South Korea

Major amendments to the South Korean Trademark Act – the most extensive revision of its kind in over 25 years – came into force in September 2016, with the aim of bringing the country’s trademark regulations closer into line with international standards. In addition, the South Korea-EU Free Trade Agreement entered its third phase in July, meaning that EU law firms can now set up joint ventures with local entities; the same benefits will be afforded to US outfits in early 2017. Concerns are mounting among the younger generation of trademark attorneys over the limited volume of work available; a less than stellar economy has done little to ease these anxieties. Moreover, the longstanding conflict between attorneys at law and patent and trademark attorneys came to a head last year with the impeachment of the newly elected president of the Korean Patent Attorneys Association. Nonetheless, the IP market has experienced marked growth of late, with a notable uptick in trademark filings as domestic enterprises become increasingly aware of the need to protect their intangible assets.

Firms: enforcement and litigation

2
Bae, Kim & Lee LLC
Yoon & Yang LLC
3
Barun IP & Law
Darae Law & IP Firm
Lee International IP & Law Group

Firms: prosecution and strategy

2
FirstLaw PC
Lee International IP & Law Group
Yoon & Yang LLC
YOU ME Patent & Law Firm
YP Lee Mock & Partners
3
Bae, Kim & Lee LLC
Barun IP & Law
Kim & Cho
Koreana Patent Firm (Patent Attorneys & Counselors At Law)
YS Chang & Associates
Bae, Kim & Lee LLC
Bae, Kim & Lee cuts an imposing figure on the South Korean trademark scene and beyond. Long established in Seoul, Beijing and Shanghai, it expanded its reach in 2015 with the launch of offices in Dubai, Hong Kong, Hanoi and Ho Chi Minh City. Although litigation and transactions are the cornerstones of its A-to-Z trademark practice, the prosecution wing has picked up significant momentum and attracted diverse multinational and domestic clients alike. Enforcement maven Ji Hyun Kim serves on numerous IP committees and excels in matters relating to trade secrets and unfair competition. Jeonghyun Kim spearheads the firm’s non-contentious efforts and fully exploits her design expertise and fashion industry know-how, giving her discerning advice a distinctly polished edge.
Barun IP & Law
Value-conscious brand owners would do well to seek out Barun IP & Law; its cradle-to-grave service can cut to the core of any trademark issue and it always offers a cost-effective solution. Having cultivated a vibrant international network, it can also secure watertight overseas protection for patrons’ marquee brands. At the top of the totem pole is Ho-Hyun Nahm. The president of the Asian Patent Attorneys Association Korea Group is well versed on all key IP topics, but wins most praise for his perceptive understanding of domain name issues. Cho & Partners is one of a kind: “Unlike other firms, it always has a committed and clear course of action and rapid turnaround times, and provides excellent, innovative methods to achieve its clients’ goals. On top of all this, its fees are very reasonable.” The technology and luxury sectors are home turf for its elite branding squad, but it also ably serves myriad rights holders across a diverse range of industries. One of the major forces in trademark litigation in South Korea, the team is “consistently outstanding”. Courtroom veteran and esteemed legal author Tae-Yeon Cho possesses unparalleled contentious savvy. Aided by enviable proficiency in US and Korean law, Ik-Hyun Seo is a reliable guardian of household-name brands around the world.
Darae Law & IP Firm
Founded by an elite team of former examiners and judges, Darae is a force to be reckoned with in both the contentious and non-contentious spheres. Its deep well of Korean Intellectual Property Office (KIPO) knowledge makes prosecution a cinch and ensures that clashes are resolved amicably wherever possible. However, clients can rest assured even when disputes head south, since the firm’s fierce enforcement team has seen it all. Leveraging his experience as a former judge, Yong-Sig Cho shines in the courtroom and keeps a cool head in the most heated situations. One of three managing partners of the firm, he also lectures widely at law schools across Asia.
FirstLaw PC
Unlike some filing factories that sacrifice quality for speed and volume, heavy-duty prosecution outfit FirstLaw always provides a first-rate service. Efficient in terms of both time and money, it offers rights holders a quick and secure option for the careful expansion of their portfolios. It continues to grow by leaps and bounds, with a clientele ranging from domestic blue-chips to global branding heavyweights. Perennial favourite Jeong Won Lee is a multilingual portfolio manager who always stays several steps ahead in sophisticated and complex prosecution mandates. “Kim & Chang fully deserves its celebrated reputation in South Korea.” The firepower of its trademark team impresses on all fronts: “There is so much talent that its individual prosecution, litigation and transactional teams could each make up a first-class firm.” It regularly advises renowned conglomerates and routinely handles landmark cases. Jay (Young-June) Yang has helmed a number of these precedent-setting disputes and notched up more than his fair share of victories, with over three decades of courtroom success to his name. “Effective, cost efficient and thorough”, Ann Nam-Yeon Kwon specialises in stopping copycats in their tracks with her comprehensive understanding of anti-counterfeiting and customs procedures. Consummate trademark professional Sung-Nam Kim’s unrivalled IP knowledge allows her to effortlessly manage multimillion-dollar portfolios. Alexandra Bélec has practised in Canada, France and Italy, providing invaluable insight in intricate multi-jurisdictional dealings. In a similar vein, Alex Hyon Cho – a member of the California Bar – combines his US experience with an intimate understanding of the Korean market to gain the upper hand in cross-border enforcement. Breaking into the WTR 1000 this year is fellow US attorney Nayoung Kim, a rising star who dispenses commercially attuned advice to a handful of big-ticket clients.
