South Korea

Although South Korea permits foreign law firms to set up shop in the country, the Korean IP legal scene is still heavily dominated by domestic players. However, in many firms foreign consultants are employed to bridge the language and cultural division between Korean practitioners and international clients. The Supreme Court’s interpretation of the ‘catch-all provision’ under the Unfair Competition Prevention and Trade Secrets Act – which confirmed the protection of unregistrable rights, such as trade dress – has prompted a wholesale legal update which affords brand owners valid recourse to fend off infringement of goodwill. Practitioners continue to hope that official jurisdiction over copyright matters will be transferred from the Ministry of Culture, Sports and Tourism to the Korean Intellectual Property Office.

Firms: enforcement and litigation

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

Firms: prosecution and strategy

2
Bae, Kim & Lee LLC
FirstLaw PC
Lee International IP & Law Group
Yoon & Yang LLC
YOU ME Patent & Law Firm
YP Lee Mock & Partners
3
Barun IP & Law
Kim & Cho
YS Chang & Associates
Bae, Kim & Lee LLC
The “impressive trademark line-up” at Bae, Kim & Lee recently received a shot in the arm with the recruitment of Ki Joong Kang, who has previously served as head IP research judge at the Korean Supreme Court. Bae, Kim & Lee is a true one-stop shop with the resources and expertise to advise marquee Korean companies on all aspects of brand protection. Demonstrating its unstinting dedication to quality, the firm recently nailed a host of multi-jurisdictional prosecution and due diligence instructions from Samsung Electronics. Steeped in the sports sector, Bae, Kim & Lee is also the official outside counsel for the PyeongChang 2018 Winter Olympic and Paralympic Games Organising Committee. Unafraid of entering new markets to better serve its clients, the side recently opened a new office in Yangon. Jeonghyun Kim helms the trademark and designs unit within the IP prosecution section and leads by example. The former fashion industry insider brings a creative approach to the private IP practice and is a whizz at identifying innovative portfolio management strategies. Also widely recommended is “highly attentive” former judge Jihyun Kim; she has “the most up-to-date insights on Korean case law” and leverages this to create tailor-made litigation and transactional programmes for clients. Another former judge Taeck Soo Kwon oversees the IP department and ensures the engine runs smoothly. He is an IP authority who has significantly shaped the Korean trademark law landscape over the course of his career.
Barun IP & Law
A touchpoint for many local brand owners, Barun IP & Law dispenses a comprehensive and integrated trademark service. The practice is spearheaded by the “diligent” Ho-Hyun Nahm, who, “having been in the trademark field for three decades, provides reliable and efficient advice to his clients”. He chairs the Korea Internet Address Dispute Resolution Committee. Litigation powerhouse Cho & Partners “formulates and executes creative offline and online enforcement programmes that draw on a genuinely deep understanding of intellectual property and cutting-edge expertise in relevant areas such as advertising. The team is always responsive and works hard to understand your business in order to get its priorities straight. It is comforting knowing precisely who is working on your matters and the team is flexible in accommodating any requests”. Enforcement aside, high-end prosecution is also a happy hunting ground for the group, with the registration of non-traditional marks a particular speciality. The partnership between Ik-Hyun Seo and Tae-Yeon Cho was described by one respondent as a “match made in heaven”. Seo comes recommended for his “practical and tenacious problem-solving ability”. One client enthuses: “Seo took over an intractable case from the previous counsel and was able to swiftly bring it to resolution. He applies great legal expertise, while never losing sight of the practical business objectives”. IP dispute veteran of 30 years Cho is another safe pair of hands and a thought leader in the industry. Despite being known as a cost-effective option, Darae Law & IP Firm does not scrimp on quality when it comes to IP prosecution and enforcement. Melding patent and trademark expertise in a way that is compelling for companies with diverse portfolios, it does a fine job of advising clients holistically, which is aided by the firm’s finance, tax and corporate expertise. “Korea’s largest and most specialised law firm” is home to “one of the most consistently reliable and successful trademark teams in the world”. The vastly experienced group lays claim to approximately one-fifth of the trademark filing market in Korea and is a repository of trust for multinational brands when it comes to prosecution and enforcement matters. Inspirational IP group leader Jay (Young-June) Yang has, as always, been knocking it out of the park lately. Acting for Pfizer, he successfully argued for the acquired distinctiveness of a three-dimensional mark covering a product’s appearance – the first time this was recognised by a Korean court. Accustomed to setting precedents, Yang gives “actionable and strategic advice that shows a great depth of industry knowledge and takes into account market realities”. His team is stacked with talent, as the WTR 1000 2018 bears witness. Ann Nam-Yeon Kwon has an eye for quality, which resonates among the fashion and luxury crowd. “The success of her clients is her number one priority” and the enforcement strategies she designs and executes are tailored for each. Another senior attorney on the roster is Sung-Nam Kim, an authority on trademark, unfair competition and design law with a contentious and non-contentious remit. Among the many outstanding foreign attorneys at Kim & Chang are California Bar member Alex Hyon Cho, a “responsive, resourceful and knowledgeable” practitioner with a “pragmatic approach to problem solving”; international trade and customs ace Jason Lee, a “consummate professional” who “strategises cost-effective enforcement solutions based on a deep understanding of clients’ businesses”; US attorney Nayoung Kim, a dexterous portfolio manager with complementary litigation and transactional expertise and Alexandra Bélec, a professional of Canadian extraction who does a sterling job guiding foreign clients around the pitfalls of the Korean IP system. Lee & Ko is an excellent option for clients who want to take advantage of the efficiencies of a one-stop shop. It provides an all-encompassing brand protection, dispute resolution and enforcement service to global names such as eBay, Samsung Electronics and LG, and by blending its non-contentious and contentious know-how, serves up future-proof advice. A redoubtable force in litigation and anti-counterfeiting, Jae Hoon Kim leads the practice with verve. Assembling optimised groups for any litigation or enforcement mission, Kim is a master strategist with a slew of ground-breaking wins to his name. Another eminent professional, Un Ho Kim stays with cases until the end and shows great tenacity in carving out favourable results. Collaborating with Un Ho Kim – and the firm’s criminal practice group – Vera Eun Woo Lee acts for ASICS on anti-counterfeiting matters. She is one of the most in-demand advocates here. National and international enforcement is meat and drink to Sun Chang, an indefatigable courtroom battler who knows when the time is right to negotiate a settlement.
