Korea Parallel Imports: How to Protect Your Brand in Korea: The Korean Courts May not be the Answer

The Korean Courts have been very reluctant to enforce prohibitions on the imports of non-counterfeit/grey market products into the Republic of Korea.  The following case is one example. Don’t fret, proactive counsel can be utilized to assist in developing strategies to protect your brand and distributor, agent, dealer or subsidiaries business in the Korean market.  Some of the strategies are obvious and some come from the unique experience gained from doing business in Korea.    In Case No. 2009Ga Hap 125399 (Simmons Korea  vs. Karahan) Decided 12/10/2010, the Seoul Central District Court ruled that Simmons Korea could not prohibit the import of beds from parallel importer Karahan.  Karahan was importing Simmons beds from abroad.  Simons Korea was manufacturing beds in Korea under the Simmons name (licensed from Simmons to Simmons Korea).  Simons USA did not have an equity stake in the Simmons Korea entity. The court reasoned that the regulation

Continue reading

Weekly Korean Legal News From International Law Firm – IPG Legal for the Week of July 28, 2014

Weekly Korean Legal News From International Law Firm – IPG Legal for the Week of July 28, 2014Korean Legal News Reported by the Media on the Week of July 28, 2014 IMC may blacklist Korean builders over collusion Prosecutors continue probe into ferry owner’s driver Foreign workers upset by severance pay formula Restructuring urgent for big Korean companies Relocation of USFK Headquarters to Go Ahead Most Recent Posts from the Korean Law Blog This slot is reserved for the new article Korean Franchise Law Basics for Franchisors “Samsung’s First Family Struggles to Keep Grip on Company” Report by Bloomberg Debt Collection in Korea: Foreign Creditor vs. Bankrupt Korea Debtor Opportunities in Korea’s Growing Tuning & Performance Modification Industry for Foreign Companies ___ Sean Hayes may be contacted at: [email protected] Sean Hayes is co-chair of the Korea Practice Team at IPG Legal. He is the first non-Korean attorney to have worked

Continue reading

Samsung Faces Challenges as It Tries to Win Smartphone Wars

CNBC released an interesting article on how the largest smartphone maker can win the smartphone war. The article pointed out that despite the recently lowered guidance, Samsung is likely to deliver strong results. The article also mentioned four points that Samsung needs to improve in order to retain its edge in the smartphone market. User interface – “In order to retain its lead over the long term, Samsung needs to build a platform that’s as compelling for app developers and users as Apple.” Customer service – “Good communication between users and the smartphone company is crucial to long term” success. The OS challenge – “Even if Samsung is able to differentiate itself through better customer service and improved user experience, it may face other challenges as it tries to build out Tizen, its first attempt at its own operating system.” Profit margin – “Profit is increasingly important as analysts see a plateauing of the

Continue reading

Weekly Korean Legal News From International Law Firm – IPG Legal for the Week of July 21, 2014

Weekly Korean Legal News From International Law Firm – IPG Legal for the Week of July 21, 2014Korean Legal News Reported by the Media on the Week of July 21, 2014 South Korea Plans $40 Billion Stimulus to Tackle Weakening Growth Seoul to push tax on corporate cash reserves U.S. Chamber of Commerce chief urges FTA implemantation Workers in Their 60s Outnumber 20-Somethings Mortgage deregulation raises concerns Most Recent Posts from the Korean Law Blog Debt Collection in Korea: Foreign Creditor vs. Bankrupt Korea Debtor Opportunities in Korea’s Growing Tuning & Performance Modification Industry for Foreign Companies Korean Fugitives on the Run: Getting more Difficult with Change of Law Distribution Agreements in Korea: Crawl before you Walk Is Samsung Doomed? No Innovation Price Trap ___ Sean Hayes may be contacted at: [email protected] Sean Hayes is co-chair of the Korea Practice Team at IPG Legal. He is the first non-Korean attorney