Kim & Cho
Standing tall and proud on the South Korean IP landscape, Kim & Cho has carefully refined its trademark operation over six remarkable decades of service in the field. It marries extensive technical capabilities with in-depth commercial awareness to keep clients’ portfolios in mint condition. With dedicated units for domain names and designs, it offers a wide umbrella of soft IP coverage. Myung-Koo Kang is the key point of contact.
Koreana Patent Firm (Patent Attorneys & Counselors At Law)
Koreana’s famed patent practice may keep its engines running at full blast, but the “fantastic” trademark unit also wows patrons far and wide and year-on-year growth has seen it soar to new heights. While prosecution is the backbone of the branding operation, its sizeable international clientele also benefits from judicious advice on IP-related commercial matters. Jointly run by eight multilingual managing partners, the boutique has a formidable pool of know-how. Corporate powerhouse Lee & Ko gives customers ample reason to keep coming back for more. The IP division is manned by a host of gifted lawyers who can draw on immense resources, allowing them to tackle any branding conundrum thrown at them. “Its team can take a complex topic and boil it down to the key issues, giving you a clear sense of direction. Highly responsive, it is superior in both litigation strategy and the application of the law.” “An easy first choice for trademark matters”, Jae Hoon Kim is a leading light in multifaceted litigation and has represented top names in many milestone cases. “A walking legal library”, Un Ho Kim is feted for his sharp analytical eye and erudite advice. Vera Eun Woo Lee maintains a finely tuned contentious and transactional practice, with an enviable track record in the courtroom. “Her opinions are both quick and accurate, which comes as the result of her thorough knowledge of trademark law.” Joining his colleagues this year is Sun Chang, a silver-tongued negotiator and tireless advocate when clients’ rights are under threat.
Lee International IP & Law Group
Lee International has carved a real niche for itself on the domestic trademark scene. Its solutions to contentious matters are both “precise and creative”, while its keen business insight has won over a long list of local and international clients. However, prosecution is its main claim to fame, thanks to its army of practitioners who can effortlessly manage complex multi-jurisdictional portfolios. A role model to the next generation of attorneys, Young-Hwan Na has long been the answer to brand owners’ dilemmas. Also in the office is prosecution maven Seo-Young Im, a font of trademark and design knowledge.
Yoon & Yang LLC
With a vast geographical reach and a nuanced understanding of commercial realities, Yoon & Yang’s IP practice takes a holistic approach to brand protection. The corporate outfit is equally competent on contentious and non-contentious mandates and well attuned to cross-border concerns. Managing partner Doug Jay Lee is “an immensely clever and strategic lawyer” who has led various IP committees at KIPO. English and Japanese speaker Ted Kwon can unlock the full potential of clients’ portfolios with his sage guidance.
YOU ME Patent & Law Firm
“Responsive and efficient, YOU ME has a record of success in oppositions and its counsel is always good value for money.” Consistently ranking among the top filers in the country, it has been particularly active in recent years securing the IP rights of Fortune 500 companies. Its bespoke service can accommodate the diverse needs of patrons large and small across a wide range of industries. New head of trademarks Sunghwan Kim epitomises this tailored approach, delivering “clear-cut advice with a personal touch”. Kyungsook Lee takes the fight to the counterfeiters, to superb effect.
YP Lee Mock & Partners
An institution in the IP field, YP Lee Mock & Partners has developed a staunch following of domestic clients, including conglomerates and small and medium-sized enterprises. The boutique’s patent practice has won much acclaim, but its trademark prowess is also evident from the exploits of its talented practitioners. Head honcho Younggi Hong is an “outstanding” trademark and unfair competition specialist who dispatches both local and foreign mandates with aplomb. “Timely, thorough and thoughtful”, Yong Lee is a safe pair of hands for global portfolios. “His instructions are always clear and he takes a logical approach, which leads to solid, practical lawyering.”
YS Chang & Associates
YS Chang & Associates has been in the IP business for over 40 years and is held in the highest regard by loyal patrons and peers alike. While it operates across the trademark spectrum, prosecution and portfolio management remain the bedrock of its practice. However, it flexes serious contentious muscle as well, having won numerous big-ticket Supreme Court cases. A new generation of leadership has embraced the dynamic nature of intellectual property, ensuring that the firm continually adapts to the fluctuating demands and challenges of the market. Sang-Bae Ahn and Jung-Yeon Choe are the main representatives.
Yulchon LLC
The IP squad at Yulchon exudes authority in the contentious realm. It offers a deep pool of diverse expertise, which includes the collective knowledge of three former patent court judges. A recent highlight was its Supreme Court victory for Hanmi Phamaceuticals against allegations of infringement over the shape and colour of Pfizer’s Viagra pill. Jeong Yeol Choe and Cheol Hwan Kim took the lead on this case. Choe turns heads for his indefatigable performances in high-stakes litigation; while award-winning former judge Kim also makes waves for his refined handling of bet-the-farm cases.

