7/31/2013

Enforcing your Trademark Rights in Korea: IP Protection Strategies for Korea

Please register all of your trademarks and other intellectual property in Korea.  Yes, your "international filing" is not good enough.  You must, before engaging in any additional consideration of doing business in Korea register your IP in Korea.  Don't even read further.  Contact us and we will happily advise a good patent/trademark agent to utilize.  No need to get a law firm to do this for you - the agents are, typically, adequate for most non-complex filings. 

After registering all your IP in Korea, please follow, at a minimum this simply advise.  
  1. Do a Comprehensive Intellectual Property Audit.  Form a team to audit all your intellectual property including your patents, trademarks, servicemarks, books, manuals, videos, software, know-how, and trade secrets.  The purpose of this Audit is to determine if all of your IP is registered and properly safeguarded.  This is discussed more at: Protecting Your Intellectual Property in Korea.  Register if you find additional IP.
  2. Educate Korean Customs
    A few professionals in Korea, including professionals at IPG, do presentations to Customs informing Customs agents on how to spot counterfeit products.  If you don't do this good luck.  Customs is overburdened and are unlikely to be able to determine a decent fake from real a product.
  3. Engage Actively Customs and the Prosecution
    Speaks for itself.  If you are no on-the-ground in Korea, get a local company to assist.
  4.  Draft a Comprehensive Intellectual Property Protection Plans.
     If you don't have an IP department or have a IP department that is not up to the task in your company, the inexpensive way to do this - outsource the work.  Please consult with your in house attorney.  If you don't have an attorney, please get one.
  5. Track 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.
  6. Actively Engage your Sales Channels
    So much information can be garnered from those that are competing against counterfeiters and pirates. 
  7. Integrate the office outside Korea with the Korean entity.  All too often the Korean branch is totally out of the loop and hence unaware of developments at the home office.
  8. Trade Secrets Matter.  I 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.
  9. Get Professional Assistance
    Speaks for itself.  If you don't have an experienced in house team of Korean-based international 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 and experience in building an IP protection scheme for your company.  
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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.