Continue reading

“Samsung’s First Family Struggles to Keep Grip on Company” Report by Bloomberg

The Samsung saga continues.  Lee Jae-Yong is likely to take over from his father soon.  It looks like Lee Kun-Hee’s health is not improving.  Bloomberg has an interesting article on this issue that may be found on the link below.   The Lee Family owns less than two percent of the total shares of Samsung Group, though they near absolutely control 74 companies “through a web of share holdings.” However, because of recently enacted regulations and tax laws, the family may lose its influences over the companies.  President Park has banned “new cross holdings.” Under current tax law in Korea, heirs have to pay inheritance taxes of 50 percent of the asset value which means that Lee Jae-Yong may have to pay about  $6 billion as inheritance taxes. While the Lees are planning to take two companies public in order to raise money to pay the inheritance taxes, Lee Jae-Yong has faced another challenge. According to

Continue reading

Weekly Korean Legal News From International Law Firm – IPG Legal for the Week of July 14, 2014

Weekly Korean Legal News From International Law Firm – IPG Legal For the Week of July 14, 2014.Korean Legal News Reported by the Media on the Week of July 14, 2014 LG outpaces Samsung in UHD TV panel market in May: data Hana Bank set for merger with KEB Economists Doubt Korea Can Return to Solid Growth Line to Be Listed on Tokyo Stock Exchange Korea ranks third in e-trade readiness Most Recent Posts from the Korean Law Blog Opportunities in Korea’s Growing Tuning & Performance Modification Industry for Foreign Companies Korean Fugitives on the Run: Getting more Difficult with Change of Law Distribution Agreements in Korea: Crawl before you Walk Is Samsung Doomed? No Innovation Price Trap Foreign Account Tax Compliance Act (FACTA) in Korea ___Sean Hayes may be contacted at: [email protected] Sean Hayes is co-chair of the Korea Practice Team at IPG Legal. He is the first non-Korean

Continue reading

Weekly Korean Legal News From International Law Firm – IPG Legal for the Week of July 7, 2014

Weekly Korean Legal News From International Law Firm – IPG Legal For the Week of July 7, 2014Korean Legal News Reported by the Media on the Week of July 7, 2014 Science Ministry to Introduce Laws for Better Mobile Service Plans Validity of Financial Holding Firms in Question Bank of Korea Hints at Rate Cut Pantech Sinking into Deeper Liquidity Crisis Samsung Chief Marks 2 Months in Hospital Most Recent Posts from the Korean Law Blog Is Samsung Doomed? No Innovation Price Trap Is Korea’s “Copy Culture” the Largest Threat to the U.S.? On Fox Business Korean Immigration Law’s 20% Rule Challenged Material Breach of Contracts Under Korean Law: Primary Obligations vs. Secondary Obligations Samsung’s Shareholdings Explained by Wall Street Journal ___ Sean Hayes may be contacted at: [email protected] Sean Hayes is co-chair of the Korea Practice Team at IPG Legal. He is the first non-Korean attorney to have worked

Continue reading

Weekly Korean Legal News From International Law Firm – IPG Legal for the Week of June 30, 2014

Weekly Korean Legal News From International Law Firm – IPG Legal for the Week of June 30, 2014Korean Legal News Reported by the Media on the Week of June 30, 2014 FSS Chief Pledges to Back Foreign Firms Cho Steering Hanjin Shipping Out of Liquidity Crunch Park, Xi Boost Security, Business Ties Korea, China to Seal FTA by Year’s End Won Goes from Strength to Strength Most Recent Posts from the Korean Law Blog Is Samsung Doomed? No Innovation Price Trap Is Korea’s “Copy Culture” the Largest Threat to the U.S.? On Fox Business Korean Immigration Law’s 20% Rule Challenged Material Breach of Contracts Under Korean Law: Primary Obligations vs. Secondary Obligations Samsung’s Shareholdings Explained by Wall Street Journal ___ Sean Hayes may be contacted at: [email protected] 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

Continue reading

Weekly Korean Legal News From International Law Firm – IPG Legal for the Week of June 23, 2014

Weekly Korean Legal News From International Law Firm – IPG Legal for the Week of June 23, 2014Korean Legal News Reported by the Media on the Week of June 23, 2014 Samsung, LG at War over Android Wearables Hyundai Motor to Be Fined for Overstated Fuel Economy Korea Recognized for Combating Money Laundering Asiana Accepts Responsibility for Crash Penalties Likely for Woori Bank Most Recent Posts from the Korean Law Blog Is Korea’s “Copy Culture” the Largest Threat to the U.S.? On Fox Business Korean Immigration Law’s 20% Rule Challenged Material Breach of Contracts Under Korean Law: Primary Obligation vs. Secondary Obligations Samsung’s Shareholdings Explained by Wall Street Journal Finding a Distributor Agent to Sell/Market Your Products in the South Korean Market ___ Sean Hayes may be contacted at: [email protected] Sean Hayes is co-chair of the Korea Practice Team at IPG Legal. He is the first non-Korean attorney to have