Individuals: anti-counterfeiting

Tae-Yeon Cho - Cho & Partners
Jae Hoon Kim - Lee & Ko
Ann Nam-Yeon Kwon - Kim & Chang
Kyungsook Lee - YOU ME Patent & Law Firm
Ho-Hyun Nahm - Barun IP & Law
Ik-Hyun Seo - Cho & Partners

Individuals: prosecution and strategy

Sung-Nam Kim - Kim & Chang
Ted Kwon - Yoon & Yang LLC
Doug Jay Lee - Yoon & Yang LLC
Jeong Won Lee - FirstLaw PC
Ho-Hyun Nahm - Barun IP & Law
Ik-Hyun Seo - Cho & Partners
Alexandra Bélec - Kim & Chang
Younggi Hong - YP Lee Mock & Partners
Seo-Young Im - Lee International IP & Law Group
Myung-Shin Kim - Myung Shin & Partners
Nayoung Kim - Kim & Chang
Jeonghyun Kim - Bae, Kim & Lee LLC
Sunghwan Kim - YOU ME Patent & Law Firm
S Yong Lee - YP Lee Mock & Partners
Sang-Yong Lee - Yoon & Lee International Patent & Law Firm
Jay (Young-June) Yang - Kim & Chang

Individuals: enforcement and strategy

Tae-Yeon Cho - Cho & Partners
Jeong Yeol Choe - Yulchon LLC
Jae Hoon Kim - Lee & Ko
Ik-Hyun Seo - Cho & Partners
Jay (Young-June) Yang - Kim & Chang
Alexandra Bélec - Kim & Chang
Sun Chang - Lee & Ko
Alex Hyon Cho - Kim & Chang
Yong-Sig Cho - Darae Law & IP Firm
Cheol Hwan Kim - Yulchon LLC
Myung-Shin Kim - Myung Shin & Partners
Young-Chol Kim - Kim, Choi & Lim
Sung-Nam Kim - Kim & Chang
Un Ho Kim - Lee & Ko
Ji Hyun Kim - Bae, Kim & Lee LLC
Ann Nam-Yeon Kwon - Kim & Chang
Vera Eun Woo Lee - Lee & Ko
Young-Hwan Na - Lee International IP & Law Group
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Issue 67