Enforcing your Trademark Rights in Korea: Korean IP Protection Strategies

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. After registering your IP in Korea, please follow, at a minimum, this simple advice.

Strategy for Protecting Your Intellectual Property in Korea

1. Do a Comprehensive Intellectual Property Audit
   Form a team to audit all your intellectual property, including your patents, trademarks, service marks, books, manuals, videos, software, know-how, and trade secrets. The purpose of this Audit is to determine if all of your IP is registered, evaluated, locked down, and appropriately 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 Legal, do presentations to Korean Customs informing Customs agents on how to spot counterfeit products. Customs is overburdened and is unlikely to be able to determine a decent fake from a real product.
3. Engage Actively Korean Customs and the Prosecution
   Speaks for itself. If you are not on the ground in Korea, get a local company to assist.
4. Draft a Comprehensive Intellectual Property Protection Plan Tailored to Korea
   If you don’t have an IP department or have an IP department that is not up to the task in your company, the inexpensive way to do this is to outsource the work. Many law firms in Korea can assist.
5. Track Importers of Counterfeit Products into Korea
   The Koean Prosecution, generally, does a decent job. However, it is often advisable to employ a Korean law firm to obtain the necessary information and present it to the Prosecution and Customs.
6. Actively Engage Your Sales Channels
   So much information can be gleaned from those competing against counterfeiters and pirates. Have a discussion with your sales channel.
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
   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.

by Sean Hayes

Sean Hayes 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. Sean is ranked, for Korea, as a Top Attorney by AsiaLaw, and IPG Legal is consistently ranked Top Dispute Resolution Law Firm for our litigation and arbitration services.

If you would like a consultation with Sean Hayes from IPG Legal, please schedule a call at:  Schedule a Call with Attorney Sean Hayes.