Continue reading

Is Korea’s “Copy Culture” the Largest Threat to the U.S.? On Fox Business

Fox Business has an interesting article by Steve Tobak that is worth a read. Steve notes that: “Everyone talks about China as the principle threat to the U.S. economy, but South Korean giants like Samsung have systematically stolen our intellectual property, copied our products, illegally fixed prices, and played our courts against us to dominate lucrative markets for years.” Steve goes on to note: “Move over China and Russia. With friends like Korea, who needs enemies? A better question is: why does the United States government let its allies – that we actually protect – so blatantly harm our corporations and our economy?” Worth a read.  The article may be found at: Samsung & Korea’s Copy Culture. Does Steve Tobak of Inviser Consulting go too far? ___Sean Hayes may be contacted at: [email protected] Sean Hayes is co-chair of the Korea Practice Team at IPG Legal. He is the first non-Korean

Continue reading

Verdict in latest Samsung/Apple Courtroom Battle

A U.S. Federal Court jury has resolved the latest legal dispute between Apple and Samsung, ruling that both companies wrongfully infringed some of the other’s patents while absolving each of liability in other patent infringement claims. Very notably, the jury awarded Apple $119.6 million in damages, much less than the $930 million awarded the two tech-giant’s earlier 2012 case, and nowhere near the $2.2 billion Apple had been seeking in this trial.  All of this, of course, is pending appeal. Commenced when Apple filed suit against Samsung in February of 2012, this suit saw Apple once again accusing Samsung of patent infringement, claims Samsung “systematically copied Apple’s innovative technology and products, features, and designs, and . . . deluged markets with infringing devices.” Samsung counterclaimed that Apple engaged in patent infringement of its own. A great article on the matter can be found at Vanity Fair: Apple’s Victory over Samsung

Continue reading

Korean Intellectual Property Theft Enforcement/Monitoring Program by IPG Legal is now Flat-Fee Billed

Because of an increase in interest from clients in flat-services, we have created a Flat-Fee Billed IP Theft Enforcement & Monitoring Program for our Korea & China offices.  As you know, most lawyers charge based on time even if they are not telling you they are.  We all calculate services based on time.  Thus, we developed this fee scale based, primarily, on the following factors: 1.  Geographical Scope of the IP Monitoring;2.  Number of Cease & Desist Letters Mailed; 3.  If the IP Theft will be Reported to the Prosecution; and4.  If a Civil Suit is Required to be Filed. We are utilizing the same group of retired Korean judges, prosecutors and attorneys for this work, in Korea, thus, the same aggressive and proactive approach is offered.  The, only, difference is you will no longer receive an invoice based on hours docked.  Nothing changes, but the format of the bill. 

Continue reading

Sean Hayes Quoted by Nature on the Woo Suk Hwang Cloning Case

New York Attorney Sean Hayes, Co-Chair of the Korean Practice Team for IPG Legal and former Korean government employee for the Constitutional Court of Korea was quoted by Nature Magazine. Nature is a leading International Weekly Journal of Science.  He was interviewed on the infamous Woo Suk Hwang of cloning fabrication fame.  Sean described the procedure in the Korean courts and the, likely, outcome of the case.  The full article may be found at: Cloning [email protected] (c) Sean Hayes – SJ IPG. All Rights reserved.  Do not duplicate any content on this blog without the express written permission of the author. [email protected]

Continue reading

Grey Market/Parallel Importing is Legal in Korea: Protecting your Brand in Korea

Parallel Importing, in general, is legal in Korea.  The Supreme Court has rule in 2002 in the landmark Burberry Case that: “As a consequence, in spite of the Exclusive Importer’s agreement with the Original Manufacturer that guarantees the exclusive right to Import to the Exclusive Importer, parallel importing does not constitute a violation of Korean Laws and the Parallel Importer is not bound by the contractual rights and obligations granted and imposed by the exclusivity agreement between the Sole Importer and the Original Manufacturer.” Simply, the argument is that the Parallel Importer is not a party to the contract and no other Korean Law is violated.   Most jurisdictions have come to identical conclusions.   I will be writing over the next few weeks about other parallel importing issues including issues related to unfair competition, trade secrets, copyrights, trademarks and how to protect your brands in Korea from grey market goods. 

