been much speculation in Korea as to how generic companies would react to its implementation. The initial statistics indicate that generic companies are indeed utilizing the system in large numbers, but also that certain generics may be thinking more carefully about whether they really intend to introduce specific generic products into the market.
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| TRADEMARK, DESIGN, COPYRIGHT & UNFAIR COMPETITION |
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| Korean Court Holds Again that a Store's Appearance is Protectable Trade Dress |
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| Only recently, at the end of 2014, the Seoul Central District Court recognized for the first time in a case involving competing ice cream shops in Korea that a shop's general appearance and decorative elements can be protected trade dress under the Unfair Competition Prevention and Trade Secrets Act (UCPA). In another recent case handled by Kim & Chang on behalf of the plaintiff, the same court has now issued another decision confirming that a bakery shop's general appearance (including the logo, outdoor signage, and indoor layout) and other decorative elements are protected trade dress under the UCPA.
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Registered Design Rights Doubly Protected by the UCPA
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| In a recent design infringement case brought by Ezaki Glico ("Glico") against Lotte Confectionery ("Lotte"), the Seoul Central District Court issued a decision (now final after lack of appeals) substantially strengthening protection for registered designs in Korea by ruling that Lotte's use of similar packaging for a confectionery product similar to Glico's not only infringed Glico's registered packaging design, but also violated the "dead copy" and "catch-all" provisions of the Unfair Competition Prevention and Trade Secrets Protection Act (UCPA), even though Glico's product had not yet been sold in Korea.
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Amendments to the Design Examination Guidelines
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| The Korean Design Examination Guidelines have been amended effective October 1, 2015 to encourage examiners at the Korean Intellectual Property Office (KIPO) to treat design applications with greater flexibility during examination. Some of the more notable amendments are outlined below.
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The Supreme Court Affirms that All Surrounding Circumstances Must Be Considered when Determining Whether Marks are Confusingly Similar
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| Daiso Asung Co., Ltd. ("Daiso") is the Korean franchisor of the DAISO store chain, whose business model is to offer a large and constantly changing selection of household items at very low prices. In 2013, after the defendant started using the name DASASO for its chain of similar competing stores, Daiso brought a civil action against them seeking an injunction and damages based on claims for unfair competition and infringement of its Korean trademark registrations.
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Name of Korean Pop Group "Girls' Generation" Recognized as a Famous Mark
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| "Girls' Generation" is the name of a famous all-girl pop group in Korea. The group first made its debut in July 2007 and became extremely popular within a short period through their various concerts, performances, television appearances, and other promotional activities, enjoying substantial record sales as a result. The mark "Girls' Generation" (in Korean translation), however, was registered by an individual unrelated to the group on February 10, 2009, covering various goods and services in Korea unrelated to music or music performance.
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Non-Distinctive Parts Can Make a Distinctive Mark
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| The Patent Court recently held that the mark "AMERICAN UNVERSITY" is sufficiently distinctive among Korean consumers to be registered for its designated services of university education services, instruction services, etc. The Patent Court rejected the overly-literal approach of the Korean Intellectual Property Office (KIPO) and the Intellectual Property Tribunal (IPT) to distinctiveness, by affirming that even non-distinctive elements can comprise a distinctive mark if sufficiently recognized by the relevant consumers.
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Performer Compensation Required for Public Use of Streaming Music Services
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| In Korea, it has been legally uncertain whether playing digital music through a streaming music service is a "public performance using a commercial music record", and therefore whether compensation for public performance is owed to the relevant music performers and producers for public streaming of music through such services. The Korean Supreme Court has now finally resolved this issue in a decision that expands protection for the rights of music performers and producers.
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