Wednesday, May 15, 2013

How to Protect your Brands, Trademarks and other IP in the Korean Market in 10 Not So Easy Steps

I just participated as a panelist for the United States Commercial Service Trade Winds-Asia Seminar for U.S. companies considering investing and/or exporting to Korea, China, the Philippines, Japan and Taiwan.  The Seminar brought together over 150 U.S. investors and exporters of products and services.  The U.S. Commercial Service did a wonderful job bringing together some of the leading experts on doing business in Korea.  I was impressed. 

At the event, the most frequent question I was asked was related to protecting companies trademarks and other intellectual property.  Additional posts will be written on this topic by Tom Coyner - Senior Commercial Advisor for IPG Legal and head of Soft Landing Korea and myself.

TOP TEN THINGS TO DO TO PROTECT YOUR BRAND IN KOREA
  1. Do a Complete Intellectual Property AuditForm a team to audit all your intellectual property including your patents, trademarks, service marks, books, manuals, videos, software, know-how, and trade secrets.

    The team should include, at a minimum, a senior manager experienced in the internal workings of the company and an experienced Korean-savvy international consultant (attorney or intellectual property consultant) who is experienced in creating inventories.

    The team should send a tailored questionnaire to the heads of all your company's departments. From the questionnaire and other ascertained information, the team should produce a complete intellectual property inventory that details what intellectual property the company possesses and evidences how much the intellectual property is worth to the company.  (Protecting Your Intellectual Property in Korea)

  2. Register your Trademarks and other IP in Korea  
    Yes, your international filings are not good enough for Korea and much of the rest of the world.  As the U.S. Commercial Service notes: ``protection of intellectual property and the laws governing enforcement of these protections exist but are not necessarily extra-territorial. What is understood and practiced in the United States is not always practiced in Korea. . . .U.S. companies wishing to sell their products or services in Korea should first and foremost register their intellectual property rights (copyrights, trademarks and/or patents) in Korea.''
     
  3. Educate Korean Customs on What is your Product and What is Not your Product
    A few professionals in Korea, including professionals at IPG, do presentations to Customs informing them of how to spot counterfeit products.  Some fakes are very difficult to spot and, also presentations by your professionals will go a long way in getting the positive attention of Customs of your seriousness of enforcing your IP rights.
  4.  Draft an Intellectual Property Protection Plan
    The plan should include an internal monitoring and worldwide registration and licensing scheme; an action plan to deal with intellectual property violators and trolls; forming of a team that is responsible for maintaining and fostering intellectual property rights and making sure that intellectual property is properly reflected in the company's financials.

  5. Actively Engage Customs and the Prosecution
    Us all administrative avenues available to protect you products.  Companies that are perceived weak are companies that are more likely to be targeted by counterfeiters, patent trolls and the like.
      
  6. Actively Engage your Sales Channels
    So much information can be garnered from those that are competing against counterfeiters and pirates. 

  7. Track the Importers of Counterfeit Products into Korea
    The Prosecution, generally, does a decent job.  However, often it is advisable to employ a professional to obtain the necessary information and present the information to the Prosecution and Customs.

  8. Integrate the home office with the Korean entityAll too often the Korean branch is totally out of the loop and hence unaware of developments at the home office. The Korean branch, in not only intellectual property, but in other company areas should at least be near the loop.
  9. Don't Forget Trade SecretsI wrote an article on protecting trade secrets in Korea that may be found at: Protecting your Trade Secrets in Korea: Top 5 Things to Know Before Subjecting your Business to the Korean Market.
  10. Get Professional Assistance
    Speaks for itself.  If you don't have an experienced inhouse team of Korean-based attorneys (and often even if you do), you need assistance from professionals in Korean IP law who have high-level contacts with the Prosecution and Customs.
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Sean Hayes may be contacted at: SeanHayes@ipglegal.com.

Sean Hayes is co-chair of the Korea Practice Team at IPG Legal. He is the only non-Korean to have worked as an attorney for the Korean court system (Constitutional Court of Korea) and one of the first non-Koreans to be a regular member of a Korean law faculty.