Continue reading

USPTO & Korean Intellectual Property Office’s New Pilot Program on Classifications of Patents: Korean IP Law Updates

The Korean Intellectual Property Office (KIPO) and the United States Patent and Trademark Office (USPTO) officially announced a Pilot Program in which KIPO will classify patent documents with the Cooperative Patent Classification (CPC).  We congratulate KIPO for this bold and progressive move.    The system is managed by the European Patent Office (EPO) and the USPTO.   The system created over 250,000 classification based on the International Patent Classification system.  The benefit of the new system is that it allows a search worldwide based on these standard classifications.  For those doing prior art searches (yes – I am forced to do this on occasion) – harmonization of classification systems is warmly welcomed.  For an understanding of the CPC classification system please take a look at the CPC’s execellent website at:  Cooperative Patent Classification.  ______ Sean Hayes may be contacted at: [email protected] Sean Hayes is co-chair of the Korea Practice Team and

Continue reading

Korean Invention Promotion Act: Employee Inventions in Korea

 The Korean Investment Promotion Act (“IPA”) was amended in June of 2013.  The amendments will come into force at the end of January of 2014.  Major Amendments to Korean IPA 1.  Employers will no longer obtain, automatically, a non-exclusive royalty-free license to all inventions by employees.  Employers will, now, have to implement company policies and/or include in employment contracts provisions to grant rights to inventions to employers.  The amendment will not apply to employers deemed by the Act on Small to Medium Enterprises to be SMEs. 2.  Employers will have an easier time establishing that “reasonable” compensation was paid in exchange for an assignment of inventions under the invention compensation policies of the employer.  The amendment, however, maintains the, present, uncertainty by still maintaining abstract guidelines, partially, based on future unknown profits that are, only, realized often years after assignment of the invention. 3.  Employers are required to establish an

Continue reading

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.   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. 

Continue reading

Apple Infringed Samsung Patents According to U.S. ITC: Standard Essential Patents

The United States’ International Trade Commission has overturned ITC Judge James Gildea’s September ruling that Apple did not violate Samsung’s patents alleged to be utilized in AT&T models of the iPhone 4, iPhone 3GS, iPad 3G and iPad 2 3G. President Obama has 60 days to review the order that has placed a partial ban on the imports of older versions of Apple IPhone and IPad products.   The ban relates to the use of Apple of “standard essential patents,” specifically the 3G wireless technology to transmit multiple services simultaneously that is owned by Korea’s Samsung.  Three related claims by Samsung were dismissed by the ITC. The majority of scholars and most U.S. government agencies believe that the damage for violation of these type “patents” should be low-cost licenses – not a ban on imports.  What do you think?  Other articles that may be of interest: Patent Bullies vs. Samsung

Continue reading

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 Do a Complete Intellectual Property Audit Form a team to audit all your intellectual property including your patents, trademarks, service marks, books, manuals, videos, software, know-how,

Continue reading

Happy Lunar New Year from IPG Legal!

IPG Legal is an international Asia-focused law firm and business advisory focused on assisting clients in entering and succeeding in Asian markets, including China, Korea, Hong Kong and the majority of nations in Southeast Asia. This past year, among other projects, we are proud to have: advocated for a Fortune 500 company on an ongoing trade dispute with Korean conglomerates. advised international franchise companies in expansion in Asia. advised a high-tech agricultural business in a joint venture with a Korean manufacturing company. prevailed in nearly all of our shareholder, international sales, IP, employment and other commercial and contentions disputes. advised a major Korean entertainment company on the majority of its overseas projects. completed a merger between a major Korean technology company and a Chinese government-controlled corporation. successfully raised funds for growing major corporations through traditional lenders and private lenders. been recognized by international rating companies as one of the leading

Continue reading