2/03/2015

Protecting Products from Parallel Imports into Korea: Trademark/IP in Korea?

A trademark, in brief, under Korean Law is defined as a method of expression used to distinguish one's goods from those of others.  The concept is simple, however, the law on trademarks in Korea and abroad is far from simple.

The use of another person of a company's trademark (need to register trademarks in Korea - see posts below) is a violation of the rights of the holder of the trademark entitling the holder to an injunction and, potentially, damages. 

An issue arises when a Parallel Importer utilizes the trademark to sell goods in Korea of a trademark held by a Sole/Exclusive Importer.  In the typical case the Exclusive Importer is not the holder of the trademark, but has a license to use the trademark. 

For example, lets say a company is the Parallel Importer of footwear branded My Left Foot and the Sole/Exclusive Importer of My Left Foot Footwear has registered the trademark with the Korean Intellectual Property Office.  Then, the Parallel Importer commences to advertise the product to consumers in Korea. 

In similar cases, Korean courts have ruled, in brief, that if no likelihood of confusion for consumers (example: cyber squatting domain name My Left Foot Footwear) of who is selling the product, even the usage of the trademark in advertising is not a violation of law.  The lower courts have deferred to the general holding of the Burberry Case discussed at: Grey-Market Parallel Importing is Legal in Korea: Protect your Brands in Korea.  

Thus, here comes the parallel importers.  Exclusive Importers can protect their brands in Korea.  However, it is, typically, not possible via trademark law unless advertisement copy is being copied by the parallel importer. 

Other blog posts that may be of interest:
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Sean Hayes may be contacted for a consultation by emailing him at: SeanHayes@ipglegal.com or via the numbers shown to the left.

Sean Hayes is co-chair of the Korea Practice Team at IPG Legal. He is the first non-Korean attorney to have worked 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. He assists clients in their contentious, non-contentious and business developments needs in Korea and China. He has, recently, been ranked as one of only two non-Korean attorneys as a Top Attorney working in Korea by AsiaLaw.