Lee International IP & Law Group
Lee International is a popular port of call for Korean companies. Its dynamic trademark team can handle any instruction with alacrity, but is especially known for its prosecution prowess and ability to get rights on the register quickly and cost-effectively. Its sizeable squad can dispatch large volume filing programmes with ease and can whip sprawling portfolios into shape. A veteran in the game, Young-Hwan Na gives clients the benefit of his vast experience. Seo-Young Im is another senior attorney to have in the contact book. She knows her way around the Korean Intellectual Property Office (KIPO) blindfolded and delivers fantastic results on prosecution briefs; she is also a leading expert on designs.
Yoon & Yang LLC
A general practice firm with a slick trademark offering, Yoon & Yang packs a punch in both prosecution and enforcement and has earned a devoted following in Korea and abroad. Internationally minded, the firm has offices in Tashkent and Ho Chi Minh City, which is a boon to domestic entities expanding into countries in the Commonwealth of Independent States and Southeast Asia. Astute portfolio manager Ted Kwon heads the trademark group and impresses with his deep reservoir of legal wisdom. Fellow partner Doug Jay Lee is a “dab hand at trademark cancellation and opposition proceedings”. A new addition to the team – and a new entrant in the WTR 1000Young Joo Song arrived recently by way of Kim & Chang. As one commentator observes: “Communicating in English is still an obstacle for many Korean attorneys. Young Joo speaks excellent English, Japanese and Chinese and is the most qualified person to provide foreign companies with practical advice on Korean cases.” Another avers: “Young Joo is truly dedicated to her clients and steeped in different local trademark systems across the Association of Southeast Asian Nations. She has a superb track record fulfilling the complete trademark and design needs of international companies.”
Yulchon LLC
Reassuring brand owners when trouble brews, Yulchon is not fazed by high-stakes patent and trademark infringement litigation; its IP group has nearly 50 years of combined judicial experience. Frequently in the news for its sterling work in cases with far-reaching ramifications in the industry, the set has been busy of late; a notable highlight includes successfully representing Play No More in an appeal against French luxury brand Hermès International. Exhibiting its tenacity, the team has also successfully halted infringements on behalf of Swarovski, a case for which Cheol Hwan Kim was responsible. Having served as a judge for 12 years, Kim knows how to formulate an unassailable argument. This also applies to gold-tiered captain of the group Jeong Yeol Choe, a leading authority who has taught judges and who now serves as vice president of the Korea Intellectual Property Lawyers Association. He is regularly on the frontlines of ground-breaking cases that bring clarity to grey areas of law.
FirstLaw PC
FirstLaw represents a panoply of global companies and has lately experienced an uptick in instructions from local entities; its first-rate portfolio management capabilities and lightning-speed reaction times are in high demand among stakeholders of all stripes. Its 11-strong trademark team takes the fight to counterfeiters in the fashion and apparel industries in no uncertain terms and gets lasting results with striking efficiency. Fluent in Korean and English and demonstrating a strong command of Japanese, the conference interpreter-turned-trademark and design expert Jeong Won Lee showcases exceptional communication talents while bringing assured leadership to the group. “She gives timely, reliable and practical advice” and affords her clients a service that is “consistently at the highest level”. One international brand owner enthuses that “she is definitely among the top IP attorneys we use worldwide”.
Kim & Cho
Having chalked up over six decades of practice, Kim & Cho is an experienced player in the IP market and, with three groups dedicated to design law, domain names and trademarks respectively, it delivers a well-rounded service to brand owners. The team navigates cases through the KIPO with poise and finesse, while keeping an eagle eye on long-term commercial goals.
YOU ME Patent & Law Firm
Brand owners are in safe hands with YOU ME. While the firm’s trademark service menu is comprehensive, it has a particularly impressive track record in prosecution and is well known for its ability to consummately handle large filing programmes. The prolific filer has a dedicated China group and is well placed to advise domestic companies as they expand their reach in the People’s Republic. Trademark head Sunghwan Kim and Kyungsook Lee are key contacts.
YP Lee Mock & Partners
Accompanying its core patent practice, YP Lee Mock & Partners has an outstanding trademark group that acquits itself with distinction in all aspects of brand protection, enforcement and monetisation. The side is particularly noted for its following among European luxury goods brands. Demonstrating razor-sharp trademark, design and unfair competition law skills, Younggi Hong makes use of all available tools to deliver the best results for his clients in registration and contentious scenarios, while Yong Lee “provides a consistently high-quality service and has extensive expertise and experience”. A trademark policy adviser at the KIPO, he has a refined knowledge of the Korean trademark system and has his finger on the pulse of all legal developments.
YS Chang & Associates
YS Chang & Associates has been a key IP player for more than four decades; keeping on top of local and international trademark practice and policy changes has been crucial to this. Dexterous in its handling of trademarks, designs, trade secrets, domain names and copyright matters, the firm is a well-rounded soft IP powerhouse. A sharp litigation team gives it an edge and, while eminently capable in courtroom conflicts, the squad often finds ways to facilitate early settlements to keep clients away from costly proceedings. Trademark division partners Sang-Bae Ahn and Jung-Yeon Choe are names to note.

