Reinforcement of Civil/Criminal Disciplinary Actions against Infringement of IPRs

The Korean Industrial Property Office (KIPO) is moving ahead with amendment to the Patent Act and the Trademark Act to greatly reinforce civil and criminal disciplinary actions against infringement of Industrial Property Rights (IPRS).

Current penal provisions stipulate in the Patent Act that any person who wilfully infringes on a patent shall be punished by imprisonment for not more than five years or a fine not exceeding fifty million Korean won, however the KIPO is considering amending the provision to a stricter rule of a wilful patent infringer being punished by imprisonment for not more than seven years or a fine not exceeding one hundred million Korean won, and being imposed by both imprisonment and fine.

Furthermore, the present penalty of not more than fifty million won to legal entity and individual (its owner) related to infringement action is to be amended to a punishment for not more than one billion won to the juristic person and two hundred million won to an individual.

Meanwhile, a calculation standard of damages involved in infringement will take a concrete shape so that an infringed person can easily proceed a suit for damages against infringement of IPRs. It is stipulated in the current Patent Act that profits from infringement act by an infringer is presumed to be damages of a right holder, but it is realistically difficult for the right holder to prove the profits acquired by the infringer and still worse, it is next to impossible to calculate the profits from sales amount of the infringer.

In the draft amendment, damages of the right holder are estimated by sales quantity of the infringer multiplied by profits per unit according to cost calculation standard of the right holder, thereby enabling the right holder to easily proceed the damages claims. In other words, the damages equal to sales volume of the infringer multiplied by profits per product unit in case the right holder sells the product.

The KIPO will submit a bill to the September plenary session of the National Assembly regarding amendment to the Patent Act, Utility Model Act, Trademark Act and Design Act with the above contents given as gist

Amendment of the Trademark Act and Design Act for adopting a new system of international trademark application and enlarging the scope of design protection

The KIPO is seeking to amend the Trademark Act following the possible introduction of international application system for simplifying the procedure of application and registration of trademarks, and the Design Act for enlarging the scope of the design protection.

The Amendment of the Trademark Act is focused on trimming of the Trademark Act for admission of our country to membership in TLT (Trademark Law Treaty) and Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks.

The Amendment of the Design Act, on the other hand, is mainly concerned with adoption of partial design and lifting to some degree the level of unregistrability in relation to design of a set of articles leading to enlarging the scope of design protection. Also included in the possible amendment are expanded scope of design examination by way of alleviating the unregistrability of design, adoption of a fresh novelty system and allowance of participation of general public during the examination as much as possible in order to minimize the improper design right and reinforce the stability of registered design right.

The KIPO is planning to submit the amendment to the September plenary session of the National Assembly following the hearing of amendment of the Trademark Act and the Design Act. Timing of admission of our country to the Madrid protocol and the TLT will be decided pursuant to the opinion collected from the hearing, relevant arrangement of computer equipment and link of the computer systems to WIPO.

The Unfair Competition Prevention and Trade Secret Protection Law seems to be amended as well. Included in the amendment will be insertion of provision of anti-dilution for fair competition in the market and relevant amendment of the provisions in connection with possible admission of our country to the TLT.

Unlawful Use of Signature of a Celebrity Constitutes an Infringement of a Moral Rights

The Korean Supreme Court affirmed the original judgement decided in favor of a plaintiff in an invalidation trial of trademark registration requested by a daughter and a grandson of Picasso, the world-wide famous painter, against Darwin International Ltd., of Taiwanese company which had registered and used Picasso's signature as its trademark. (Korean Supreme Court, case No. 97 HU 2446, April 26, 2000)

In his decision stating "if a signature is the one of a well-known painter and has been mainly used in his artistic works, someone else's conduct of filing, registering and using the trademarks identical or similar to the signature without any permission can cause the well-known painter's reputation to drop and defame his honor", the judge delivered his opinion that someone else's registration and use of the signature as a trademark without permission Picasso had used to represent an authenticity of his works constitutes an illegal act of infringing his personal right and the trademark thus registered shall be invalidated as it corresponds to a trademark feared to corrupt the good public order and morals stipulated by the Korean Trademark Act.