Individuals: anti-counterfeiting

Tae-Yeon Cho - Cho & Partners
Jae Hoon Kim - Lee & Ko
Ann Nam-Yeon Kwon - Kim & Chang
Jason J Lee - 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
S 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 - Lee International IP & Law Group
Ik-Hyun Seo - Cho & Partners
Alexandra Bélec - Kim & Chang
Younggi Hong - YP Lee Mock & Partners
Seo-Young Im - Lee International IP & Law Group
Jeonghyun Kim - Bae, Kim & Lee LLC
Myung-Shin Kim - Myung Shin & Partners
Nayoung Kim - Kim & Chang
Sunghwan Kim - YOU ME Patent & Law Firm
S Yong Lee - YP Lee Mock & Partners
Sang-Yong Lee - Yoon & Lee International Patent & Law Firm
Young Joo Song - Yoon & Yang LLC
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
Cheol Hwan Kim - Yulchon LLC
Ji Hyun Kim - Bae, Kim & Lee LLC
Myung-Shin Kim - Myung Shin & Partners
Sung-Nam Kim - Kim & Chang
Un Ho Kim - Lee & Ko
Young-Chol Kim - Kim, Choi & Lim
Ann Nam-Yeon Kwon - Kim & Chang
Taeck Soo Kwon - Bae, Kim & Lee LLC
Vera Eun Woo Lee - Lee & Ko
Young-Hwan Na - Lee International IP & Law Group
Young Joo Song - Yoon & Yang LLC
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Issue 72